The widely anticipated European Patent Office (EPO) decision in case G 1/21 has been delayed thus far by ongoing discussions in relation to partiality of the members of the Enlarged Board of Appeal, which has been the subject of two interlocutory decisions.
Following the first of those decisions, the composition of the Board was changed by order of 20 May 2021. The appellant (opponent, Rohde & Schwarz GmbH & Co KG) made submissions raising further objections, including requests for replacement of additional members of the Enlarged Board and referencing for the first time the issue of "personal interest" of the members. In a non-public discussion during the originally scheduled (first) oral proceedings of 28 May 2021, the issue of suspected partiality was discussed. The (second) oral proceedings to decide on the referred question was postponed to 2 July 2021, in order that a decision could be issued on the further allegations of suspected partiality. That second interlocutory decision of the Board was issued on 28 June, the week of the oral proceedings, dismissing all of the appellant's objections.
While the delay of the discussion of the actual legal issue, referred by the Board of Appeal in T 1807/15, may appear frustrating to many, it has been widely accepted that it is essential for the public to have confidence that a fair and unconflicted decision will be reached by the members of the Board. As put by Siemens AG in their amicus curiae brief: "there is a conflict between a timely decision vs. . a high-quality decision", and most of the nearly 50 parties who have submitted amicus curiae briefs appear to concur that the importance of a high-quality decision outweighs the desire for expedient certainty.
The first oral proceedings - suspected partiality from involvement with Article 15a RPBA
The suspected partiality alleged by the appellant was based on the involvement of certain Board members in the drafting of new Article 15a RPBA, which entered into force earlier this year - this new Article states that the Boards of Appeal can hold oral proceedings by videoconference without requiring the consent of the parties to this format. The present referral, in which the Enlarged Board will decide whether oral proceedings by videoconference are compatible with the legal right to oral proceedings (Article 116(1) EPC) if all parties to the proceedings have not consented, could be decided in direct contravention with the provisions of that new Article. Thus, there is a question as to whether a legal conflict exists between Article 116 EPC and the new Article 15a RPBA, as the latter appears to be based on the view that oral proceedings by videoconference must be compatible with Article 116 EPC. This conflict would render the particular Board members unable to take an impartial view, because they had performed legislative acts under that assumption which could then be found to contravene the EPC by the decision in this case.
Due to this alleged conflict, the appellant raised objections of suspected partiality against the Chairman and two technical members of the Board in its original composition (X and Y), citing their involvement in bringing Article 15a RPBA into force. One of the legal members (Z) also made submissions about their own involvement in preparing the legislative proposal for amending the RPBA as part of a working party, and requested under Article 24(2) EPC that the Board decide on their continued participation.
The suspicions against X and Y were reasoned with reference to the consultation between the President of the Boards of Appeal and the Presidium (of which X and Y were members) in relation to the proposal for Article 15a RPBA, alleging that the subsequent adoption and approval of that Article signified a positive majority within the Presidium. By a first interlocutory decision dated 17 May 2021, a recomposed Enlarged Board (with all of the objected members replaced pursuant to Article 24(4) EPC) decided that the Chairman and legal member Z were to be replaced in view of their suspected partiality, but technical members X and Y were to remain on the Board in its revised composition. This distinction was made in view of the differences in the level of involvement of each party in the process of bringing the new Article into force, with the Board considering that the Chairman had played an active role in passing legislation and that the visible involvement of legal member Z in drafting that legislation would not inspire confidence in the impartiality of an Enlarged Board comprising Z. The Board concluded that merely sitting on the advisory Presidium of the Boards of Appeal was not enough to objectively justify a suspicion of partiality, as there was no evidence of a majority vote or particular opinion of those members. The revised composition of the Board was adopted by order of 20 May 2021.
The second interlocutory decision - further partiality objections by the appellant
Following the first interlocutory decision, the appellant raised further objections of suspected partiality and personal interest in submissions made in the week leading up to the first scheduled oral proceedings; those additional objections and the non-public discussion are the subject of a second interlocutory decision by the Board dated 28 May 2021 and made available on 28 June 2021. In the further submission filed before the first oral proceedings, the appellant objected that the first interlocutory decision referred to brief comments submitted by the replaced members (Reason 9), providing details of their involvement in drafting/approving Article 15a, to which they had only been alerted at the time the first decision was issued. The further objections are well summarised in the second decision - they essentially relate still to requests for replacement of members X and Y for reasons of suspected partiality, as well as the Rapporteur on the grounds of a new allegation of suspected partiality, and an allegedly improper application of Articles 2(2) and 2(3) of the Business Distribution Scheme of the Enlarged Board of Appeal (BDS) in replacing "members" (i.e. those listed under Article 2(1)(a) BDS, including the replacement members in this case) with their "alternates" (i.e. the additional members listed under Article 2(1)(b)BDS).
