The patent relates to a switchgear assembly for medium voltage having a short circuit unit.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The OD decided that the priority was valid. As consequence a public prior use at the Hannover fair was not part of the prior art.
From the file it also appears, that an entry of the opponent was not in the public part of the file after having been filed. This was acknowledged by the formalities officer in charge of the file.
In the document not timely added to the public part of the file, the opponent suggested that the OD should be enlarged by a legal member in view of the problems linked with the validity of the priority.
The OP must have been quite heated as during the latter, the opponent raised a partiality objection against the whole OD. This objection was dismissed by the director in charge of the OD.
The opponent requested an amendment to the minutes which was rejected by the OD.
The board decided that, independently of the problems of partiality, that the OD had committed a SPV, in that it completely ignored an objection of lack of N over D10=DE 295 024 52U1 raised by the opponent. D10 was not mentioned in the ISR established by the EPO.
The board further decided that the priority was not validly claimed and remitted the case to the OD for further prosecution.
The case is interesting in that the board remitted the case with the order to change the composition of the OD.
The decision of the OD
The decision of the OD contains a last section under the heading “Additional remark” in the style of an obiter dictum.
In this section, the OD noted, inter alia, the following:
“The OD is of the opinion that it is not within the bounds of fair and respectful behaviour for a professional representative before the EPO to insult and defame another representative or the OD”.
The opponent’s point of view
The opponent firmly rejected the behaviour alleged against it in the written decision.
The opponent filed a corresponding request for correction of the minutes which was rejected by the OD.
The board’s decision
The paragraph contained in the contested decision under the heading “Additional remark” has no connection with the substantive decision on the opposition.
The board assumed that the “additional remark” contained in the written decision is to be seen in the context of a discussion between the OD and the opponent. The debate was also related to further procedural deficiencies asserted by the opponent in the appeal proceedings. In view of the SPV, those points did not have to be discussed in the present decision.
With regard to the “additional remark” contained in the contested decision, the board noted that it is not the task of an OD to reprimand in a “disciplinary” manner, the representative of a party in particular by documenting in writing any misconduct it perceives on the part of the representative in the decision on the opposition.
The “additional remark”, which is not related to the merits of the case and therefore inappropriate in the context of the written decision on the opposition, would, against the background of the tense relationship between the OD and the opponent documented in the file, probably raise reasonable doubts in the mind of a reasonable, objective and informed person as to the impartiality of the OD.
This applies all the more in view of the reason given by the OD when it rejected the opponent’s request for correction of the minutes of the OP. The OD had rejected the request for correction of the minutes of the OP on the grounds that the minutes already reflected that the opponent had not used the words “lie”, “lies” or a synonym of these terms.
However, according to the minutes, this clearly does not correspond to the facts. The following is stated there: “The opponent stated that […] the opposition division was lying because …”.
This should have been noticed by the OD after a further review of the minutes following the request for correction of the minutes
This fact also confirmed the board’s conviction that the course of the proceedings at first instance as documented in the file would give rise to reasonable doubts as to the impartiality of the OD.
The concern that the OD might be biased in its further decision on the opposition after remittal of the case by the board therefore appears objectively justified.
In its decision the bord referred to T 2475/17, Reasons no. 3.1.5, according to which a board is empowered to order a change in the composition of a first instance deciding body in the event of a remittal.
Comments
The question of the partiality of a member of a first instance deciding body has been dealt with in G 5/91, OJ 1992, 617. A corresponding procedure has been established within DG1 and it is the director in charge of the OD which is empowered to decide on a request for partiality raised against a member, or the whole, of a first instance deciding body.
In the early days of the EPO, some boards remitted with the order of changing the composition of a first instance body. This was in the absence of a clear legal basis for the order. T 71/99 has clarified the situation and put an end to this.
Following a SPV, two reasons can actually lead to a remittal with the order of a change in the composition of an OD:
- A wrong composition of the OD under Art 19(2).
- A suspected partiality of the members of the first instance deciding body.
Both occurrences are extremely rare.
In this respect, it is worth noting that even in case of non-respect of Art 113(1), this does not mean that the deciding body can be suspected of partiality. When acting under Art 112a, the EBA has never ordered a change of composition of the board when it ordered reopening of the procedure, see e.g. R 7/09, R 15/11, R 21/11, R 16/13, R 2/14, R 3/15 and R 4/17.In R 15/11, R 21/11, R 16/13 and R 3/15 it even expressly rejected the corresponding request of the petitioner.
It is extremely rare that a board remits to the first instance with the order to change the composition of an OD. In the present case, it appears nevertheless justified.
It is not my intention to blame in whatever manner the members of ODs or EDs. In view of the time pressure they are under it can happen that they commit a SPV.
However, in the present case, the OD, when rejecting the request for correction of the minutes, simply went too far and showed a clear partiality on top of it committing a clear SPV..
If an OD is dissatisfied with the behaviour of a representative, it can always request its hierarchy to inform the Disciplinary Committee of the epi, but it cannot reprimand the representative of a party as it did here.
That deciding bodies do not necessarily sit together during OP or even in every day practice, undeniably contributes to this kind of situations.
https://www.epo.org/de/boards-of-appeal/decisions/t230550du1
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