Opposition Division members can be exchanged following telephone conversations concerning divisional applications
Rechtsprechung | 21.01.2025
It is very unusual for the EPO Opposition Divisions (ODs) to agree to replace one of their members due to the appearance of partiality. Yet exactly this happened in the Opposition against EP 3368069 B1 following a request by HOFFMANN EITLE’s Christopher Schoene, Joachim Renken, and Thorsten Bausch.
The fact pattern was as follows:
HOFFMANN EITLE were acting for one of the opponents, and shortly before the hearing became aware that the first Examiner of the OD had been talking with the Proprietor on the phone to discuss the divisional of the opposed patent. Reacting rapidly to this development, arguments were filed in writing asking for the first Examiner of the OD to be replaced.
The reasons given were that these telephone conversations caused an appearance of partiality, which is a sufficient reason for such a request for exclusion under the provisions of Article 24 EPC and G 5/91. Although it was unclear exactly what was discussed in the calls between the Examiner and the patentee concerning the divisional, it was clear that there was significant overlap with the claims and documents discussed in the opposition case. As such, it could not be excluded that the Examiner had unduly exposed themselves to the position of the patentee without hearing the response of the opponents.
Following this request, the Examiner was replaced shortly before the hearing, and the patent was subsequently revoked.
To our knowledge, this is the first time that an OD member has been excluded under such circumstances. It is a useful lesson to opponents before the EPO to be vigilant about the activities of OD members concerning divisional applications.