However, the Enlarged Board in their second decision dismissed all of the appellant's objections of suspected partiality. In particular, the Board did not consider any of those objections to be reasoned and supported by facts or evidence, because some of the allegations were speculative as to the content of the comments submitted by the members – "we have reason to believe." – and others made in a general and non-person specific manner. The Board concluded that it had performed its duty in considering the facts available to it at the time of the earlier decision (including the aforementioned comments), i.e. there was no basis for a request of the appellant to be provided with those comments. The appellant extended its objection of suspected partiality to all of the five internal members of the revised Board, who were also present on the original Board, based on allegations that their agreement with the Chairman might be beneficial to them in being selected to remain members of the Enlarged Board; these were, unsurprisingly, deemed late-filed and inadmissible. The appellant had also raised for the first time the question of members having a "personal interest" (Article 24(1) EPC), referencing an alleged bias of the internal members because of their personal preferences for a particular mode of working either remotely or in person. This objection was considered inadmissibly late, overly general, and not substantiated - in particular, the Board noted that no direction of bias was indicated by the appellant. Furthermore, such a general objection would apply to any member of the Board, such that replacement of the objected members could not alleviate the party's concerns. Finally, in relation to the objection that the replacement of members was improper, the Board did not see any legal provision under which this objection could be considered to be raised; it was not deemed to fall within Article 24 EPC, and so the Enlarged Board was not empowered to change its composition.
The reasoning given in the dismissal of those requests is fully consistent with the first decision, which sets out the legal principles developed in the case law concerning the application of Article 24 EPC (Reasons, point 10):
a. the right to object to a judge for reasons of suspicion of partiality is meant to prevent judges from being influenced in their decision-making ... by considerations other than the arguments they consider factually and legally relevant for the case under consideration;
e. suspicion of partiality of a judge has to be determined by two tests: firstly, a subjective test requiring proof of actual partiality of the judge concerned, and secondly an objective test, whether the circumstances of the case give rise to an objectively justified fear of partiality;
f. with respect to the subjective test it is presumed that a duly and lawfully appointed judge is personally impartial, unless there is proof of the contrary;
g. with respect to the objective test ... [t]his criterion excludes subjective suspicions on the part of the party who makes the objection.
The second oral proceedings
Following a minor delay due to technical difficulties, the Board in its amended composition convened on 2 July 2021, together with three representatives of the appellant and three representatives appearing on behalf of the President of the EPO. The parties were asked to summarise their cases and make any additional oral submissions, with the Board noting the receipt of a further letter of the appellant containing requests addressed only to the Chairman shortly before midnight on 30 June 2021.
The appellant maintained their position on the improper replacement of members of the Enlarged Board with their alternates, and made several allegations about the "diligence" of the Enlarged Board in the proceedings to date: (i) that they had not provided the appellant with a copy of the minutes of the first oral proceedings pursuant to Rule 124 EPC; (ii) that the appellant had agreed to a shorter time limit in a future summons which applied a time pressure to the case, which the Board itself had not "coped" with in issuing a decision so shortly before the second oral proceedings; and (iii) that the Board was not acting fairly in relation to the time it took to provide reasons in a decision as compared with the time made available to the appellant to respond to them, at a direct cost to the party being represented at the proceedings (their client).
The Chairman dismissed these allegations, considering that the second interlocutory decision did not require a response and contained the necessary information which would form minutes of the first proceedings. The appellant was asked to formulate a formal request, should they wish to continue this debate. The first of those requests was that the Enlarged Board declare itself incompetent (!) to deal with the referral by an improper application of Article 2 of the BDS, and that the oral proceedings then be postponed until a new order was issued by the Chairman for a revised composition of the Board to be formed. The representatives of the President of the EPO requested that the appellant's requests be rejected and a discussion on the point of law be conducted as soon as possible, which was considered to be in the public interest.
After an interruption for deliberation, the Board unsurprisingly dismissed the requests of the appellant and proceeded to the discussion of the referred question.
Finally, the panel entered into the long-awaited discussion of the fundamental legal issues at hand. The scope of the referral, the proper mode of interpretation of Article 116 EPC and purpose of oral proceedings, an assessment of the legal effect, if any, of the modus operandi of the EPO in the circa 40 years to date on the rights of parties, and the question of the effect of consent of parties to proceedings were all discussed. Proceedings were terminated for deliberation of the Board, and we expect a decision in writing in the coming weeks.
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