T 1938/09 (Objection for suspicion of partiality) 02-10-2014

Summary of Facts and Submissions

I. European patent No. 0 964 677, based on international application No. PCT/US1998/003584, published as WO 1998/036728 (European application No. 98 906 678.2), was granted with sixteen claims.

II. Oppositions were filed against the granted patent.

III. By its decision posted on 24 July 2009, the opposition division revoked the patent under Articles 101(2) and 101(3)(b) EPC.

IV. The patent proprietor lodged an appeal against that decision.

V. By letter of 6 May 2014 the appellant filed an objection under Article 24(3) EPC to the members of the board on the ground of suspected partiality "in the event that any member of this appeal board has acted or is acting as the appointed substitute of VP3 in the course of these appeal proceedings".

The oral proceedings originally scheduled for 8 May 2014 where thereupon cancelled.

VI. By letter dated 15 May 2014 the board summoned the parties to oral proceedings to be held on 1 and 2 October 2014 and issued a communication pursuant to Article 15(1) Rules of Procedure of the Boards of Appeal (RPBA). It questioned the admissibility of the objection, and stated that at the oral proceedings it would decide on the admissibility in its original composition.

VII. Observations on the admissibility of the objection were filed by the appellant in its letter of 20 June 2014 and by respondent 01 in its letter of 6 August 2014. The appellant, by letter of 28 August 2014, restricted its objection under Article 24(3) EPC to the Chairman of the board. The objections to the other members of the board were not maintained.

By fax of 19 September 2014 the appellant filed inter alia conditional requests for the referral of questions to the Enlarged Board of Appeal (EBA) and for a stay of the proceedings. The board issued a further communication on 24 September 2014, in which it expressed the preliminary view that the objection now restricted to the Chairman of the board was admissible.

VIII. On 1 and 2 October 2014, oral proceedings took place before the board. As far as the Article 24 EPC related issues were concerned, the board decided in accordance with Article 116(4) EPC that they were not public.

After the board in its original composition had heard the parties and deliberated on the matter, the Chairman announced that the board had decided that the objection under Article 24(3) EPC against him was admissible, and that he would be replaced by an alternate to decide on the objection.

IX. Before resumption of the oral proceedings by the board in its alternate composition, the Chairman objected to was invited to provide his comments in accordance with Article 3(2) RPBA.

After resumption, a copy of his response was handed out to the parties; in this letter the Chairman objected to stated that he did not wish to make any comments.

X. Thereupon, the appellant filed two objections under Rule 106 EPC in conjunction with Article 112a(2)(c) EPC. "Objection 1" related to the time given to prepare a reaction to the response of the Chairman objected to as being not sufficient. "Objection 2" related to the appellant's right to be heard since the comments of the Chairman objected to provided no clarification of facts.

Objection 1:

"The patentee considers its right to be heard violated by the fact that the Board gave the Patentee only 30 minutes to react to the document dated October 1**(st), 2014 provided by the objected-to member and handed over during oral proceedings of October 1**(st), 2014 despite the Patentee's indication that it would require at least 1 hour in view of the complex legal situation arising from said document."

Objection 2:

"The document dated October 1, 2014 provided by the objected-to member and handed over in the oral hearing of October 1, 2014 comprises no statement on the facts regarding the objection for suspicion of partiality. In case that the objection for suspicion of partiality is rejected, this leads to a violation of the Patentee's right to be heard."

After discussion and deliberation, these objections were dismissed by the board.

XI. The appellant requested that Question 1 on page 13 of its letter of 19 September 2014 be referred to the Enlarged Board of Appeal.

Referral question 1:

"Is an objection under Art. 24(3) EPC against a member of a Board of Appeal justified for the sole reason that, during the course of the appeal proceedings, the objected-to member in addition to the judicial function holds or has held an administrative position in the European Patent Office, provided that such dual function is not required by law, in particular when the objected-to member holds or has held the position of deputy of Vice President in charge of the Boards of Appeal?"

XII. The appellant sought to submit a copy of a letter of the Vice-President of DG3 (VP3) dated 26 September 2014 and a copy of a fax from the appellant to VP3 dated 1 October 2014. The Board exercised its discretion not to admit these letters into the proceedings and they were given back to the appellant.

XIII. On the afternoon of 1 October 2014 the appellant filed a new objection under Article 24(3) EPC to the original Chairman of the board.

The wording of the new objection under Article 24(3) EPC was:

"We herewith object under Art. 24(3) EPC to the already objected-to chairman of the Board of Appeal for suspicion of partiality based on the fact that the objected-to chairman refuses to provide substantive and complete comments on the facts at issue, including disclosure of relevant facts within his own knowledge in response to the invitation under Art. 3(2) RPBA. By not providing such a response, the objected-to chairman prevents a clarification of the facts. This gives rise to a new and separate objection for suspicion of partiality."

The appellant stated that it held the present board to be competent to deal with this objection.

The document was admitted into the proceedings and the board declared that it would deal with the objection within the framework of the already pending proceedings under Article 24(4) EPC.

