The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Parvis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Thursday, 18 September 2014

The KatChat (or was it a PatChat?): Christopher Rennie-Smith and Darren Smyth discuss EPO proceedings

With apologies for the length of time that it has taken to transcribe his paw-written notes and to fill in the gaps with some creative memory, this Kat offers the following summary of the KatChat that took place on 4 September between the redoubtable Christopher Rennie-Smith (right, now returned from a lengthy tour of duty in the European Patent Office's Boards of Appeal) and our blogging colleague, practising patent attorney and Darren Smyth (EIP). The venue was the congenial office of London-based solicitors Collyer Bristow, whose hospitality was greatly appreciated by all and whose current display of contemporary art was greatly appreciated by a handful of cognoscenti who spotted that it was indeed a current display of contemporary art ...

Following welcomes by Patrick Wheeler and IPKat blogmeister Jeremy, the pattern of the event emerged as Darren subtly lobbed some deceptively simple questions at Christopher, who had a quick think about them and then subtly lobbed some deceptively simple answers back.  For the purposes of this blogpost, the European Patent Office is referred to as Eponia the EPO, Board of Appeal becomes 'BoA', Christopher is abbreviated to 'CR' and Darren is the 'Kat'. This blogger's additions are contained in bold red square parenthesis like [this] and words which appear in quotation marks in Christopher's answers are either (i) what Christopher said or (ii) what this blogger thought he said

The dialogue, broadly speaking, went like this:
Kat: I'll open with a chatty question: how does the EPO cope with three official languages?
One logo, three languages
CR: It's not a difficult problem. In the Biotech Board, 90% or more of what goes on is in English. EPO staff must speak the two other languages [French and German], If you speak one, they teach you the other -- but it does make recruitment [of linguistically challenged Brits] difficult.

Kat: EPO statistics suggest that UK-ish people are under-represented. Why?
CR: There are several reasons. The German and Dutch are over-represented because of location [of EPO operations in Munich and The Hague]. It's also hard to recruit BoA members from outside the EPO itself: such people are typically in their forties or early fifties, discontented with their current employment and willing to move.

Kat: How does the work of legally qualified BoA members differ from that of technically qualified ones?
CR: Once the formalities officer has processed the earliest stages of an appeal and the rapporteur has prepared it, all members of the BoA, whether legally or technically qualified, have the same role and the same vote. The legal BoA deals with "pre-grant incidentals" and its decisions are really quite dull; its members don't actually have that much to do.

Kat: What happens in the lead-up to the BoAs making their decisions?
CR: First, the admissibility of appeals is checked (this is done by the Board's legal member). If an appeal is not admissible, it won't be heard.  The appeal then goes into limbo till the rapporteur picks it up; unless the appeal is accelerated, it just waits for that to happen.  The rapporteur may write a preliminary internal opinion, to guide the Board's opinion or stimulate discussion. Other Board members rarely express any disagreement with the rapporteur's provisional view since they are all so busy.

Then comes the summons to attend the oral proceedings.  A week to 10 days before the oral proceedings, all the BoA members read the case in detail, discuss it and form their opinions. "It's not a very good system, but there's no better one".  A day or two before the hearing, the Board forms both individual and collective expectations as to what arguments it might hear and what their outcome might be -- but often the BoA is surprised by the points made in the oral proceedings.

Kat: It's a characteristic of BoA proceedings that the Board decides cases on the same day, having sent the parties out in order for the BoA members to deliberate. What happens when the parties go out?
CR: [having revealed the real or alleged secrets of one Board which kept a supply of coffee under the table for consumption at this point] The BoA may confirm its provisional decision, or it may choose to ask some further questions of the parties.

Kat: The chair of an EPO Examining Division once said that oral proceedings aren't there to change the outcome -- they exist only to give the parties a chance to be heard. Is that correct? 
CR: "For the record, I disagree". In the light of "eloquence, persuasion and clarity" of a presentation in the oral proceedings, the Board's provisional decision can be changed.

Kat: [having noted the presence of a "mixed audience" of solicitors, patent attorneys and barristers, all of whom have rights of audience of one sort or another in UK patent proceedings] do the arguments submitted by patent attorneys, barristers and so on tend to lead to different outcomes?
CR: "Yes -- and no".  There are good advocates and bad advocates in all tribunals. The quality of advocacy at the Bar is good, but the best patent attorneys are on a par with barristers in BoA proceedings. There is however a clear difference in approach between advocates of different nationalities. "There are some good ones elsewhere, but the British -- even the solicitors -- are the best [this sentiment appeared to go down well with the members of the audience, among whom could be discerned no expression of dissent. At this point Andrea Brewster, from the floor, gave an enthusiastic plug for the CIPA course on EPO Oral Proceedings which, she hoped, would be pursued by "everyone in the patent profession"].

Kat: Turning now to substantive matters, when it comes to the issue of added subject matter the BoAs are very strict and seem to be getting stricter. Are there any signs that they may become more lenient in the future?
CR: I think things are going to stay the way they are, unless the EPO's Enlarged Board of Appeal can be persuaded to make an across-the-board ruling.  Some Boards are criticised, particularly by the Americans, for their "bewildering or incomprehensible attitude to added matter".  But things are likely to stay the way they are for the foreseeable future.

