J. Besorgnis der Befangenheit

Before focusing on the parties' procedural requests, the board in T 417/22 dealt with the patent proprietor's objection of suspected partiality of the legal member of the board..

The board recalled that according to Art. 24(3), second sentence, EPC, an objection shall not be admissible if, while being aware of a reason for objection, the party has taken a procedural step. In this regard the question arose as to what exactly constituted in this case the reasons for objection within the meaning of Art. 24(3), second sentence, EPC and when the patent proprietor had become aware of these reasons.

In the board's understanding, the patent proprietor's reasons for the objection against the legal member were stated to be based on two facts: the allegedly biased opinion formulated in the board's preliminary opinion dated 22 May 2025 and the fact that the legal member had also sat on the board that issued referral decision T 1286/23 and inevitably must have played a decisive role, given the point of law that had been and was at the heart of the matter.

Concerning the point in time when the party had become aware of the reasons for the objection, the patent proprietor submitted that they had only become aware of the fact that the legal member in the present case had also acted as legal member in T 1286/23 on 4 July 2025. The patent proprietor also indicated that the reasons for the bias in the board's communication had become clear only once the patent proprietor had realised that the same legal member had been involved. Furthermore, general procedural fairness dictated that the board ought to have called the parties' attention to the fact that the legal member had been the same in both cases.

The board observed that, first of all, it had no obligation to point out to the parties that its members may have participated in decisions dealing with similar or even the same issues. Such facts alone cannot establish any suspicion of partiality (G 3/08).

Furthermore, the board held that if the alleged bias in the board's communication had become apparent only once the patent proprietor had realised the involvement of the same legal member in the referral decision T 1286/23, the objection should still have been made before undertaking a procedural step on 27 June 2025. The board observed that from an objective point of view, the patent proprietor must be presumed to have been aware of the board's composition in the case T 1286/23 at this point of time. The board recognised that the wording of Art. 24(3), second sentence, EPC suggested that factual, i.e. subjective knowledge of the reason for exclusion was required. However, subjective knowledge of a party was effectively impossible to verify for either the board or other parties. Thus, accepting subjective awareness of a party as the admissibility condition for the application of Art. 24(3), second sentence, EPC would lead to the result that a party could effectively raise an objection anytime in the proceedings, simply by stating that even if the necessary facts had been at their disposal, they subjectively had not recognised a relevant relationship between them. This would effectively make Art. 24(3), second sentence, EPC a provision without effect, which could not have been the legislative intention.

Thus, the board accepted the intervener's argument that the patent proprietor had dealt with T 1286/23 in great detail and, therefore, must be presumed to have known the decision in its entirety, including the composition of the deciding board, before they undertook a procedural step on 27 June 2025. In this regard, the board pointed out that the names of the board members form part of the decision pursuant to R. 102(c) EPC. That the name of the legal member in the present case must have been known to the patent proprietor since the beginning of the proceedings, at least since the issuance of the board's communication, had been undisputed. Accordingly, the patent proprietor had to be presumed to have been aware of the fact that the same legal member had been involved in both cases by the time they filed their submissions dated 27 June 2025. The board concluded that an objection under Art. 24(3), first sentence, EPC against the legal member on this basis was inadmissible, even if the board were to accept, for the benefit of the patent proprietor, that the alleged bias had not had to be apparent until they had realised the involvement of the same legal member.

Consequently, the board refused the request for replacement of the legal member.