XIV. The appellant, on 2 October 2014, filed a reasoned written request to return to written proceedings. Furthermore, the appellant requested the referral of a question to the Enlarged Board of Appeal and submitted this question in writing:

Referral question 2:

"a) If an objected-to member is invited according to Art. 3(2) RPBA to present his comments as to whether there is a reason for exclusion: Should Art. 3(2) RPBA, in light of the general principles of law, be interpreted such that the objected-to member has a duty to cooperate, in particular by providing substantive and complete comments on the facts at issue, including disclosure of relevant facts within his own knowledge?

b) Does the answer to question a) depend on whether the objected-to member is objected to because of "subjective" or "objective" reasons?

c) If the objected-to member does not make any substantive comments in response to an invitation according to Art. 3(2) RPBA, is it then, under Art. 3(1) RPBA, up to the Board applying the procedure of Art. 24(4) EPC to inform the parties on the facts at issue (to the extent that the Board has knowledge of these facts or can ascertain them) and give the parties an opportunity to present their comments on those facts?

d) Does the fact that the objected-to member does not make any substantive comments in response to an invitation according to Art. 3(2) RPBA substantiates the objection for suspicion of partiality brought forward under Art. 24(3) EPC?

e) Can an objection for suspicion of partiality under Art. 24(3) EPC be occasioned by an already objected-to-member responding to an invitation according to Art. 3(2) RPBA by failing to provide substantive and complete comments on the facts at issue, including disclosure of relevant facts within his own knowledge?"

The appellant's request to return to written proceedings was refused.

Relating to this refusal, the appellant filed a further objection under Rule 106 EPC, which was dismissed.

Objection 3:

"The Patentee herewith raises an objection under Rule 106 EPC in combination with Article 112a(2)(c), Art. 113 EPC because the rejection of the request to return to written proceedings amounts to a violation of the Patentee's right to be heard."

XV. The appellant requested the referral of a further question to the Enlarged Board of Appeal and submitted this question in writing.

Referral question 3:

"Is there an obligation for the Board on a request of a party to investigate with respect to the position of a member being objected to by the party for suspicion of partiality based on his position as elected permanent deputy of VP3 in case of the objected-to member has refused to offer information on his position as the elected permanent deputy of VP3?

If the answer to the above question is yes, is there an obligation for the Board to provide the result of the investigation to the parties in accordance with Article 113 EPC?"

XVI. The appellant's submissions, as far as relevant for the present decision, may be summarised as follows:

Sufficient substantiation of the objection of partiality followed from the evidence on file that the Chairman objected to was a member of the Presidium and according to Rule 12(5) EPC, all members were potential deputies for VP3. Additionally, the statement of a former chairperson was on file that prior to 2010 chairpersons of technical boards of appeal deputised for the VP3 then in office, and took part in managerial meetings as the deputy of VP3.

In view of the absence of further information, the appellant had to assume that the deputy of VP3 - at least during absences of VP3 - had the same rights and the same duties as VP3, meaning that he was under the same obligation to assist the President of the EPO in exercising his functions and powers (Article 10(3) EPC). Therefore the deputy of VP3 was subject to the reasoning set out in the Interlocutory Decision of the Enlarged Board of Appeal R 19/12 of 25 April 2014 in the same way as VP3 himself and, consequently, to the suspicion of partiality.

With regard to the question why the members of the EBA in the composition that issued interlocutory decision R 19/12 had not refrained from taking part in the decision since they were members of the Presidium and therefore potential deputies for VP3, it was to be assumed that they in fact had not been active as deputies; otherwise they would have refrained from taking part in the decision. Moreover, the Chairwoman of the alternate EBA in the case R 19/12 was the Chairwoman of the Legal Board of Appeal and substituted for VP3 as Chairperson in the Enlarged Board in that function.

Concerning other lines of argument in interlocutory decision R 19/12, the importance of decisions of technical boards of appeal was at least as high in their technical fields as that of the EBA for the whole of DG3. The technical boards often cover the whole or nearly the whole of a technical field, and in particular when taking negative decisions, i.e. refusing applications or revoking granted patents, dominated this field on the basis of their opinion without any provision for further recourse. In combination with e.g. increased pressure to handle cases more efficiently, this could have severe effects. Such pressure could be imposed on chairpersons if they were acting as the deputy of VP3.

All the more, it was very important to obtain information on the extent to which the Chairman objected to in the present case was involved in such deputising. The statement of the Chairman objected to amounted to a refusal to give evidence he would be obliged to give in view of Article 3 RPBA.

The appellant could not be prepared for not receiving detailed information and therefore needed time to prepare a reaction, in particular since, under German law, giving no information would be a ground for suspicion of partiality in itself. In addition, the lack of a detailed answer amounted to a violation of the appellant's right to be heard since there was no clarification of facts concerning the activities of the original Chairman in administrative tasks of the EPO.

Regarding the questions for referral to the EBA, two further petitions were pending that involved further objections for suspicion of partiality concerning VP3; apparently the issue of partiality was an important point of law and it was necessary to ensure uniform application of the law under Article 112(1) EPC. It was for this reason that Referral question 1 was filed.

Referral questions 2 and 3 dealt with the situation that had occurred in view of the lack of specification given in the original Chairman's response to the invitation under Article 3(2) RPBA. They also concerned important points of law to be clarified by the Enlarged Board in the absence of case law from the EPO.

XVII. The respondents' arguments, as far as relevant for the present decision, may be summarised as follows:

Contrary to the arguments of the appellant, it was clear that a substitute to the position of VP3 never had the same obligations or the same authority to issue instructions as VP3. His possible involvement in the administration of the EPO was not comparable to that of VP3 himself and all the arguments based on the interlocutory decision of the Enlarged Board of Appeal R 19/12 of 25 April 2014 failed to be applicable to his position as deputy.

Consequently, all the questions for referral and all the objections under Rule 106 EPC in conjunction with Article 112a(2)(c) EPC were rendered moot.