T 0900/02 28-04-2004

1. The appeal is admissible. Since it became apparent to the Board, at an early stage of its examination of the appeal, that serious procedural deficiencies might have occurred at first instance which might lead to remittal (Article 10 RPBA), it decided not to consider the substance of the case until those procedural issues had been dealt with. Since the outcome is in fact remittal of the case to the first instance, it should be recorded that the Board has not considered the substantive matters at all and makes no comment thereon. It follows that the Board also makes no comment on one of the respondent's arguments, namely that "justice was done albeit rather slowly" (see VI(C) above). If that argument were to be accepted, it might appear the Board accepts that the Opposition Division made the correct decision on the merits. It will be apparent from this decision that the Board considers the Opposition Division's decision must be set aside for procedural reasons and, in that sense, the Board considers justice was neither done nor seen to be done. The Board expresses no opinion as to whether or not, in the absence of those procedural deficiencies, the substantive result would have been the correct result.

Delay

2. The Board has no hesitation in rejecting the respondent's argument (see VI(A) above) that the appellant patentee contributed to the delay between the oral proceedings of 5. November 1998 and the issue of the two written decisions on 3. June 2002. It may well be the case that if, as the respondent says, the patentee found itself after the oral proceedings with a commercially useless patent, it sought to improve its position by the amendments it proposed to the description. That is something the respondent should have expected and could have resisted, and indeed did resist. However, there is a world of difference between fighting one's case and causing delay; indeed, the file shows the patentee protested at the delay as much as, if not more than, the respondent. The delays which occurred are not, in the Board's opinion, attributable to either party in any degree but are attributable to the Opposition Division alone.

3. That the delays in this case were both exceptional and undesirable is beyond doubt. A total delay of three years and seven months from the oral proceedings, when the opposition was substantially decided, until the issue of the written decisions can hardly be criticised sufficiently. Indeed, if entire opposition proceedings took that long, criticism might be justified. Neither party sought to defend the delay and indeed both remarked on it in writing at the time (see the Appellant's letters of 23 December 1999, 21 December 2000 and 27. April 2001 and the Respondent's letter of 13 June 2001). The case law of the Boards of Appeal offers several examples of shorter but unacceptable lapses of time between oral proceedings and written decision - for example, two years in T 390/86 (see II(A)(iii) above), Reasons, paragraph 9; more than one year in T 243/87 (see II(A)(iii) above), Reasons, paragraph 2; and more than two years in T 346/92 (see VI(C) above), Reasons, paragraph 7. It follows that the even longer delay in the present case of three years and seven months is all the more unacceptable. Such earlier cases also make clear the chief reason such long delays cannot be allowed is the risk of errors - this has been comprehensively demonstrated by the present case. The Board finds it truly appalling that, despite the abundantly clear message of those earlier cases, a delay of such extraordinary length was allowed to happen. It clearly amounts to both a substantial procedural violation under Rule 67 EPC and a fundamental deficiency in the first instance proceedings under Article 10 RPBA.

Suspected partiality

4. It is well-established in the case-law of the Boards of Appeal that a suspicion of partiality or bias may be sufficient to invalidate a first instance decision (see "Case Law of the Boards of Appeal of the European Patent Office", 4th edition 2001, page 378). This reflects a basic principle of procedural law in the Contracting States of the EPC (cf. Article 125 EPC), namely that all the members of a tribunal must be above any suspicion of bias. Although often referred to as the rule against bias (or sometimes as a rule of natural justice), it is important to note that, in the majority of cases in which it is invoked, no actual bias or partiality is established and all that occurs is an inference that one or more persons in a decision-making capacity might have reason to favour a particular party. It can be seen as one aspect of the principle that justice must not only be done but must be seen to be done. The EPC itself applies the rule against bias to the Boards of Appeal (see Articles 23(1)(2)(3) and 24 EPC) and the Enlarged Board of Appeal has extended its application to the first instance (see G 5/91 OJ EPO 1992, 617).

5. In G 5/91 the Enlarged Board held that the question whether or not an objection of suspected partiality was justified could only be considered in the particular circumstances of each individual case. The Board must therefore consider the appellant's objection (see VII above), taken after the respondent's very candid disclosure of the relevant facts (see VI(D) above), in the form of the question: can justice be seen to have been done in the circumstances of the present case, namely when a member of the Opposition Division took employment with the respondent's representative before the written decision was issued?

