The application relates to lubricating oil compositions, especially for heavy duty diesel engines.
Brief outline of the case
Following a second communication according to R 71(3), a second set of third party observations was filed.
The admissibility of the third-party observations, the MR, AR 1 and 2 were discussed during an OP. The ED decided to admit the two sets of observations filed by the third party prior to the OP.
At the end of the OP, the ED considered that the MR and AR1 lacked clarity under Art 84. The ED also informed the applicant that it could expect a communication pursuant to R 71(3) on the basis of AR 2, provided that a clean copy of the application documents was filed. A clean copy was filed.
Later, the applicant indicated that it did not approve the text proposed for grant in a third communication pursuant to R 71(3). It requested a decision which could be appealed if the ED was not able to grant a patent based on either the MR or AR1.
The application was then refused and the applicant filed an appeal.
The case is interesting in that the decision to refuse has been signed by a member of the ED which did not participate in the OP.
The board considered that under those circumstances, the ED committed a SPV.
The applicant’s point of view
The decision under appeal was affected by a SPV due to the fact that the composition of the ED hearing the case at OP differed from the composition of the ED signing the decision. The first examiner who participated to the OP was no longer part of the ED, the previous chairman had become the first examiner and a new chairman had been appointed.
The ED’s point of view
In a separate part of the decision (IV. Further comments), i.e. in form of an obiter dictum, and not in the core of the decision, the ED pointed out that following the advice of the Directorate Patent Law, it had come to the conclusion that the change in composition of the ED did not preclude it from issuing the decision under appeal without a further summons to OP.
The ED argued that no decision had been taken during the OP as the ED merely returned to the examination procedure and a change of composition was allowable under T 1207/09 and T 160/09.
The newly composed division had come to the conclusion that, taking into account the minutes of the OP, the objections continued to apply. The decision was further based on objections which had already been communicated to the applicant. For the ED, the right to be heard under Art 113(1) had been respected.
The board’s decision
For the board, it is established case law that a signed written decision issued after OP should be taken by the same members of the first-instance division who conducted the OP. If a change in the composition of the division occurs after OP, parties should therefore be offered new OP. Failure to do so constitutes a SPV.
The board acknowledged that, according to T 862/98, an offer of new OP may be foregone only in exceptional cases, for example if the final decision given by a differently composed division is not substantially based on findings arrived at during the OP but rather on fresh facts and arguments communicated to the parties in the resumed written proceedings.
For the board, T 862/98 does not apply to the present case because the reasons for which the third-party observations were admitted and for which the MR and AR1 were not considered allowable in the decision under appeal had been discussed and assessed by the ED in the procedure prior to OP.
The fact that the applicant did not request further OP after the OP that had already been held and before the written decision by the differently composed ED was issued, did certainly not relieve the ED of its obligation to offer new OP.
Irrespective of this, the reasoning of the ED is not logically comprehensible in the present case because the applicant could only have become aware of the change in composition after the decision under appeal had been notified.
The board made clear that, contrary to the assertions made in the decision by the ED, it is irrelevant that the new chairman, after having studied the written file, arrived at the same opinion as that expressed in the minutes of the oral proceedings and in the annex to the communication pursuant to R 71(3).
In particular, it cannot be ruled out that the written file did not contain all of the arguments presented during the OP. To make matters worse, even an argument present in the written file can have a completely different persuasive value when submissions on this argument have been heard during the OP, for example because it is presented in a context that is not apparent to the reader from studying the written file alone.
This is precisely the reason why OP are considered to be such a fundamental expression of the right to be heard. The conclusion indirectly drawn in the decision under appeal that the ED, even in its new composition, would have come to the same conclusion in OP as the ED in its previous composition is therefore not correct. On the contrary, the outcome of the OP before the new composition of the division could very well have been different from that before the previous composition.
It is first odd that an ED brings under “further comments” = in an obiter dictum, the reasons why it considered that there was no necessity to offer a second OP to the applicant. The corresponding considerations should have been part of the core of the decision of the ED.
