Monday, June 27, 2016 T 1088/11 Enlarging and reducing the opposition division

Last January we discussed T 1254/11 dealing with enlarging/reducing the opposition division. This also plays in this case where the board takes the effort to thoroughly discuss whether (enlarging and later) reducing of an opposition division is possible at all and the procedural aspects for a valid reduction.

The board concludes that in principle, an opposition division may set aside a decision to enlarge its composition pursuant to Article 19(2) EPC (as is the current practice). 

On the procedural aspects, the Board decides that the legal validity of an enlargement or a reduction of an opposition division may only be established on the basis of the evidence in the publicly available file. In particular, where an opposition division has been enlarged pursuant to Article 19(2) EPC, but the case is nevertheless decided in a composition of three members, there should be clear evidence on the public file that a decision to set aside the enlargement was taken by the opposition division in its four member composition prior to the final decision. 

This was not the case, thus the board remits the case to the opposition division for further prosecution.

Friday, January 29, 2016 T 1254/11 Enlarging and reducing the opposition division

In this decision the board of appeal dealt with enlarging and reducing the opposition division and changing the chairman. It reviews the case law, discusses who and in which composition should take the decision and whether or not such decisions should be public. In this case, the board concludes that the opposition division made substantial procedural violations but was lawfully enlarged and, at a later stage, lawfully reduced again. The board therefore decides not the remit the case back to the opposition division. The board also decides not to refer the case to the Enlarged Board of Appeal but instead more or less answers the raised issues.

Catchwords:     

1. An opposition division enlarged to four members pursuant to Article 19(2) EPC 1973 can in principle be reduced again to three members. It is for the four-person panel to decide on the reduction. In this respect the board concurs with T 990/06. In deciding on the reduction, the opposition division consisting of four members must properly exercise its discretion. (See point 1.4)

2. The board assumes arguendo that the fact that no decision to enlarge nor a decision to reduce the opposition division was added to the publicly available file and the fact that the appointment of the new chairman could only be traced from the internal register of the EPO both constitute fundamental deficiencies of the proceedings before the opposition division.

However, different from the situation in T 990/06, it is possible to determine from the file that the division was lawfully enlarged and, at a later stage, lawfully reduced again. (See points 1.6 and 1.7)

The board considers that these circumstances constitute special reasons for not remitting the case within the meaning of Article 11 RPBA. The aforementioned fundamental deficiencies assumed arguendo are of a formal nature. They would, in the board's view, not justify substantially delaying the proceedings. (See point 1.9)