Although A 19 is pretty straightforward, the EPO quite regularly manages to have decisions issued by Opposition Divisions (OD) the composition of which is unlawful.
Here is yet another example. The appeal was filed by the opponent after the OD had maintained the patent in amended form.
*** Translation of the German original ***
Substantial procedural violation
[1.1] Pursuant to A 19(2) the composition of the OD has to fulfil the following requirements (emphasis by the Board):
“(2) 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.”
[1.2] In the present case the Examining Division (ED) consisted of Examiners A, B and C (C being the chairman) when it issued the communication pursuant to R 71(3) (intention to grant, see EPO form 2035.4 (sheet 1) dated April 16, 2008, as well as EPO form 2004, sheet R, dated May 21, 2008). The decision to grant dated October 2, 2008, was taken by the ED in the same composition. The OD appears to also have consisted – as far as can be seen from the publicly available documents – of Examiners A and B, but the OD was chaired by Examiner D (see the summons to oral proceedings (OPs), EPO form 2310, dated February 10, 2011, and the minutes to the OPs EPO form 2309 (sheet 1) and the interlocutory decision, EPO form 2327, sheet 2, both dated November 8, 2011).
[1.3] Thus it is apparent from the cited documents that the composition of the OD in the opposition proceedings against European patent EP-B-1 582 607 does not fulfil the requirements of A 19(2) because two members of the OD had also taken part in the proceedings for grant of the patent to which the opposition relates. The competent Director, who determines the composition of the OD, should not have appointed one of these Examiners, or should have replaced him/her (see the Guidelines, December 2007 or April 2010 version, D-II, 2.1 und 2.3, und D-IV, 2).
[1.3.1] It is not apparent from the publicly available file whether the initial composition of the OD was correct and whether the composition was changed in the course of the proceedings without taking into account A 19(2), but this is irrelevant for the assessment of the situation anyway.
However, the Board wishes to point out that in both cases the competent Director or the designated chairman, respectively, has to check that the requirements of A 19(2) are fulfilled.
[1.3.2] It is only after the OPs that the chairman has realised that the composition of the OD did not comply with the requirements of A 19(2).
This is why a communication (Bescheid, EPO form 2906, sheet 1) was added to the minutes of the OPS wherein this fact was stated. Moreover, [the OD] – correctly – pointed out that the OD was unable of correcting this error itself. Thus the parties were instructed that they had the right to criticise (bemängeln) this error by means of an appeal. In that case the appeal fee would be reimbursed under R 103(1)(a) and the case would be remitted to the first instance for further processing under A 111(1).
[1.4] According to the established case law of the Boards of appeal the violation of A 19(2) constitutes a substantial procedural violation resulting in the decision of the OD being set aside (see, e.g. T 382/92). As such it requires the reimbursement of the appeal fee as well as, as a rule, the remittal of the case to an OD having a correct composition for a new examination (see Case Law, 6th edition, VI.J.2.2, see e.g. T 251/88 or T 1700/10)
In this context the Board wishes to point out that the ED is not entitled (es steht ihr nicht zu) to make statements falling within the competence of the Board, such as reimbursement of the appeal fee and remittal to the ED.
Reimbursement of the appeal fee (R 103(1)(a))
As the Board has established above (point [1.4]) such a substantial procedural violation has been committed here; it is necessary to set aside the decision. As there are no special reasons not to do so (this case was given priority treatment) the case is to be remitted for further examination by an OD in correct composition under Article 11 RPBA.
As the substantial procedural violation was the cause for the remittal to the first instance, it is equitable to reimburse the appeal fee in application of R 103(1)(a); the corresponding request of the [opponent] is granted.
NB: the Board has provided a headnote:
When the composition of the OD is determined or changed, respectively, the requirements of A 19(2) are to be checked (again).
Should you wish to download the whole decision (in German), just click here.
The file wrapper can be found here.