EP 3 031 103 B1 relates to a system of a plurality of electronic connector modules and an electrically conductive holding frame.
The patent was revoked by the OD for added matter in claim 1 as granted and in a series of AR. Some AR were not admitted by the OD.
The proprietor appealed.
The board held that the objections of added matter were not justified and remitted for further prosecution.
The board held that the OD was prejudiced against the proprietor and reimbursed the appeal fee.
The proprietor’s point of view
The proprietor gave the following reasons why the OD was allegedly partial:
a) Failure to take into account the content of a submission in a second preliminary assessment.
b) Failure to address at least auxiliary requests A, A, B and C, at least in the preliminary assessment, and manifestly incorrect standard for examining an inadmissible amendment.
c) Sequential finding of new objections during the OP.
d) Failure to consider a suggestion to draft an obiter dictum on the general shortening of proceedings.
e) Excessively late delivery of the minutes of the OP – OP on 17.01.2023, decision and minutes dated 04.09.
f) Excessively late delivery of the decision.
g) Denial of the right to be heard / failure to take submissions into account in the decision.
h) Basing the decision on considerations that were not brought to the attention of the proprietor, or at least not with the requisite clarity.
i) Manifestly incorrect application of Rule 116 EPC.
j) Flagrantly incorrect exercise of discretion, namely without taking into account the AR under examination and without comprehensive consideration of the circumstances.
The OD’s position
The objection under Art 123(2) had already been raised in the written proceedings for the MR. Therefore, there was no reason to respond to a new objection raised only during the OP. Nor is the proprietor generally entitled to submit new requests without restriction during the OP. The OD therefore considered the request to submit a new AR as part of an additional opportunity to be unjustified at a late stage for reasons of procedural economy.
The board’s decision
The board considered that the OD did not commit a SPV for the points a) to h), especially when dealing with the question of added matter and the late delivery of the minutes and of the decision.
The board would not order reimbursement of the appeal fee on this ground alone, as the proprietor would have had to file an appeal in any case, which is why reimbursement of the appeal fee would not be equitable.
However, it is not only the reasoning in the contested decision regarding the MR that is decisive, but also the conduct of the OD throughout the proceedings, in particular with regard to the admission of new requests and whether the conduct of the OD gives rise to concerns about partiality.
In other words, the points i) and j) of the list were critical.
The board held that, if new arguments are brought forward during the OP, Art 113 requires that the party concerned be given the opportunity to respond to these new arguments.
There is also no restriction on new requests if there is a change in the facts underlying the proceedings, cf. R 116(1).
Procedural economy is not a reason to refuse a response to new arguments on facts not available before the OP, as long as these have not already been clearly raised in the proceedings.
In particular, it was only during the OP that the opponent and the OD took the view that the term ‘system’ introduced in the new MR had a basis only in the embodiments in connection with the features ‘connector housing’ and ‘modular connector’.
Consequently, the OD should have given the proprietor the opportunity to file at least one new AR in response to the new objections and arguments raised during the OP, or should have examined the newly filed AR at least prima facie. This must be regarded as a serious procedural error.
The OD appears to have had the intention of not giving the proprietor the necessary opportunity to overcome the objections under Art 123(2). This gives rise to reasonable doubt on the part of the board as to the impartiality of the OD.
The concern about partiality could only reveal itself to an objective observer when further AR were not admitted despite new objections.
The board thus concluded that there was cause for concern about partiality of the OD, which formally corresponds to a SPV justifying the reimbursement of the appeal fee.
The board ordered remittal for further prosecution to a newly constituted OD in which all members are replaced.
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Wrong exercise of the discretion by a first instance deciding body
If a first instance deciding body does not exercise its discretion in a correct manner or not according to accepted principles, e.g. by not admitting further AR without having looked at them, then the deciding body commits a SPV, see e.g. T 470/20, Reasons 2.4-2.8.
An error of judgement in substantial matters is not to be considered as a SPV, cf. T 2662/16, Reasons 2.
Partiality of a first instance deciding body
Partiality of a first instance deciding body has been dealt with in G 1/05. The EBA stated that there need not be any actual partiality on the part of the EPO body. It is sufficient if there is a well-founded concern of partiality.
How to deal with an objection of partiality is dealt with in the Guidelines E-XI.
In T 0727/19, Catchword 2, it was held that the omission of the reasons of the responsible superior’s decision from the final decision of the division justified the suspicion of partiality and constituted a SPV.
One example in which the chairman of the OD was suspected of partiality is best illustrated in T 1647/15, Reasons 2.4+2.5.
However, board’s decisions on the partiality of first instance deciding bodies are rather rare.
Order to change the composition of a first instance deciding body
In the early days of the EPO, in case of a SPV, some boards remitted with the order to change the composition of the first instance deciding body. Such an order lacked any legal basis, as the composition of a first instance deciding body is an administrative task exercised by the director in charge, or its deputy.
One way to order a change of the composition is thus to consider that the first instance body was partial.
Another way to order a change of the composition of an OD is the non-respect of Art 19(2).
It will be interesting to see whether we will see a surge in decisions concluding to the partiality of a first instance deciding bodies, when the latter does not admit further requests from a party, once the legal and factual framework of the first instance proceedings has changed.
It is however clear that procedural economy cannot be detrimental to the right to be heard of a party.
According to the minutes of the OP, the refusal for filing a further AR was taken after 18:00, whilst the OP has started at 09:04.
Partiality at the BA and EBA
Suspected partiality at the BA or EBA is dealt with in Art 24. The procedure is totally different than for first instance deciding bodies.
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