Thursday, 21 March 2013

T 584/09 – Merry Swapping

Some time ago, I dedicated a post to the successful petition for review R 21/11 and mentioned that Board of appeal (BoA) 3.3.01 had changed its composition of its own motion because the former chairman would retire in early 2013. This retirement had a domino effect, as the present decision shows: the two remaining members of the Board recused themselves.

The original decision had been taken by P. Ranguis (chairman), G. Seufert and D. Rogers.

The petitioner had asked the Enlarged Board (EBA) to order a change of composition, but this request was refused.

P. Ranguis retired on March 1, 2013.

G. Seufert and D. Rogers then recused themselves in order to avoid the appearance of partiality.

The following decision on their exclusion was taken by the Board in the following decision: C.M. Radke (chairman), J.-B. Ousset (rapporteur) and C.-P. Brandt.

*** Translation of the German original ***

[1] Pursuant to A 24(1) members of the Boards of appeal may not take part in a case in which they have any personal interest, or if they have previously been involved as representatives of one of the parties, or if they participated in the decision under appeal. If, for one of the reasons mentioned in paragraph 1, or for any other reason, a member of a BoA considers that he should not take part in any appeal, he shall inform the Board accordingly (A 24(2)).

[2] Apparently the self-recusations that are to be examined here are not based on a reason for exclusion pursuant to A 24(1). In particular the decision of the BoA of February 3, 2011, is not a decision of the previous instance within the meaning of this provision [NB: contrary to the English version of A 24(1), the German version refers to a previous instance (Vorinstanz)]. However, the reason given [by the self-recusing members], i.e. [the wish] to avoid the appearance of partiality based on the necessity to answer the same questions once more, may qualify as “any other reason” within the meaning of A 24(2).

[3] Pursuant to A 24(4), first sentence, the BoA shall decide as to the action to be taken in such cases. As the opponent has correctly stated […], a self-recusation, therefore, does not automatically result in the Board member concerned being excluded from the proceedings. Such an exclusion can only result from a decision of the Board in its composition pursuant to A 24(4), second sentence, on whether the replacement of the Board member is justified. In its present composition the Board is entitled to decide whether the technically competent member (G. Seufert) and the legally competent member (D. Rogers), who originally were in charge of the appeal proceedings, are excluded from participating in the appeal proceedings that are to be resumed.

[4] In principle the requirement of fair and impartial proceedings does not prohibit members of the BoA from deciding again on the submissions of parties. This can happen, for instance, when a case is remitted to the first instance and the same Board composed of the very same members who had taken the first decision is competent for deciding on the appeal against the subsequent first instance decision (cf. J 15/04 [8]).

[5] However, there is a general legal principle that nobody may decide on a case in which one of the parties may have good reasons to suspect him/her to be biased. A 24(2) serves this principle as it requires a Board member who believes that (s)he cannot take part in the proceedings for such a reason to inform the Board. This avoids situations where the circumstances underlying the self-recusation become public at a later stage of the proceedings and shed doubt on the process leading to the decision or even the decision itself. As a consequence, it is of paramount importance that after a decision of a BoA pursuant to A 24(4) on the self-recusation of a Board member neither the public nor any party may consider that there is a serious possibility or even a mere appearance of partiality (cf. J 15/04 [13]).

[6] It is true that neither during the petition for review proceedings under A 112a nor subsequent to the communication by the Board dated December 14, 2012, the petitioner has provided any concrete indications (Anhaltspunkte) clearly suggesting or actually justifying that there may be reasons to fear partiality of the original Board members, nor does the Board see any such indications. This notwithstanding, having pondered the particular circumstances of the present case, for the following reasons (see point [7]) and in view of the general principle explained above (see point [5]) the Board considers the self-recusations under consideration to be justified.

[7] As a matter of fact, when, as in the present case, members of the BoA justify a self-recusation by invoking a reason which as such could possibly justify an exclusion based on a partiality concern (Besorgnis der Befangenheit), then this reason should, as a rule, be respected by the decision on the replacement of these members because one has to assume that these members know best whether a partiality concern might arise (cf. J 15/04 [13]). In the present case this conclusion is further suggested by the fact that the petitioner in the petition for review proceedings did indeed request to replace the members involved in the decision of February 3, 2011, because otherwise they would have to decide on the same questions once more.

[8] Thus the Board comes to the conclusion that, considering the requirement of impartiality in proceedings before the BoA that underlies A 24, and in view of the fact that their members, who have a judicial function, have to avoid even the appearance of possible partiality, it is justified to replace the original technically and legally competent members of Board 3.3.01 in the proceedings that are to be resumed in the present case because of their declaration of self-recusation.

[9] This outcome does not contradict decision R 21/11 of the EBA in which the EBA refused the request to replace the members of the BoA who had participated in the decision that has been set aside, because in this respect the factual situation has changed in a decisive manner subsequent to the decision of the EBA. The EBA based its decision on the assumption that in principle the members of the BoA who had participated in the decision of February 3, 2011, which has been set aside, were also available for the proceedings that were to be resumed, and this was the only reasonable assumption at the time of the decision. Moreover, the EBA has also established that within the framework of the request to maintain the impugned patent the only question to be decided was whether in case of an admission of the second Mehlhorn expert opinion into the appeal proceedings this additional evidence would make a difference (R 21/11 [30]). As this request had not been dealt with before, there was no need to decide a second time on the same questions.

