EP 3 425 035 B1 relates to a fast drying and fast draining rinse aid.
Brief outline of the procedure
The patent was revoked as all the requests on file were infringing Art 123(2).
The proprietor appealed. The board confirmed the revocation.
The case is interesting as it relates to the composition of the board which was queried by the proprietor.
An objection under R 106 has been rejected by the board.
The peculiarity of the present case is that all the members of BA 3.3.06 were allocated to other boards with effect from 01.12.2025 and the chairman of BA 3.3.06 retired and, as a result, BA 3.3.06 remained in the business distribution scheme (BDS, valid as of 01.12.2025) as an empty shell.
In a communication under Art 15(1) RPBA, dated 10.06.2025, the board, composed of three members of BA 3.3.06, expressed its preliminary opinion that the OD’s decision would be confirmed.
Change of the allocation of IPC class as of 01.12.2025
On 01.09 2025, a new BDS was adopted, according to which the IPC class of the patent underlying the decision under appeal (C11D) was to be allocated to BA 3.3.02 as of 01.12.2025 and the allocation of the TM and LM of BA 3.3.06 terminated after 30.11.2025. In view of the retirement of the chair of BA 3.3.06, no chair or members were assigned to BA 3.3.06 with effect from 01.12. 2025.
The chairman of BA 3.3.02 confirmed that the composition of the board for the present case remained unchanged in view of Art 8 of the BDS for 2026.
OP took place on 20.01.206 with the panel being composed of the previous members of BA 3.3.06, i.e. the same panel that was allocated to the case when the summons were sent and that had issued the Board’s preliminary opinion in the communication under Art 15(1) RPBA.
The proprietor’s point of view
On 09.09.2025, the proprietor requested that the case be transferred to BA 3.3.02 based on the allocation of IPC class C11D to this BA pursuant to the new BDS.
In a later submission, the proprietor raised an objection under R 106 and requested to cancel the OP and to hold OP with the BA 3.3.02 in a composition of the BA 3.3.02 meeting the requirements of the BDS as of 01.09.2025.
It argued that the composition of the panel with members of previous BA 3.3.06 contravened the BDS of 01.09.2025 as none of the members belonged to BA 3.3.02, The original members needed to be replaced.
The Chair of BA 3.3.02 should determine the composition of the board. Since the composition ignored the BDS, there was a fundamental violation of the right to be heard.
At the OP, the proprietor argued that, in view of the current composition of the panel, two principles had been violated, namely the right to have the case considered by the lawful judge based on the BDS and the right to be heard. This constituted a severe defect pursuant to Art 112a.
In the present case, the BDS was clearly not observed, meaning that the right to have fair proceedings with judges assigned by law was fundamentally violated. Even if Art 8 BDS could, in principle, be applied in an analogous manner, this would not apply to the present case after the transfer of the case to BA 3.3.02, i.e. with effect from 01.12.2025, because there was no transitional situation.
Rather, only the provisions of the new BDS were relevant. With this transfer, BA 3.3.02 became responsible for the case and the panel needed to be composed of the members and the chair or vice chair of this board pursuant to Art 1(3) RPBA and Article 3(1) BDS. Accordingly, the former members of BA 3.3.06 needed to be replaced.
The opponent’s point of view
The opponent considered the composition of the panel to be in accordance with the BDS based on an analogous application of Art 8 BDS. As there was no explicit provision covering the situation of the present case, applying Art 8 BDS in analogous manner was the most appropriate way to fill this gap.
The board’s decision
The proprietor’s request “that the case be continued with a panel composed according to the BDS of 01.09.2025, namely of members of BA 3.3.02 and its Chair or Vice Chair” was held not admissible.
The proprietor did not challenge the correctness of the initial composition of the panel as designated by the Chairman of BA 3.3.06, nor did it challenge the transfer of the case from BA 3.3.06 to BA 3.3.02.
Rather, it contended that after the case had been transferred, the composition of the panel of the present case, with members who were not allocated to BA 3.3.02, was not in accordance with the BDS of 27.06.2025.
Relying on G 1/21, the present board considered that the conclusions of the EBA were set out with respect to the composition of the EBA. An incorrect application of the provisions of the BDS should be corrected by the Chair of the EBA and not by the panel as such.
However, since the respective reasoning was not related to the specific aspects of the proceedings before the EBA and its BDS, the conclusions were considered to be applicable also when the party requests to change the composition of the panel of a TBA.
The Board stressed that the proprietor’s final request was not to the effect that the board declare itself to lack competence to deal with the case, but rather that the case be continued with members of BA 3.3.02.
This implies that the panel would have had to determine that members of BA 3.3.02 would have to continue the assessment of this case. The panel had no competence to decide accordingly, see Article 1(3) RPBA and Article 3, 4 BDS.
Hence, since the chairman of BA 3.3.02 also did not meet the appellant’s request to change the composition of the panel in this case but rather confirmed that its composition remained unchanged, there is no basis for continuing the case with members of BA 3.3.02 and its chair or vice Chair.
Accordingly, the panel in its current composition was not competent to decide that the case be continued with members of BA 3.3.02 and its chair or vice chair as requested by the proprietor.
The panel noted that, if the members of the panel had still been allocated to BA 3.3.06, it would have been perfectly clear from a direct application of Art 8 BDS that the amendments to the BDS would not affect the responsibility of the Board and the composition of the panel.
The panel held that the BDS does not define the measures to be taken if a board loses its chair and all its members and, for practical purposes, ceases to exist.
As no provision in the BDS explicitly covers this specific constellation, the gap needed to be filled with an analogous application of the provisions in the BDS taking into account their suitability to fill the legal loophole and the applicability of their specific purpose to providing an adequate solution in line with the objectives of the respective BDS.
R 12b(4) and Art 1(1) RPBA stipulate that the Presidium shall allocate the duties to the boards and designate the members of the various boards before the beginning of the working year.
Adopting the business distribution scheme in advance of the working year serves to ensure the principle of having the case decided by lawfully and objectively designated judges and ensures that the decision making process is not influenced by the selection of judges for a particular case.
Therefore, the BDS is an important element of an independent, reliable and efficient judicial system (R 15/11, Reasons 9).
Any change in a board’s composition without good reason would be contrary to the evident purpose of the BDS and thus also detrimental to the public’s confidence in the judicial character of appeal proceedings (R 15/11, Reasons 9).
To ensure that this important objective is also safeguarded for ongoing changes during the working year, Art 8 BDS provides that the responsibility of the board and/or the panel shall not be affected if the business distribution scheme is changed at the beginning or during the working year if a communication has already been sent or oral proceedings have been appointed.
The board thus considered that Art 8 BDS is to be applied analogously if the case is transferred to another board because the previous board effectively ceases to exist.
Art 8 BDS was also applied by analogy to the objection under R 106.
Comments
It can be discussed whether, by relying on G 1/21, the proprietor’s request was not admissible or not allowable. In the present case, the result is the same.
The present case is thus interesting in that the panel was faced with a situation not provided for in the BDS.
In view of Art 8 BDS 2026, the composition of the panel having issued a communication under Art 15(1) RPBA was thus not to be changed. This is certainly the best practicable solution. As most of its files were dealt with by BA 3.3.06, the proprietor knew this board and its member, but this is not a reason sufficient to change the composition of the board.
All in all, a very academic objection of the proprietor.
The board’s decision having been issued on 17.04.2026, it is interesting to see whether the priorietor will file a petition for review.
Comments
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