For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

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Friday, 5 February 2010

How to elect a new EPO President - some suggestions

The IPKat had plenty of comments on his brief post earlier this week about the continued failure of the EPO's Administrative Council to elect a new President.  To add to the pot of comments already put on how the new President should be chosen (many of which seem to be about locking the relevant people up until they finally come to a decision) the IPKat also received by email the following carefully crafted suggestions on what might be done to rectify the situation. 


Suggestion No. 1:

"Your latest post impelled me to go look at the relevant secitons of EPC2000. Relevant parts are Art 11(1) and Arts 26 and 35(2). Currently they are stuck with this and until the AC can get a 3/4 majority for one candidate, nothing happens. But perhaps it is time for the current President under 10(2) (c) to propose e.g. an amendment to Art 35 to say that  after two failures to reach a 3/4 majority on the same issue the decision shall then be by simple majority vote. 
But of course that would require a diplomatic conference....
Perhaps a sufficient head of steam could be built up for a Conference of Ministers under Article 4a. There are, in my view, plenty of matters to deal with and of course the level within National Governments is much higher than that of the "Representatives" who make up the AC.
But I probably dream. Frankly I would like to see an Art 4a conference start with a look at Art 4(3), so letting member states express a view as to whether this should be enforced or amended; the present situation is, in my opinion, unacceptable to users of the system. But perhaps that's just my view, though I would be interested to know if it is shared by others!"

Suggestion No. 2 (stolen from here, and more a lesson from history than a suggestion):

"In 1268, Pope Clement IV died and 20 members of the College of Cardinals gathered at the Papal palace in Viterbo, Italy, to name a successor. Three years later, they were still at it. The Cardinals were split between Italian and French factions and the Italians, while outnumbered, had enough support to keep the French bloc from getting the required two-thirds majority to name a candidate. By 1271, three of the Cardinals had died and a fourth had resigned due to failing health. It was beginning to look like the only solution was to hope that raw attrition would eventually shift the balance of power.
But by the summer of 1271, the citizens of Viterbo had had enough. They locked the Cardinals inside, restricted them to bread and water, and took the roof off the palace.
It may have been a bit extreme, but it worked. After a one thousand and six day sede vacante, the longest in church history, the Cardinals elected Gregory X, who turned out to be one of the great Popes of the middle ages. (Among his accomplishments was reforming the Papal electoral system.)"

Another suggestion was that we should perhaps "ask the audience", or even test the candidates on how to interpret new Rule 161.  The particular attorney who made that suggestion did, however, admit that this probably wouldn't get us any further, which the IPKat would tend to agree with.


Merpel likes the idea of asking the audience, and thinks that a combined vote from, say, all EPO examiners and European patent attorneys might give the winning candidate a bit more of a mandate.  Tufty, cynical as always, doubts very much that such a dangerous level of democracy could ever break out at the EPO. 

10 comments:

Anonymous said...

I thought the last amendments to the EPC already allowed for the AC to decide, by a simple majority, to "change the procedure" if a decision could not be reached after a second round of voting? Thus after a second unsuccessful attempt, 18 could say -> this is going nowhere; next time (but not at this meeting!) we decide by 2/3 majority or even a simple majority!

Anonymous said...

I remember the IPKat held a poll in December with a majority vote in favour of.....
And wasn't there another blog poll with the same candidate way ahead of the others?
Vox populi .....

Anonymous said...

(Part 1/2)
David wrote:

Another suggestion was that we should perhaps "ask the audience", or even test the candidates on how to interpret new Rule 161. The particular attorney who made that suggestion did, however, admit that this probably wouldn't get us any further, which the IPKat would tend to agree with.


Well, one of candidates still standing on his feet was the one who applied his signature to the rule change, so we might believe that he read the work of the DG5 intellectuals before rubberstamping it and collecting his per diem, and it would be fair to expect him to justify his decision.


I, for one, hold the entire package for utterly worthless. Let's take as a case in point the aforementioned new and "improved" Rule 161:


New Rule 161(1) EPC : If the [EPO] has acted as the [ISA], [...] it shall give the applicant the opportunity to comment on the [WOISA] [...] and, where appropriate, invite him to correct any deficiencies noted in the written opinion [...] and to amend the description, claims and drawings within a period of one month from the respective communication. If the applicant does not comply with or comment on an invitation in accordance with the first sentence, the application shall be deemed to be withdrawn.


Read the rule carefully. All what it says is that the WOISA should be commented upon. Nothing more. It does not say that any deficiencies in the application should actually be remedied - or else... This decision is left to the discretion of the applicant through the words "...where appropriate". New Rule Rule 161(1) does not, and cannot, state that the WOISA should be considered as equivalent to a communication according to Article 94(3) EPC - that is legally impossible. The "invitation" is a simple form issued by a formalities officer, and decision taken by the formalities officer on the reply can only essentially concern its mere existence. Any consideration as to the tenor of the reply would result in usurping the responsabilities of the examining division. You will therefore notice that the consequence for not replying is therefore only that the application is deemed withdrawn. Not refused according to Article 97(2) EPC - this decision can only be met by a full examining division, but only after having issued a real communication according to Article 94(3) EPC, and due consideration of Article 113 EPC.