6. The Board has no hesitation in answering that question in the negative. The Board readily accepts that nothing untoward actually happened in the present case; none the less a suspicion of partiality must inevitably arise if a member of an Opposition Division, or any other first instance body, first solicits and then accepts employment with a firm in which a partner or other employee is conducting a case pending before that member. The fact that this only occurred after the oral proceedings were held, and the decision if not the reasons known, makes no difference - to be above all suspicion of partiality, every member must avoid any such situation at any time during the proceedings. No-one can be seen as independent of both parties while in the employ of one of them.

7. It must be emphasised that the Board makes no criticism of either the respondent's representative or his firm. The representative was, at the time the examiner was recruited, so unwell he could take no part in his firm's business and, in his absence, none of his colleagues could have been expected to see the difficulty which might, and did in fact, result from employing the examiner. It remains possible that, on the representative's return to work, he might have appreciated that difficulty but, even if he did, it was then too late to avoid it.

8. Accordingly the Board finds that the employment by the respondent's representative's firm of the second examiner was both a fundamental deficiency in the first instance proceedings within the meaning of Article 10 RPBA and a substantial procedural violation within the meaning of Rule 67 EPC.

Change of Composition - Two Written Decisions

9. The case-law shows it to be well-established that a signed written decision issued after oral proceedings should be the decision of those members of the first instance who conducted the oral proceedings and none others (see for example T 390/86 (see II(A)(iii) above), Reasons, paragraphs 7 to 9; and T 243/87 (see II(A)(iii) above), Reasons, paragraphs 3 to 5). The case-law also shows that a change of composition of an Opposition Division between oral proceedings and the issue of a written decision should be avoided and, if that is not possible, parties should be offered new oral proceedings in the event of a change (see T 862/98 (II(C)(ii) above), Reasons, paragraphs 2.1 to 2.3).

10. In the present case, in which a member of the Opposition Division took employment with the respondent's representative's firm after the oral proceedings and before the decision was issued, there clearly was a change of composition and, equally clearly, there was no offer to the parties of new oral proceedings. As regards the written decision ultimately issued, this was done in the very strange form of two decisions - one signed by the Opposition Division in the composition which conducted the oral proceedings and dealing with everything but the adaptation of the description; and one in the new composition formed after the second examiner departed, dealing only with adaptation of the description. It appears that it was hoped in this way to comply with the requirement that the same three persons who conducted the oral proceedings must sign the written decision. There is no doubt that the principles referred to in paragraph 9. above appear to have been contravened, in which case these matters would also constitute fundamental deficiencies, and it is for the Board to decide whether any of the arguments put forward by the respondent avoid that conclusion.

11. The respondent argued (see VI(E) above) that the Opposition Division was correct to obtain the signature of the examiner who left before his departure and thereafter correct to issue a second decision to deal only with the adaptation of the description. Since, the argument continues, there is no rule against changes of composition as such, changes must be possible, for example in the case of illness. However, that argument overlooks two fundamental matters. First, that in this case the change of composition was caused not by illness but by steps taken by a member of the Opposition Division which placed him in a position of suspected bias and, once that had occurred, nothing could avoid that suspicion. Second, even if there had been a change of composition for a quite innocent and acceptable reason (such as illness), it is well- established that such a change after oral proceedings should lead to an offer to the parties of new oral proceedings since otherwise both their right to be heard may be violated and the written decision will not be issued by exactly the same persons who heard the oral arguments.

12. The respondent argued (see VI(E) above) that the first sentence of the headnote of T 862/98 showed there was no absolute rule against changes of composition, in particular where no final substantive decision has been given orally which, it was argued, was the case here. However, reference just to the whole headnote shows this argument cannot be sustained. The entire headnote reads:

"Changes in the composition of an Opposition Division after oral proceedings should be generally avoided also in cases where no final substantive decision has been given orally. Where this is not possible, new oral proceedings must in general be offered to the parties under such circumstances (see the analogous regulation of Article 7(1) of the Rules of Procedure of the Boards of Appeal). Such offers may be foregone in exceptional cases, in particular if the final decision given by a differently composed Opposition Division is not substantially based on findings arrived at during the oral proceedings but on fresh facts and arguments communicated to the parties in the resumed written proceedings (see point 2.3 of the reasons)."

