Thursday, 27 October 2011

T 1652/08 – Changes In Composition

The patent proprietor filed an appeal against the decision of the Opposition Division (OD) revoking the opposed patent.

The appellant requested the Board to remit the case to the OD because the composition of the latter had changed before the oral proceedings (OPs). This was a substantial procedural violation because the parties had not even been informed on the change before the OPs. As a consequence, it was not certain that the provisional opinion expressed in the summons was maintained and it could not be excluded that the new chairman would have a different approach. Therefore, the proprietor’s right to be heard had been violated. Decision T 862/98 was cited in this context.

The Board was not persuaded:

*** Translation of the German original ***

[2.1] The appellant considered the fact that the composition of the OD had been modified before the OPs were held constituted a substantial procedural violation that had to result in the impugned decision being set aside and the case being remitted to the first instance. For the following reasons, the Board has come to the conviction that there was no procedural violation.

[2.2] The change of the chairwoman of the OD took place after the summons to OPs had been sent (on November 21, 2007) but before the OPs (held on July 10, 2008). The proceedings preceding the OPs and in particular all the exchanges between the OD and the parties were exclusively in writing. Therefore, the new chairwoman had the opportunity of getting acquainted with and assessing all the facts and arguments which had been submitted by the parties in the very same way as the original chairwoman. The OPs were held by the OD in its new composition. This composition was not changed any more until the end of the proceedings. All persons taking part in the impugned decisions had the same opportunity of getting completely acquainted with and assessing all oral and written submissions of the parties.

[2.3] The present case differs considerably from the facts underlying decision T 862/98. This decision dealt with a change of the composition of the OD after the OPs. In agreement with the former case law the Board in T 862/98 found that such changes of the composition generated the risk that the written decision did not correctly reflect the opinion of the three members who participated in the OPs and that a member that had joined the Board (sic) after the OPs was not aware of what actually happened in the course of the OPs (cf. T 862/98 [2.3.2] referring to T 243/87).

[2.4] This risk does not exist in a case where the composition of the OD has not been modified between the OPs and the end of the proceedings. Therefore, the Board comes to the conclusion that a modification of the composition of the OD carried out before the OPs as such does not constitute a violation of the right to be heard and that no procedural violation justifying that the impugned decision be set aside and the case be remitted [to the OD] has occurred in the present case. The OD was correctly composed at any time and, therefore, A 19(2) has not been violated either.

[2.5] The appellant pointed out that he had been surprised by the change in the composition of the OD and that he could not rely any more on the fact that the provisional opinion of the OD explained in the summons [to OPs] did indeed reflect the opinion of the OD in its new composition. For this reason also the right to be heard had been violated.

[2.6] Whether the right to be heard has been violated is to be assessed only on the basis of whether the grounds on which the decision is based have been brought to the attention of the parties and whether they had an opportunity of commenting them (A 113(1)). This would also hold true if the OD had changed its position between the summons and the OPs, which has not been shown by the appellant anyway.

The appellant has not established that he could not comment on the reasons for the subsequent decisions in an appropriate way. Therefore, the Board does not see any indication that a violation of the right to be heard or another substantial procedural violation has occurred.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.