Anonymous said...

(part 2/2)


I wouldn't therefore be surprised to seeing typical replies reading something like:

In reply to the invitation according to Rule 161(1) EPC, it is respectfully submitted that according to Article 150(2) EPC, last sentence, and Article 35(2) PCT, the IPER shall not contain any statement on the question whether the claimed invention is or seems to be patentable according to any national law, which includes the EPC. The foregoing also must apply a fortiori to the IPRP or the WOISA from which it is derived, as they represent the mere opinion of the ISA and not even of the IPEA. Furthermore, Article 33(5) PCT states that any Contracting State (which include the EPO acting as a regional office) may apply additional or different criteria for the purpose of deciding whether, in that State, the claimed invention is patentable or not. In view of the preceding, the applicant declines to make any amendments to the application, as these are deemed neither appropriate nor expedient in the absence of a formal communication of the examining division according to Article 94(3) EPC. In the absence of any objections grounded in the European Patent Convention, the issuance of a Communication according to Rule 71(4) EPC is respectfully requested and expected.



I consider that the only thing a formalities officer can do in view of such a reply would be to pass on the file to the substantive examiner, as is usual whenever there is a semblance of a substantive argument. The worse thing that could happen is that the application is deemed withdrawn, which only costs some money and gains time. The representative could at that point file a request for decision together auxiliary requests (the exact strategy to be determined), to get DG3 to effectively neuter the rule.


Examiners could actually appreciate receiving such formalistic replies as outlined above, as they might prefer redrafting a communication explicitly cross-referencing PCT and EPC dispositions ("the deficiencies noticed under the PCT give rise to corresponding objections pursuant to Articles 52(1), 54(1) and (2), 56 etc. EPC respectively"), as well as adding EPC-specific objections (two-part form) or topics which may have been skimmed over in the international phase, such as dependent claims, which are usually dismissed with some boiler plate actually inserted by the examiner's system for drafting communications. Other points might be more conveniently addressed with the support of EPC Guidelines and Case Law that cannot be cited under the PCT. Finally, there is the question of Article 54(3) prior art, which also cannot be considered at the international level, and might require waiting for the interfering app to enter the regional phase and for all priority documents and translations (ha, that's another rant of mine) to be filed. I would consider not having substantive submissions upon entry into EuroPCT-bis to be advantageous, as applicants only appear to try to gain time and will often only become serious on the eve of summoned oral proceedings.


What will have been achieved in conclusion with the new rule? Zilch. Nada. The above arguments are also applicable IMO to the new Rule 70a EPC. Rule 36 is also deeply flawed, but that's for another time.

Anonymous said...

I wonder whether those who want to change the EPC are familiar with the reasons behind what is specified in the Articles and Rules.
For example, there is a very good reason for the 3/4 majority requirement! Without sufficient support in the Administrative Council the new President would be very limited in the task of managing the EPO. Have a look at Mr Obama .....

Anonymous said...

Without sufficient support in the Administrative Council the new President would be very limited in the task of managing the EPO.

This is of course not a problem at all if the Administrative Council doesn't even manage to elect a President.

But the real problem isn't really the 3/4 majority, but the very setup of the Administrative Council. The EPO's original sin is that it is ruled by its direct competitors. Of course, in what is supposed to be a "Single Market", there isn't even a good reason for the national patent offices to exist, apart from providing jobs for the boys...

Michael Factor said...

Why not get a petition going to propose Tufty for the position?

Anonymous said...

Michael Factor wrote
>Why not get a petition going to propose Tufty for the position?

Make up your mind, Michael. Tufty or the IPKAT.

Dave said...

To Anonymous @8:50am...

"Of course, in what is supposed to be a "Single Market", there isn't even a good reason for the national patent offices to exist, apart from providing jobs for the boys..."

Which single market would that be, then? The one to which the 36 EPO member countries belong?

Even supposing a single market extending across all 36, in which a single patent covered the entire territory, with no translation fees required, and legal fees relating to the filing of only a single patent application, an legal costs of defending a patent only in one court, there would still remain a need for national patent offices. Because such a system would still represent much higher application costs than a national patent, and private applicants of single territory applications would still need somewhere to go.

You can't blame the NPOs for all the EPO's problems. That would be as generalistic as saying that all the EPO staff are overpaid uppity spoilt civil servants....

Anonymous said...

...or as much of a generalisation as saying that all attorneys are devious, cynical players of the system....

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