The patent relates to a “Method for optically detecting a wind turbine for inspection purposes by means of an aircraft”.
Brief outline of the procedure
The ISR established by the EPO mentioned 5 documents of type A.
The OD decided to revoke the patent for lack of IS on the basis of documents (A1, A2 and A6) which were not mentioned in the ISR but available in the search files of the EPO.
The proprietor appealed the revocation of the patent.
The board confirmed the revocation.
The file is interesting as, during the OP, the proprietor raised an objection against the entire board due to concerns of partiality on the grounds of lack of technical knowledge in the field of wind turbines.
The board dismissed the objection as not being admissible.
The objection raised by the proprietor
After initial discussion of A1’s disclosure in relation to claim 1, the proprietor recused the whole board. The proprietor considered that the members of the board lacked technical knowledge in the field of wind turbines.
This request was not further substantiated and was not directed against a specific member, but concerned the entire board.
In the run-up to the recusal, the proprietor had already expressed several times that the board’s ideas on the technical facts at issue, in particular on the disclosure content of A1, were “unrealistic“, based on “fantasy” or were relating to “science fiction“.
The board’s position
According to established case law, the recused board, in its original composition, first decides on the admissibility of a request for recusal, Case Law of the BA, 10th edition, III.J.3.1. See also G 1/21 of 28 May 2021, ground 10.
The Board assumed that the proprietor’s request was a request for recusal under Art 24(3). Neither the EPC nor the RPBA provide for any other reasons for recusal of a member of a Board.
Art 24(3) provides a possibility of recusal on one of the grounds mentioned in Art 24(1) or on grounds of partiality. In the present case, the proprietor invoked the latter. The proprietor has not further explained how any partiality of the board members should result from their alleged lack of technical knowledge. Such a causal connection is also not apparent to the board.
Thus, in the result, the proprietor does not request recusal of the board on the ground of partiality, but on the ground of lack of technical knowledge of the individual members. However, it follows from the exhaustive list of grounds for rejection in Art 24(3) that a request for recusal cannot be based on any ground, even if the facts put forward concerning the board members could at least subjectively be regarded as prejudicial to the case of a party. A recusal on grounds of lack of technical knowledge is therefore not an admissible ground for recusal under Art 24(3).
Neither the EPC nor the RPBA provide for any other reasons of recusal of a member of the Board. It can thus not be permitted to circumvent the valid grounds of recusal under Art 24(3) by claiming that the members of a board are incompetent. The corresponding request was thus held inadmissible.
Additionally, the board pointed out that a TBA is not entitled to assign cases to itself in a particular technical field in which it may consider itself competent. A TBA is in principle obliged to hear cases assigned to it by the Presidium in accordance with its subject-matter competence via the business allocation plan pursuant to Art 1(2) RPBA20
The assignment of subject-matter jurisdiction for a technical field is based on the assumption of a chamber’s technical competence in that field. Finally, a board also has the possibility, where appropriate, of seeking an expert opinion, cf. Art 117(e) and R 121, of its own motion if it considers that its own technical knowledge is not sufficient for the assessment of the case.
One of the first things I bring forward to participants in a training for OP is the following: As you want to obtain a positive decision for your client, try not to antagonise the deciding body.
Telling a board, or a division of first instance, it is incompetent is not the best recipe for obtaining a positive decision.
One can wonder whether the attitude and the comments made by the proprietor (“unrealistic”, based on “fantasy” or relating to “science fiction”) are in accordance with the deontological rules for qualified representatives.
The decision is interesting in that it makes clear, that should members of a board be incompetent, they are at least not partial ;-)).
It is not often that we have reasons to smile when reading decisions.