T 0289/23 19-09-2024

1. The appellant having been duly summoned to the oral proceedings, these were held in his absence (Rule 115(2) EPC). The appellant was treated as relying only on his written case (Article 15(3) RPBA).

2. According to Rule 113(1) EPC, decisions from the European Patent Office "shall be signed by, and state the name of, the employee responsible".

3. In the case at hand, the appellant did not complain in the appeal proceedings about the absence of the legally qualified examiner's signature. However, according to Article 114(1) EPC, "the European Patent Office shall examine the facts of its own motion" and "shall not be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought".

Therefore the board examines of its own motion whether there was a substantial procedural violation within the meaning of Rule 103(1)(a) EPC during the first-instance proceedings (see e.g. J 7/82, Reasons 6; T 989/19, Reasons 2), in particular with regard to essential requirements of the first-instance decision.

4. In line with decision T 990/06, Reasons 2.2 and 2.4, the Guidelines for Examination in the European Patent Office (2023), C-VIII, 7 state the following regarding decisions taken by an enlarged examining division:

- "Once the examining division has been enlarged, communications or decisions must be signed by all four members of the examining division."

- "Where an examining division has been enlarged pursuant to Art. 18(2) but the case is decided in a three-member composition, there should be clear evidence in the public file that a decision to set aside enlargement was taken by the division in its four-member composition prior to the final decision.

Therefore, if enlargement is considered no longer necessary, the examining division will set it aside. This decision is not separately appealable.

The applicant is informed about the setting aside of the enlargement in the communication accompanying and/or the annex to the summons or the decision following the setting aside of the enlargement."

5. There is no evidence on file, for example in the minutes of the oral proceedings held on 15 December 2022, that a decision to set aside enlargement of the examining division was taken by that division in its four-member composition prior to announcing the final decision in the oral proceedings. In fact, the minutes of the oral proceedings contain only the following sentence: "The requests and arguments on file were discussed by the examining division". Hence, based on the public evidence on file, it can only be concluded that the decision to refuse the application, now under appeal, was taken by the examining division in its enlarged composition (see G 12/91, Reasons 2).

Furthermore, the non-public Form 2701 for interlocutory revision was signed by all four members of the examining division, i.e. by the legal member as well. This seems to confirm that the decision under appeal was indeed taken by the examining division in its enlarged composition.

5.1 Rule 113(1) EPC stipulates that "[a]ny decisions [...] from the European Patent Office shall be signed by, and state the name of, the employee responsible". Rule 113(2) EPC provides that an EPO seal can replace the signature where a document (i.e. the decision) is produced automatically by a computer.

In recent years, the EPO has implemented a mechanism to electronically authenticate decisions and other documents relevant to the decision-making process. An electronic authentication by a member of the examining division has the consequence that the member's name will appear on the relevant form together with an indication that the decision has been electronically authenticated (see Notice from the EPO dated 27 March 2020 concerning the electronic authentication of decisions and other documents relevant to the decision-making process, OJ EPO 2020, A37).

5.2 According to established case law (see decision J 16/17, Reasons 2.3; decision T 989/19, Reasons 3 to 6), the requirements codified in Rule 113(1) EPC are "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. The requirement laid down in Rule 113(1) EPC 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. As a consequence, a violation of the requirement pursuant to Rule 113(1) EPC amounts to a substantial procedural violation and renders the decision erroneous (see T 2076/11, Reasons 4 and 5; T 1093/05, OJ EPO 2008, 430, Reasons 6)." Eventually, these requirements are to be met for each relevant procedural step, including the written decision.

5.3 If a member of the department of first instance who participated in the oral proceedings before that department is unable to act at the time the written decision is to be issued, for example due to death or to a relatively long-lasting illness, one of the other members may sign on behalf of the incapacitated member. However, in such a situation, a written explanation as to why one member is signing on behalf of another must be provided (see T 1170/05, Reasons 2.4; T 2076/11, Reasons 3; T 989/19, Reasons 5; and T 2348/19, Reasons 1.3).

5.4 In the case at hand the requirement pursuant to Rule 113(1) EPC was contravened since the decision was not electronically signed by all four members of the enlarged examining division: the signature of the legal member is missing. Moreover, there is no indication that the legal member was for some reason unable to act at the time the written decision was to be issued, and in any event none of the other members has signed or authenticated the decision on their behalf.

In view of this, a substantial procedural violation of the requirements of Rule 113(1) EPC has occurred.

5.5 The appellant demanded that the board nevertheless examine the merits of his appeal, essentially because immediate remittal might result in the application being refused a second time for the same reasons.

Although the board understands the appellant's concern that an immediate remittal may lead to a second refusal and a second appeal with no progress being made, the board takes the view that the appellant's individual interest in a speedy conclusion of the examination proceedings cannot outweigh the fundamental general interest of parties and the public alike to place their trust in the integrity of the EPO's decision-making processes (see T 572/19, Reasons 14).

5.6 Hence the decision under appeal (i.e. the decision to refuse the current patent application) is to be set aside and the case is to be remitted for further prosecution by the examining division (Article 11 RPBA).

6. Reimbursement of the appeal fee under Rule 103 EPC

6.1 Under Rule 103(1)(a) EPC, the appeal fee is to be reimbursed if the appeal is allowable and if such reimbursement is equitable by reason of a substantial

procedural violation.

6.2 Since the decision under appeal is to be set aside, the appeal is allowable. Moreover, full reimbursement of the appeal fee under Rule 103(1)(a) EPC is also equitable since the substantial procedural violation is the reason for the immediate remittal.

7. Appellant's third, fourth and fifth requests

The board of appeal, as a review instance, is not competent to decide on the appellant's fourth and fifth requests, nor on the third request to the extent that it exceeds the cost of the appeal fee.