If the examining division considers that the nature of the decision so requires, it is enlarged by the addition of a legally qualified examiner. The decision to enlarge or to set aside an enlargement lies within the discretion of the examining division.
The participation of a legally qualified examiner or at least internal consultation of Directorate Patent Law, the department responsible for providing legally qualified members for examining and opposition divisions, will be required if a difficult legal question arises which has not yet been solved by the Guidelines or by jurisprudence.
The applicant is informed of the enlargement in the communication, the annex to the summons or the decision following enlargement, as appropriate. Once the examining division has been enlarged, communications or decisions must be signed by all four members of the examining division.
If the examining division has been enlarged by the addition of a legally qualified examiner, it consists of four members. In this case, in the event of parity of votes, the vote of the chairman will be decisive. As a rule, this enlargement of the examining division will be required in cases where evidence has to be taken according to Rule 117 (including the giving of evidence by witnesses – see E‑IV). The addition of a legally qualified examiner is to be considered also in the case of oral proceedings. Such enlargement will also be necessary in cases involving technical opinions (Art. 25 – see E‑XIII, 3.1).
Where an examining division has been enlarged pursuant to Art. 18(2) but the case is nevertheless decided in a three-member composition, there should be clear evidence on the public file that a decision to set aside enlargement was taken by the examining division in its four-member composition prior to the final decision.
Therefore, if the examining division considers that the enlargement is no longer necessary, it will set aside the enlargement. This decision is not separately appealable. The applicant is informed about the setting aside of the enlargement in the communication, the annex to the summons or the decision following the setting aside of the enlargement.
Depending on the nature of the problem, as an alternative to the enlargement of the examining division, internal consultation of a legally qualified examiner in Directorate Patent Law may take place. For instance, doubts may arise whether an application concerns an invention within the meaning of Art. 52(2) or whether the claimed invention is excluded from patentability by virtue of Art. 53. Consultation of a legally qualified examiner may also be appropriate in cases where legal considerations are predominant in respect to a decision, as in proceedings following a request for re-establishment of rights according to Art. 122. The formalities officer may also consult Directorate Patent Law in cases within the scope of the duties transferred to him according to Rule 11(3) (see the Decision of the President of the EPO dated 12 December 2013, OJ EPO 2014, A6).