As the word "also" in the first sentence makes clear, that headnote is extending even to cases where there has been no final substantive decision the principle that there should either be no change of composition or, in the event of a change, an offer of new oral proceedings. The suggestion that the decision taken at the oral proceedings in the present case was not final and/or substantive is, in the board's view, untenable. As explained in the next paragraph, it was final as regards the claims and determinative of the adaptation of the description. In the language of the T 862/98 headnote, the final decision given by a differently composed Opposition Division was (and could only be) substantially based on findings arrived at during the oral proceedings and not on fresh facts and arguments communicated to the parties in the resumed written proceedings.

13. For substantially the same reasons, the Board cannot accept the respondent's arguments based on headnotes in the earlier decisions T 390/86 and T 234/86 (see VI(G) above). As regards headnote 1 in T 390/86 which reads:

"An Opposition Division has power to give a final substantive decision (here, relating to the patentability of individual claims) before sending a communication under Rule 58(4) EPC."

this offers no support whatsoever for the proposition that the use of two separate decisions was correct. A Rule 58(4) EPC letter invites the parties to state their observations if they disapprove of the text in which the Opposition Division intends to maintain a patent. It is quite clear that such a letter presupposes the existence of both claims and description in the intended form. However, in the present case, the intended form of the claims (in fact, only one claim) had been established at the oral proceedings and the description remained to be adapted to that claim. That adaptation of a description is connected to the claims as maintained appears clear from the very term "adaptation" and it seems inconceivable to the Board that the parties could or would expect anyone other than the same members of the Opposition division who conducted the oral proceedings and made a decision on the claims to deal with the necessarily inter-related and dependent question of adapting the description. If for any reason (even quite acceptable and understandable reasons such as illness or retirement) the same three members are not available to deal with the description, then it must follow that the parties are to be offered new oral proceedings and that, without such an offer, both the use of a different composition to decide the description and the issue of two separate decisions signed by differently composed Opposition Divisions amount to fundamental deficiencies.

14. The respondent also relied on headnote 3 of T 234/86 which reads:

"Where the EPC does not lay down unambiguously the procedure to be followed in a given situation (in this case when main and auxiliary requests have been submitted), use of an incorrect procedure does not, as long as no established case law exists on the matter, constitute a substantial procedural violation justifying reimbursement of the appeal fee."

The Board notes that the exception within that headnote applies in the present case with considerable force - established case law does exist on the very matters, such as a change of composition without an offer of new oral proceedings, which give rise to procedural violations in this case.

15. Further, the Board considers headnote 3 of T 234/86 alone should not be relied on for the principle or proposition it appears to set out. That headnote concludes with the following reference:

"(cf. decision T 156/84, OJ EPO 1988, 372, point 3.13 of the Reasons)."

There is in fact no passage in decision T 234/86 itself which corresponds to headnote 3. The nearest that decision, which was concerned with the treatment of requests, comes to any such observation is paragraph 5.9. of the reasons which reads:

"In the present case the EPC was wrongly interpreted and the patent instead of being maintained in the form considered maintainable by the Opposition Division, was revoked. This does not constitute a substantial procedural violation, however, because the EPC does not clearly lay down the procedure to be followed in dealing with main and auxiliary requests (cf. T 156/84, point 3.13, OJ EPO 1988, 372)."

If one then consults T 156/84, a decision concerned with the late filing of documents in first instance proceedings, one finds that paragraph 3.13 reads:

"The Board considers it not possible to order reimbursement of the appeal fee in the present case since there has been no substantial procedural violation within the meaning of Rule 67 EPC. Although the Board feels that the Opposition Division did not act in accordance with correct procedure it cannot be held guilty of a substantial procedural violation because, to the knowledge of the Board, there is as yet no standardised procedure for dealing with documents not submitted in due time in proceedings before the first instance and the Guidelines for Examination in the European Patent Office merely state that in deciding whether to admit the facts or evidence not filed in due time their relevance to the decision, the state of the procedure and the reasons for the belated presentation are to be considered (cf. Part E-VI, 2)."

Thus neither T 234/86 nor T 156/84 are concerned with matters such as those in the present case, and neither of those two earlier cases actually contains in its decision any text corresponding other than in a general way to headnote 3 of T 234/86. The words "as yet no standardised procedure" in T 156/84 have, in headnote 3 of T 234/86, been elevated to the somewhat different expressions "does not lay down unambiguously the procedure" and "as long as no established case law exists" for which no direct authority exists in either decision. Accordingly, headnote 3 of T 234/86 cannot be relied on as authority for the general proposition it purports to contain.

