Tuesday, 5 June 2012

T 2076/11 – The Missing Chairman

This appeal was against the revocation of the opposed patent by the Opposition Division (OD).

The revocation had been announced at the end of oral proceedings (OPs) before the OD, on September 15, 2010.

The written decision and minutes of the OPs were sent to the parties on the same day. On form 2339, which was to be signed by the members of the OD the name of the chairman was crossed out and replaced by another name, followed by “Direktor 2206”.

Also, on form 2309.2 of the minutes, the name of the chairman was crossed out and the same name, preceded by “i.V” (short for “in Vertretung”, German equivalent of “per pro”) was inserted.

As you might have expected, this formal problem led the Board to set aside the decision:

*** Translation of the German original ***

Deficient signing of the written decision

[1] Pursuant to R 113(1) decisions of the EPO shall be signed by, and state the name of, the employee responsible. A written decision which reproduces the reasons of a decision of revocation announced beforehand during OPs has to be signed by the members of the OD that had participated in taking the orally announced decision – and by them only. The signatures are to be considered as evidence that the written decision was taken and endorsed by the members of whom the OD was composed (established case law of the Boards of appeal, see T 390/86 [7], see also Singer/Stauder, EPÜ, 5th edition, A 116, marginal number 73).

[2] In the present case the written decision was not signed by the chairman of the OD, who, according to the minutes, had conducted the OPs and had announced the decision, but by the director of organisational unit 2206. However, the director had not been part of the OD that had taken the oral decision on the opposition.

[3] It is not clear from the file whether the chairman of the OD had been prevented from signing the written decision. But even if this had been the case, the director of an organisational unit should not have signed in his place. The correct way of proceeding in such cases can be derived from the case law of the Boards of appeal. As a rule, it is then sufficient that the remaining members of the division sign and that the reason for the missing signature of the member who is prevented [from signing] are stated (see, e.g. T 1170/05). This way of proceeding corresponds to the provision of Article 8(3) RPBA according to which a member who is unable to act after the Board has reached a final decision shall not be replaced by an alternate. Under no circumstances can the signature of a member who has been prevented [from signing] be replaced by the signature of a person that had not belonged to the OD having taken the oral decision.

[4] It follows from all this, in agreement with the established case law, that the signature of the written decision of the OD by the director who had not been designated to decide on the opposition, constitutes a substantial procedural violation. For this reason the impugned decision is to be set aside and the case is to be remitted to the OD pursuant to Article 11 RPBA without any substantial examination of the case.

[5] Contrary to the opinion of the [patent proprietor] the effect of the decision to set aside [the former decision] is not only to clarify the situation – it also has a constitutive legal (rechtsgestaltend) effect, because the missing signature alone does not result in the first instance decision having to be considered non-existent or void (see T 1093/05  [6] and the references therein on the general question of whether a decision that is based on a substantial procedural violation has to be considered void).

[6] Therefore, the appeal is to be allowed and the impugned decision has to be set aside. Moreover, the appeal fee is to be reimbursed pursuant to R 103(1)(a).

Deficient signing of the minutes of the OPs

[7] Pursuant to R 124(3) the minutes shall be signed by the employee responsible for drawing them up and by the employee who conducted the OPs or taking of evidence. In the present case the minutes have been signed by the director instead of the chairman who had conducted the OPs. This constitutes another procedural violation.

Further proceedings

[8] The Board does not see any need for going beyond the remittal pursuant to A 111(1) by commenting the further steps to be taken by the first instance and by fixing conditions (Vorgaben) for the future composition of the OD: as far as can be seen from the file, the composition of the OD that had taken the oral decision had not violated A 19(2). The objection of the [patent proprietor] according to which the decision of the OD could have been influenced by the hierarchy (Vorgesetzte) – which objection has not been elaborated – is not sufficient reason to challenge the original composition of the OD. As a rule, the first instance alone is competent for deciding on the composition of the OD.

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

To have a look at the file wrapper, click here.

Related decisions can be found here and here.