A 19(2) governs the composition of Opposition Divisions (OD) :
An OD shall consist of three technically qualified examiners, at least two of whom shall not have taken part in the proceedings for grant of the patent to which the opposition relates. An examiner who has taken part in the proceedings for the grant of the European patent may not be the Chairman. Before a decision is taken on the opposition, the OD may entrust the examination of the opposition to one of its members. Oral proceedings (OPs) shall be before the OD itself. If the OD considers that the nature of the decision so requires, it shall be enlarged by the addition of a legally qualified examiner who shall not have taken part in the proceedings for grant of the patent. In the event of parity of votes, the vote of the Chairman of the OD shall be decisive.
Some time ago, we have seen decision T 1349/10 where an OD was criticized because its chairman had taken part in the proceedings for the grant of the opposed patent, which is a violation of A 19(2), second sentence. Apparently (and surprisingly to me) such errors are not so rare. The present decision deals with a case where A 19(2), first sentence was not complied with.
[2] Under A 19(2), first sentence, “[a]n OD shall consist of three technically qualified examiners, at least two of whom shall not have taken part in the proceedings for grant of the patent to which the opposition relates.” (emphasis added)
[3] In the present case, the first and the second examiner of the OD (Mr M.S. and Mr J.S.M.) had taken part in the proceedings for the grant of the opposed patent. For example, they had signed Form 2035.4 (dated 22 October 2007) and they had been identified as first and second examiners in the communication under R 51(4) EPC 1973 posted on 26 November 2007. As members of the OD, Mr M.S. and Mr J.S.M., inter alia, were present at the OPs before the OD and signed the decision of the OD dated 8 June 2010. Only one of the examiners signing the decision of the OD had not taken part in the proceedings for the grant of the patent. For this reason, the composition of the OD violated A 19(2), first sentence.
[4] Violations of A 19(2) were considered to be substantial procedural violations which led to a remittal of the case under A 111(1) and to the reimbursement of the appeal fee in several cases (see decisions T 251/88, T 939/91, T 382/92, T 476/95, T 838/02, T 1349/10).
[5] The Board is aware that in two of the cases mentioned above (T 251/88 and T 838/02), the boards asked the appellant or all parties whether they invoked the procedural violation before they decided on the remittal. In both cases, the patent had been revoked by the OD. In the judgment of this Board, violations of A 19(2) should lead to a remittal regardless of the parties’ position at least in situations where third parties are affected by the outcome of the defective first instance proceedings, like in the present case where the patent was maintained in the opposition proceedings (see also decision T 1349/10 [5]).
[6] The decision under appeal therefore has to be set aside and the case has to be remitted to the department of first instance. As the remittal is the consequence of a substantial procedural violation, the reimbursement of the appeal fee under R 103(1)(a) is equitable in the Board’s judgment.
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2 comments:
It seems the original 2nd member of the OD was replaced between the summons to the OP and the OP. Maybe the original 2nd member was sick on the day of the OP or so. Still it's hard to understand how the OD could have made this mistake...
Your hypothesis makes sense. Only a few, more experienced, examiners do oppositions in a given directorate, and a minority of these are qualified for chairing, as a particular training is required for that task - the EPO is quite keen to provide a good show in opposition. Surprises can and do happen at an OP, and you want to avoid messing up things, if you can help it.
In my sector, when it comes to selecting a suitable division, the members of the ED are clearly identified on the case information sheet, together with the other highlights, such as multiple languages or requests for hearing witnesses. It would be difficult to commit a mistake. One would have needed to be in a real bind.
I once experienced a hardship hours before an OP and was really impatient to be on my way home. I had my suitcase packed in my office and a ticket in my pocket, and became increasingly miserable and desperate as things were dragging into the afternoon. Parties had flown in from overseas. Postponing would have been an absolute mess, and replacing me would have been impractical, as I was the first examiner. My potential fill-in would indeed have been incompatible with Art. 19.
In any case, the earliest possible connection was in the evening, so I could still attend. But it was really not a good day.
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