16. The Board places no significance on the signature of the second examiner on the first decision. The respondent argued (see VI(F) above) that neither the Board nor the parties have the expertise to decide whether the signature is genuine or not. The Board agrees, though adding that it does not require a handwriting expert to observe that two signatures said to be of the same person are so markedly different as to be suspicious. If that had not been the case, the Board would not have mentioned it in its communication of 20 October 2003. However, whether the signature is genuine or not is not determinative of the matter, nor indeed is the appearance of several dates on the two decisions (see II(B)(ii) above). It is because these matters could not affect the ultimate decision that the Board did not pursue them in the manner suggested by the respondent, namely summoning the members of the Opposition division to give evidence (see VI(F) above). Assuming that approach would have disclosed reliable facts, no reliable account could avoid the fundamental problems which arose in this case namely delay, the employment of the second examiner by a party's representative's firm, and the change of composition of the Opposition Division without an offer of new oral proceedings.

Remittal to the First Instance

17. Accordingly the Board finds fundamental deficiencies in the first instance proceedings in three respects - excessive delay, suspected bias, and change of composition without an offer of new oral proceedings. The Board must now consider whether special reasons present themselves for not remitting the case to the first instance under Article 10 RPBA.

18. As regards the unacceptable delay, the respondent was correct when it submitted there is no reported decision of a case remitted for delay in the absence of any other deficiency. The Board would not go so far as to hold that a case should never be remitted on account of delay and notes, for example, that in T 243/87 (see II(A)(iii) above), Reasons, paragraph 2, Board 332 appeared to find delay sufficient to warrant remittal before it considered the further deficiency (a change of composition). However, it must often be the case that the best answer to excessive delay at first instance is to deal with the appeal as expeditiously as possible, as happened in T 346/92 (see VI(C) above). If delay were the only deficiency in this case, the Board would consider the extreme length of that delay and the consequent need to avoid further delay as a special reason why the case should not be remitted to the first instance under Article 10 RPBA.

19. As regards the suspicion of partiality, the Board finds no special reason not to remit the case to the first instance; on the contrary, this deficiency invalidates the decision under appeal which must therefore be treated as null and void. Accordingly the opposition proceedings have not been concluded and remittal is the only course open to the Board to ensure the matter can be the subject of a procedurally proper first instance decision.

20. As regards the change of composition, even in the absence of suspected partiality this deficiency would also mean the decision under appeal would have to be quashed. Thus, for the same reasons as in 18 above, the case must be remitted to the first instance in respect of this deficiency as well.

21. The respondent, in arguing against remittal, claimed remittal would create an imbalance between the parties (see VI(B) above). In summary, this imbalance would arise because the respondent would obtain no benefit from remittal whereas the appellant would obtain a substantial benefit in that its patent would revert to its granted form. However, by comparing the result of the decision under appeal with the result of remittal, this argument necessarily overlooks the fundamental fact that remittal in this case follows not simply because there has been one or more fundamental deficiencies in the first instance procedure but because those deficiencies are so grave that the first instance decision must be quashed. Any imbalance perceived by either or both parties, and the inconvenience which will certainly be caused to both parties, as a result of remittal is outweighed by the need to ensure the public have confidence that such serious procedural mistakes will be corrected.

Reimbursement of the Appeal Fee

22. The Board also holds that the appeal fee must be reimbursed. Although any of the substantial procedural violations would have been such as to make such reimbursement equitable, since the result of the present appeal is that the decision under appeal must now be regarded as a nullity, it is above all equitable for the reason that the appellant should not have to pay a fee for an appeal which should not have been necessary.

Referral of Questions to the Enlarged Board of Appeal

23. The respondent supported its auxiliary request to refer certain questions to the Enlarged Board of Appeal with the argument that these questions concerned unresolved points of law (see VI(H) above). The Board refused this request because it was unnecessary to answer these questions in order to dispose of the appeal. Because of either the suspected bias or the change of composition without an offer of new oral proceedings or both, the first instance decision had to be held invalid. This follows from existing and well-established jurisprudence and the questions proposed by the respondent do not require a decision either to ensure uniform application of the law or because they raise important points of law.

Further First Instance Procedure

24. While it is not for the Board to decide how the first instance should conduct its proceedings, the Board does hope that the Opposition Division will recognise from this decision that there were several shortcomings in the earlier proceedings and that it will take steps to ensure that the further first instance proceedings following remittal are conducted impeccably. In the Board's view, this would require an Opposition Division of totally different composition so that the parties may have no doubt their case is being considered without any possible prejudice attributable to its unfortunate history. Further, in view of the substantial delays already experienced, it is very much to be hoped that the further proceedings will be accelerated.