CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 2274/22 – Problems with ViCo – G 5/91 – Partiality of an OD

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EP 3 399 191 B1 relates to a screw compressor with multilayer rotor screw coating.

Brief outline of the case

The patent was revoked and the proprietor appealed.

The board decided that the OD was partial and remitted the case for further prosecution with a differently composed OD. .

The OP before the OD was, by default, held in the form of a ViCo.

The course of events

The course of the OP before the OD could be reconstructed on the basis of the minutes and their annexes, and on the basis of the parties’ submissions.

Before the opening of the OP, the OD informed the interpreters in a virtual meeting room, which is set up for this purpose as one of several so-called “breakout rooms” of the ViCo.

Mr T., from the opponent side, was probably unintentionally assigned to the interpreters’ meeting room, where he was present and listening in for more than 10 minutes before he informed the other meeting participants via the chat function and was excluded.

According to the minutes, the Chairman of the OD opened the OP at 09:46. After an introduction to the proceedings, he moved on to a discussion of the grounds of opposition.

The opponents’ representative then intervened and publicised the incident, which he described as a procedural error.

The chairman commented on the incident with the general remark that “in such a meeting, only the known facts and thematic priorities are presented to the interpreters and [these] correspond to the preliminary opinion of the OD.

The proprietor feared that it would be disadvantaged because it did not have access to the same information as the opponent, and apparently raised the issue of a new composition of the OD for the first time, and finally requested in writing that the OD be recused on the grounds of partiality.

The chairman submitted the request to the responsible director and continued the hearing on the substantive issues with reservations from 13:09.

At around 15:00, the decision of the director was available, which came to the conclusion that there was no concern of partiality.

The proprietor’s point of view

The presence of a representative of the opponent during part of the preliminary meeting of the OD with the interpreters constitutes a first SPV.

The fact that the OD made no effort to clarify the incident on its own initiative gives the objective impression that it was biased. Consequently, it should not have decided on the case, which constitutes a further SPV.

The opponent’s point of view

An objective observer would not have had the impression that the OD had deliberately discriminated against the proprietor. The inclusion of an opponent’s representative at the interpreter’s briefing was indisputably due to an oversight.

There is no reason to fear partiality simply because of a possible procedural error.

In view of the fact that there was therefore no real disadvantage and the proprietor was subsequently able to defend its requests appropriately, a remittal with the associated procedural delay and legal uncertainty for third parties would not be proportionate.

The board’s decision

Listening into the briefing of the interpreters

The presence of a party at a preliminary meeting between one or more members of an OD and the interpreters is in principle a procedural violation, irrespective of whether this was caused by a technical or human error.

In such preliminary meetings, as the board knows from its own experience, not only the summons is usually discussed but information is also made available to the interpreters to help them prepare for the expected course of the proceedings.

Although it is clearly incompatible with the principle of equal treatment, such a procedural error does not necessarily have to result in a substantial one. It can be cured by bringing the absent party to the same level of knowledge as the present party before the substantive debate begins.

In the present case, this was done and the board considered these measures to be suitable and sufficient to ensure fair proceedings after such an incident.

The mere presence of Mr T. at the interpreter’s briefing does not give rise to any concern of partiality on the part of the OD.

Partiality of the OD

The fact that the OD did not address the incident on its own initiative and informed the patent proprietor correspondingly, constitutes a first reason to suspect partiality.  

Moreover, the OD did not actively participate in clarifying the incident even after the opponent had intervened and expressly pointed out a possible procedural error, but waited for the opponent’s proposal to file a written summary of what was heard, and merely agreed to it, reinforces the impression of partiality..

Contrary to the view which appears to be expressed in the decision refuting partiality  it is not relevant whether the OD, on the basis of its own recollection of the content of the preliminary meeting, of which the patent proprietor has no knowledge, comes to the conclusion that it was not necessary to address the incident because, in its opinion, the patent proprietor was not disadvantaged by it.

This type of judgement cannot take the place of the neutral observer who objectively assesses the situation from the proprietor’s perspective. This is because the recollection of an individual or a collective is, to a certain extent, always subjective.

The chairman of the OD was of the opinion that nothing beyond the content of the annex to the summons had been discussed in the presence of Mr T. However, the latter took from the conversation that E1 was considered to be the CPA, which was not mentioned in the annex to the summons.

Concerns of partiality already exist if there are objective indications of bias, even if other facts may speak against it. It is sufficient if an objective observer cannot rule out partiality with certainty.

Partiality on the part of the OD was objectively to be feared in the present case, as it did not take any of the opportunities that arose to inform the patent proprietor itself about the incident and to contribute to its clarification.

Therefore, the patent proprietor’s request for recusal of its members for this reason should have been granted by analogy with Art 24(3), cf. G 5/91, OJ 1992, 617, and the OD should have been changed.


Curable procedural violation and partiality

That a party is inadvertently connected to the discussion between the OD and the interpreters constitutes a priori a procedural violation, but is not as such critical, as it can be cured by bringing all parties to the same level of information.

What was critical was the way the OD dealt with the incident. It took it lightly and did not address the incident on its own initiative and informed the patent proprietor correspondingly. The OD did further not actively participate in clarifying the incident even after the opponent had intervened and expressly pointed out a possible procedural error.

Contrary to what was alleged by the chairman, more information than that from the annex to the summons was discussed with the interpreters and heard by the opponent.

It was also quite daring for the chairman of the OD to continue the OP, even with reservations, whilst a request for suspected partiality had been filed and was examined.

Normally, for lack of a legal basis, a board does not order a change of the composition of the OD when a SPV is committed. In case of suspected partiality, Headnote 2 of G 5/91, allows to order a change of composition.   

In the present case, the director was criticised by the board for not having recognised that partiality could be suspected.  

Previous case law in matters of partiality of an OD

There exists two decisions in which a board has concluded to the partiality of an OD.

In T 727/19, two objections of partiality were raised  successively. Only the director’s reasons for dismissing the second objection of partiality were annexed to the final decision. The board set aside the final decision and remitted the case with the order to change the composition of the OD. The case is still running.

In T 1647/15, the attitude of the chair of the OD was considered partial. The board set aside the decision of the OD but did not remit the case and decided through.

 Form of OP in DG1

All those problems would not have occurred if the form of the OP before an OD would be by default in-person and not by ViCo. The pandemic is long over and a return to OP in-person should long have been decided.

This is the more so since the EPC or its implementing regulations are silent on OP by ViCo and Art 116(1) + R 116(1) do not differentiate between OP before the first instance and before the boards.

If parties request OP by ViCo it should be left to the discretion of the division to grant the request, be in-person OP should be the default setting.

Different procedures

The procedure in case of alleged partiality in first instance divisions is different from that valid for the boards, where an alternate member or an alternate board, cf. Art 24(3+4) decides on the alleged partiality.

Following G 5/91, in case of suspected partiality for a first instance division, is it the superior of the OD, in this case the director, which decides whether partiality is given or not.

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