T 0261/88 du 16.02.1993

Member of Opposition Division disqualified by partiality (no)
Reimbursement of appeal fee (no) - substantial procedural violation(no)
Inventive step (yes) - formulation of the problem contributing to inventive step

1. Disqualifying partiality presumes a preconceived attitude on the part of a deciding person (in this case the first Examiner) towards a party (in this case the Patentee) to the case. The fact that the views held on the issues of the case by the Examiner differ from those held by the party is in itself not disqualifying. The remedy to be used in such a situation is the appeal.
2. When considering an allegation of partiality (in this case mainly based on the fact that the Examiner was a former employee of the Opponent in the case), regard must be had to the particular facts of the case (cf. G 5/91). The content of the file must therefore be examined to find out whether there are major deficiencies in the reasoning underlying the decision to such an extent that there is reason to believe that they were the result of a preconceived attitude.
3. When the content of the file does not go beyond a normal discussion between the EPO and a party and there is nothing manifestly unreasonable to be found in the reasoning, disqualifying partiality cannot be concluded.
4. The length of time between the Examiner's last action for his former employer and his first action as Examiner in a particular case to which this employer is a party may be important, since any residual bias which may be caused by this employment would gradually fade away with time. Given the relatively long period of 21 months in this respect, there is no good reason to suspect that the Examiner at the time in question was unduly influenced by his previous employment.