[10] The opponent could only have invoked legitimate expectations created by the decision of the EBA concerning the composition of the BoA if the facts underlying the decision of the EBA had remained unchanged, which is not the case, be it only because a change of chairman had become necessary afterwards.

[11] As a matter of fact the EBA has expressly pointed out that a replacement of the former members would mean that a Board in a new composition would have to repeat the appeal proceedings in order to reach a final decision (R 21/11 [30]). However, this is precisely the situation created by the retirement of the chairman P. Ranguis on March 1, 2013. The change of chairman as such already requires the appeal proceedings to be repeated, even if the originally appointed legally and technically competent members remained in the proceedings. These members then would have to decide once again on the same questions in the present appeal proceedings, which was to be avoided by means of the self-recusations.

[12] Insofar, and contrary to the opinion of the opponent […], it is irrelevant which reasons (retirement, partiality concerns) require the BoA member to be replaced. What matters is that before taking a final decision on the appeal the member must be able to form an opinion based on his/her proper perception, study (Kenntniserlangung) of the factual situation and assessment of all relevant questions. This presupposes that it may be necessary to discuss and assess afresh all questions that are relevant for the decision on the appeal, even though they have been dealt with and decided by a Board in different composition in the course of the preceding appeal proceedings. This also encompasses the participation in oral proceedings at the end of which the final decision of the newly composed BoA on the appeal as a whole is taken and announced.

[13] The Board is unable to endorse the opinion of the opponent according to which the principle of res judicata (i.e. of legal effect and legal binding) would hinder the BoA, when resuming the proceedings, in a partially or completely new composition, to decide once more on the questions that have already been dealt with and decided during the preceding appeal proceedings. The reasons are of a legal nature.

[14] It is true that a petition for review pursuant to A 112a is an extraordinary legal remedy and has no suspensive effect (A 112a(3)), i.e. the filing of the petition as such does not have any effect on the legal force of the impugned decision. This being said, it follows from A 112a(5) in connection with R 108(3) that if the petition succeeds, the EBA sets aside the decision and re-opens proceedings before the BoA. It may then order that the composition of the members be modified.

[15] The wording of these provisions does not express the idea that in a situation where the decision of the BoA is set aside the BoA […] is bound by the factual or legal statements that have been made in the preceding decision, which has been set aside. This is fully in line with the unambiguous and explicit will of the legislator as expressed when the provisions governing petitions for review under A 112a. Accordingly, if the petition is allowed, the decision of the EBA setting aside the decision of the BoA and re-opening the proceedings overturns the “res judicata effect”, i.e. the formal legal force of the decision of the BoA (OJ EPO, Special edition 4/2007, on A 112a, p. 126-131, and in particular points 10, 17, and 19, and expressly referring to A 112a(5) in connection with R 108(3)). Moreover it is expressly stated in this context that consequently the result of the second appeal proceedings may be the same as in the first appeal proceedings, or different (ibid., point 19). The legal fact (Rechtstatsache) that in a case where the petition is allowed, the decision of the BoA is set aside and the appeal proceedings are re-opened pursuant to A 112a(5) in connection with R 108(3), the res judicata effect of the first decision of the BoA is broken or overturned by means of a “cassatory” decision and that, as a consequence, the reversal of the decision in the second appeal proceedings is possible, has also been expressly confirmed in the legal literature (see Günzel, GRUR 2009, 269, 270; Messerli, GRUR 2001, 979, 981; Joos/Schmitz in Singer/Stauder, EPÜ, 6th edition, A 112a, marginal numbers 5 and 20). The EBA in its decision R 21/11 manifestly and without further ado based its reasoning on this fact when it declared that “replacing the previous members would mean that a BoA in new composition would have to carry out afresh the whole appeal proceedings … in order to come to a final decision” (R 21/11 [30]). This statement would not make any sense if one had to assume as a res judicata effect for the second appeal proceedings.

[16] For the above reasons the Board cannot endorse the opinion of the opponent acoording to which the principle of legal security would require a limitation of the BoA’s entitlement to take decisions, within the framework of the re-opened proceedings, to the so far unanswered question whether the second Mehlhorn expert opinion was to be admitted and, if so, whether it was relevant, and, therefore, excluded the possibility for the BoA to decide the questions that had already been dealt with once more, and possibly differently.

[17] Thus in the end there are no decisive reasons not to replace the original technically competent member G. Seufert and the original legally competent member D. Rogers by a deputy.

[18] The BoA, therefore, comes to the conclusion that Ms. G. Seufert and Mr. D. Rogers are to be replaced by Mr. J.-B. Ousset and Mr. C.-P. Brandt, respectively.

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

The file wrapper can be found here.

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