3.3. Signatures on a decision under Rule 113 EPC
Overview
3.3. Signatures on a decision under Rule 113 EPC
Under R. 113 EPC EPO decisions must be signed by, and state the name of, the employee responsible. Under R. 113(2) EPC a seal may replace the signature when a decision is produced using a computer (see also OJ 2020, A37). The requirements for board decisions are set out in R. 102 EPC.
In J 16/17 the board held that the requirement laid down in R. 113(1) EPC, according to which decisions from the European Patent Office must be signed by and state the name of the employee responsible, is not just a mere formality but an essential procedural step in the decision-taking process. The name and the signature serve to identify the decision's authors and express that they unconditionally assume responsibility for its content. This requirement is aimed at preventing arbitrariness and abuse and ensuring that it can be verified that the competent body has taken the decision. It therefore constitutes an embodiment of the rule of law.
In T 989/19 the board held that, where the cover page of the examining division's decision had not been signed by all the division's members, this amounted to a substantial procedural violation and the decision was invalid. Under R. 113(1) EPC, EPO decisions had to be signed by the employee responsible and state their name. Since, in addition, Art. 18(2) EPC stipulated that examining divisions consisted of three examiners, the signatures of all three of those examiners were required.
- T 572/19
Abstract
In T 572/19 the proprietor appealed the opposition division's decision, issued in writing on 17 December 2018, to revoke the patent ("the appealed decision"). By communication under R. 100(2) EPC, the parties were informed of the board's observation that EPO Form 2339, dated 10 December 2018, bore the name, but not the signature, of the legally qualified member who had participated in the decision-making process. The board's preliminary view was that this amounted to a substantial procedural violation.
By the opposition division's communication dated 26 June 2023, to which an altered EPO Form 2339 ("the post-signed Form 2339") and an explanatory note on EPO Form 2906 ("the division's explanation") were annexed, the parties and the board were informed that the missing signature had been corrected under R. 140 EPC, with the chair belatedly signing the form on behalf of the legally qualified member. The missing signature was deemed to concern "a formal error being an obvious mistake", made when the paper file circulated between EPO sites. It was assured that the grounds attached to the appealed decision, when issued, had previously been circulated by email to all members of the opposition division; also the grounds had thus reflected the opinion of all the members of the opposition division, including the legally qualified member, who had confirmed her agreement in an email at the time.
The first question addressed by the board was the scope of signature requirement under R. 113(1) EPC since the parties disagreed thereon. The disagreement lay in whether the term "decisions" means simply the outcome of the proceedings (e.g. "The patent is revoked"), which is what opponent 1 argued, or extends to the substantiation in the written decision, which was the proprietor's view. Referring to T 2076/11, J 16/17 and T 390/86, the board held that the jurisprudence of the boards of appeal indicated that the written decision, including the substantiation, was the object of the signature requirement. There was, then, no doubt that the signature requirement under R. 113(1) EPC applied to the written decision, including the substantiation, and not only to the outcome that might be announced during oral proceedings.
Secondly, the board examined the purpose of the signature requirement under R. 113(1) EPC. Referring inter alia to J 16/17, it emphasised that the purpose of the signature requirement under R. 113(1) EPC was only achieved if there was an unbroken chain of manifest personal responsibility, taken by each member of the decision-making body who was assigned to the case, throughout the decision-making process, including for the written decision.
Finally, due to the cases presented by the opponents, the board addressed three potential remedies: a) "the pragmatic approach" according to which another member signs on behalf of one who is not in a position to sign, and provides a written explanation; b) recognition of a possibility for the opposition division, after remittal, to heal the deficiency without entering into the merits and extent of the appealed decision; and c) correction of the appealed decision under R. 140 EPC. The board held that none of these remedies was applicable in the current case. In particular, it was of the view that while issuing a decision without the legally qualified member's signature had been a mistake, it had not been an obvious one within the meaning of R. 140 EPC. It followed that the appealed decision had not been corrected under R. 140 EPC by the post-signed Form 2339 and the division's explanation.
The board concluded that since none of the potential remedies was applicable, the chain of manifest personal responsibility was broken, the missing signature was a substantial procedural violation, and the appealed decision was invalid. The appealed decision was set aside, and the case remitted to the opposition division for further prosecution. The board found reimbursement of the appeal fee under R. 103(1)(a) EPC equitable, for the reason that no substantial progress had been made in the appeal since it had been filed (T 3071/19).