The Directorate Patent Law was not part of the first or the second composition of the ED. That it has given an advice does not allow the ED to give away its responsibility in the matter. Whether the Directorate Patent Law has given an advice is actually irrelevant and is not a reason for the ED to behave as it did. The ED could have elarged itself with a legal member, but this was apparently never envisaged.
In T 1207/09 and T 160/09, the respective boards had decided that a change of the composition of the ED before holding OP did not represent a SPV. In both cases the second member had been changed. Those decisions are thus not applicable in the present instance, as the change ocurred after the OP.
In T 390/86, the boardheld that if the subsequent written decision, in which a decision announced during OP decision is substantiated, is signed by persons who were not present at the OP, the decision is invalid. T 243/87 confirms T 390/86.
In T 900/02, the board held that, if for any reason (even quite acceptable and understandable reasons such as illness or retirement) the same three members are not available, then the parties must be offered new OP. Without such an offer, both the use of a different composition and the issuance of two separate decisions signed by differently composed division amount to fundamental deficiencies.
In T 1170/05, it was accepted that the chairman of the division could sign the decision in place of the second examiner, who had died in the meantime.
If, after having been informed by the ED of a change of composition of the division, the applicant waives his right for a new OP, then a decision can be taken by an ED in a changed composition.
In the present case, the new ED simply ignored the necessity of offering new OP to the applicant. This is the core of T 862/98,which, like T 900/02, requires the offer of a new OP. The exceptional circumstances envisaged in T 862/98 are not applicable in the present instance.
The case is interesting in that
– it is manifest that, after having issued two communications under R 71(3), the ED wanted to get rid of the case without having to hold a further OP. That third party observations were taken into account, has no influence on this finding.
– the Directorate Patent Law allegedly advised the ED that it could issue the decision in spite of the change in composition of the ED.
In view of the decisions cited in Part IV. of the decision, which have manifestly been given to the ED by the Directorate Patent Law, it is possible to give the benefit of the doubt to the latter.
It appears unlikely that the Directorate Patent Law would advise an ED to commit a SPV, especially in view of the case law which is abundantly clear. If this was nevertheless the case something has gone wrong in the Directorate Patent Law. We will never know, as this correspondence is not in the public part of the file. We should actually never have know that the ED send a query to the Directorate Patent Law.
It is difficult to follow the ED when it claims that the procedural right of the applicant has been respected.
There is no reason for an ED to hide behind the Directorate Patent Law. Art 18(2), dealing with the composition of an ED, makes no reference to the Directorate Patent Law. At best, under Art 18(2), an ED can be enlarged by the addition of a legally qualified examiner.
It is clear that the production pressure exercised on EDs is high, but it should not lead to a SPV.
Recently further SPV were committed by OD’s
In T 1183/20, the board noted from the summons to OP that the OD was enlarged by a legal member, but the board also found out that the enlargement of the OD was not rescinded at least in the public part of the file. Only the three technically qualified examiners signed the decision.
This fact constituted a SPV.
In T 57/21, the board noted that after the announcement of the OD’s conclusion that the MR did not meet the requirements of sufficiency of disclosure, the proprietor’s request to have the opportunity to formulate and submit a new AR was not granted.
The OD justified its refusal to give the proprietor an opportunity to file a new AR by considering that the proprietor had not been confronted with new facts or evidence during the OP and had had enough time prior to the OP to submit AR in response to the objections of sufficiency of disclosure.
For the board, it is apparent from the reasons for the contested decision that the change of opinion of the OD was the consequence of the opponent’s new submissions prior to the OP.
In refusing to grant the proprietor the opportunity to file an additional AR during the OP, while deciding against the proprietor based on new evidence and submissions filed by the opponent only two months before the OP without any proper justification as to the timing of their filing, the opposition division treated the parties unequally. This represents a SPV.
The OD manifestly exercised its discretion in an improper way.
In general, SPVs are clearly avoidable.
It should however be remembered that first instance divisions work under an ever increasing production/productivity pressure.
This might explain the behaviour of some first instance divisions, but not excuse it.
First instance divisions should be given the time to do their job correctly. Quality is not measured on the number of entries in an Excel sheet.
Having more time to do the job will not avoid SPVs, but could reduce them drastically.