Suspicion of partiality and substantial procedural violation

• The Guidelines, Part E, Chapter XI, set out the procedure the reasons of a responsible superior's decision rejecting a challenge to the impartiality of a division can be appealed. This procedure does not make the responsible superior's decision formally appealable (Reasons 2.3 and 2.4);
• The unexplained omission of the reasons of the responsible superior's decision from the final decision of the division justifies the suspicion of partiality and constitutes a substantial procedural violation (Reasons 2.9 and 2.15);
• The principle of the prohibition of "reformatio in peius" is not applicable where a case is to be remitted to a division in a new composition because of a suspicion of partiality (Reasons 5.5 and 5.6).

First instance proceedings

The case lies from an interlocutory decision of an Opposition Division [OD] to maintain EP 2631311 in amended form. Two oral proceedings [OP] were held before the OD; during the first OP the OD came to the view that the Main Request [MR] lacked novelty and Auxiliary Request 1 [AR1] did not comply with Art. 123(2) EPC. Proprietor [P] amended claim 1 but the OD maintained their objections. P requested to comment on the new objections against claim 2 and the OD adjourned the OP.

In reply to the summons for the second OP, P objected to the OD for suspected partiality (1st impartiality objection): based on the overall conduct during the first OP and a short time limit to the second OP. P requested the members of the OD be replaced and that the opposition be examined by a new OD ab initio. A separately appealable decision for the impartiality objection was requested. The opponent [O] responded by arguing the suspicion of partiality was unfounded and that they would request an award of costs from P if the proceedings were to be delayed due to a re-constitution of the OD.

The OD cancelled the summons for OP and communicated that the objection against the members of the division was brought forward to the Director who considered the challenge of impartiality not allowable, further stating "the written and signed reasoned decision of the director will be attached to the final decision of the opposition procedure".

Summons for second OP were issued. The OD informed the parties that the first member and chairperson had been replaced. The recomposed OD stated they shared the conclusions of the original OD on the requests and that the discussion about them would not be re-opened.

P raised a second impartiality objection against the recomposed division, requesting their replacement and stating that ‘’there was no room for a reorganisation of the division without good reasons, and in the absence of good reasons the proprietor can rightly suspect the partiality of the division, all the more, as the recomposed division appeared unwilling to treat the whole case again and thus showed prejudice.’’ The OD then forwarded to the parties the signed decision of the responsible Director with the reasons why only two members of the original division had been replaced, and stating that the recomposed division will re-hear all issues discussed before the original division. The decision further held that the recomposed OD was impartial. Second OP before the recomposed OD were held and the patent was maintained on the basis of a lower-ranked Auxiliary Request. The decision on the second impartiality objection was annexed to the decision, but the decision on the first one was not.

The Appeal

In the Grounds of Appeal [GoA], the appellant-proprietor [AP] argued multiple procedural violations in the first instance, including the absence of the decision of director on the first impartiality objection and a violation of the right to be heard. The AP argued that the partiality of the original division was apparent from the change in the division, and further that the recomposed division also had to be considered partial because of the overlap of some members of the original division. The AP supported this opinion by pointing to the unwillingness of the recomposed division to reopen the issues discussed before the original division. P requested to set aside the decision under appeal, the case to be remitted to an entirely new OD, or the  maintenance of the patent as granted or on the basis of any of the ARs. Reimbursement of the appeal fee was also requested.

The Respondent-Opponent [RO] responded that although the reasons for the first impartiality objection were missing, no other reasons could have been expected, requesting no remittal.

The Board referred to the Guidelines 2016, part E, Chapter X, stating that for a written objection against impartiality: i) the immediate superior will decide on the challenge and, if allowable, the member(s) of the division are replaced, or ii) if the challenge is inadmissible or not allowable, the reasons are issued in writing, become part of the final decision and are appealable with it. Pursuant to G5/91 there is no legal basis for an appeal against the director’s decision rejecting a partiality objection. Such decision is not encompassed in the Board’s responsibilities for appeal examination according to Art 21(1) EPC jo. Art 19(2) EPC. In that light, the Board distinguished between the reasons being appealable and the decision being appealable: the director’s decision cannot formally form part of the reasons of the decision since they are not given by the members of the OD. The director’s decision is however considered part of the facts of the case. Accordingly, the possibility to appeal the director’s decision is derived from the fact that it is available to the parties at the latest with the final decision.

Remittal to first instance

The Board finds that in the absence of an explanation for the missing reasons, an objective observer cannot exclude that they were knowingly omitted, possibly for reasons of the alleged partiality. Additionally, the absence of the director’s decision with the OD’s decision may be considered as a violation of the party’s right to appeal in the sense that P was not be able to argue against reasons unknown to it. The Board held that P’s request for remittal to a new division was allowable and that under Art. 11 RPBA 2020 fundamental deficiencies such as the absence of the director’s decision in the present case allow a Board to remit a case to the department whose decision was appealed. The Board referred to T 2475/17, which held that i) when the composition of the OD caused the violation of the right to be heard and ii) where there was a legitimate concern, as in the present case, that a member was biased, the Boards can order handling of the remitted case by a recomposed division.

Extent of the remittal

AP requested remittal the to the extent that the patent was limited by the interlocutory decision, in line with the prohibition of reformatio in peius. The Board found that a limited remittal was not possible because the appealed decision could not be set aside on one hand and at the same time be maintained. The Board stated that ‘’when a member or a whole division is to be replaced following an objection, the replacement is an expression of the principle that nobody should decide a case in respect of which a party may have good reasons to assume partiality. As the Enlarged Board observed in G5/91 , this principle is also a general principle of law, similarly to the argued "reformatio in peius" principle.’’. In G5/91, Reasons 6, is was also stated that the impartiality of an OD constitutes a procedural violation in respect of the composition of the division, rendering the decision void. The present Board did not deviate from this assessment and decided that the whole decision had to be considered void and hence, set aside. In conclusion the Board set out that, with reference to CLBA V.A. 3.1.3 and V.A.3.1.8 the principle of the impartial members of the deciding panel not so much contradicts, but rather precludes the application of the principle of the prohibition of the "reformatio in peius".

Decision of the Board

The decision under appeal was set aside. The case was remitted for further prosecution to an OD of a completely new composition with all members replaced pursuant to Art 19(2) EPC.