Kat: Turning to consistency, between the BoAs per se and between the BoAs and First Instance, there seem to be substantial differences regarding procedural matters like the handling of late-filed claims, the application of the new rules on handwritten submissions and the delivery of opinions. Does not the independence of the BoAs lead to uncertainty?
CR: "I don't know how truly inconsistent the Boards are" [... but readers of this blog do, murmurs Merpel] "and I'm not convinced the problem is so big".  Apart from the treatment of added matter, there's not much difference between the Boards when it comes to substantive issues. There are some procedural differences, notably with regard to late filing, but the 2003 amendment of the Rules of Procedure "did some good".  As for the First Instance, there aren't actually any procedural rules.

Some BoAs issue preliminary opinions, while others don't.  In principle some sort of preliminary opinion is good, if it helps set the agenda for the oral proceedings. However, they do involve more work.  An impressive argument against making preliminary opinions available to the parties [which, it seems, some BoAs do but others don't] is that this practice gives encouragement to one or other party to believe that the Board favours one side or the other, and the Boards are "terrified at showing bias". Judges in civil litigation in the national courts may pre-read cases and show their inclination towards one side or another, but the Boards are scared to do so.

Kat: Patent judges in Europe get together to chat.  Do BoA chairmen do the same?
CR: "Jein" [this being a contraction of the German words "ja" and nein", = "yes" and "no"].  They sometimes go to judges' meetings. While chairmen don't get together, even with Board members in the same technical field, the legally qualified members do: "it can only increase consistency, or at least understanding". Actually, there was one [chairmen's meeting ...].

Kat: Let's look at the doctrine of precedent. The EPO doesn't have it, but has published its own book on the case law of the EPO ...
CR: The case law book is very useful because "it summarises the options and major trends. It is not precedent as we know it" and, "unless there is a way of reporting and cataloguing important cases, it isn't going to happen". In Eponglish [that's "EPO English", the lingua Franca of Eponia], "the established case law of the Boards of Appeal" does not mean the same thing as "precedent". In terms of principles of law it doesn't mean "there isn't a chance of the BoAs going against it", but rather "you will find a reference to it in the case law book".

Kat: In contrast with "established case law", some concepts are thrown up by one Board and then studiously ignored by the others. Where do these 'outliers' come from and what can be done about them?
CR: With 2,000+ decisions a year, one must expect a few rogue decisions: "the inconsistent are eliminated fairly quickly".

Kat: Double patenting seems to be creeping in ...
CR: The system allows it to happen: "if people want it and are prepared to pay for it, let them have it".  Double patenting "will stay till it's legislated against".

Kat: What about second appeal on substantive issues?
CR: No.  The Enlarged Board "is just there for the thorny issues".  Petitions for review are "something of a lost opportunity" and it would have been good to get past admissibility issues and on to the substantive ones"

Kat: There is no IP gathering that doesn't seem to mention the new European Patent system. Will BoA members serve as judges in the Unitary Patent Court?
CR: There has been some interest. However the European Patent Convention would need to be amended -- unless the BoA members in question resign first.

Kat: What's it like to be on the Enlarged Board?
CR: It's a different experience, with seven members of the Board, of which five are legally qualified.  Questions before it are thorny, and usually procedural, requiring "examination of both established and disestablished case law".
The KatChat was then brought to its conclusion by the prospect of a generously over-catered reception by our hosts at Collyer Bristow, to whom we again express our thanks.


MaxDrei said...

A new word "Eponglish" for me to cherish. I suspect it is a language that is easier to learn for those who have already left behind Oxbridge High Table English and switched to IBM Globish. An overwhelming proportion of the EPO's work is in English but don't forget though that an overwhelming proportion of the litigation on EPO patents is in places where English is a foreign language. Keep it simple. Otherwise, CIPA members, on the mainland you risk your client's patent being not understood at all or, worse, misunderstood!

I have a question. Does anybody else use the argument I use, when explaining Art 123(2) EPC to US clients, that it is not unlike their own 35 USC 112 requirement for a "written description". As I understand it, that also sets a high "novelty" bar test (rather than a lower "obvious" bar test) to what's there in the originally filed specification or (as we call it over here) written description.

That might take the top off the American outrage about things at the EPO being "bewildering" or "incomprehensible" mightn't it?

Fulsome thanks to Christopher, Jeremy and Collyer-Bristow, for putting on this helpful event.

Anonymous said...

I think recent decisions T667/08 and T2619/11 show the EPO is becoming more lenient on added matter.

PJZZ said...

Regarding BoA members serving as judges, there is a provision that expressly seems to allow it, Art. 149a(2)(a) PEC.

Anonymous said...

@Anonymous 18 September 2014 13:25:00 BST :

Could you please explain how those two cases that where decided on specific technical considerations could support your sweeping statement that "the EPO is becoming more lenient on added matter".

On the contrary, to appreciate the "established case law" it is really much more relevant that the Enlarged Board of Appeal in G02/10 has clearly endorsed the prohibition of "intermediate generalisations not specifically mentioned nor implicitly disclosed in the application as filed".

MaxDrei said...

I think it a stretch to take those two Decisions as proof of increasing "leniency" on Art 123(2).

What do they say? Only that i) verbatim text in the appln as filed is not the test and that ii) the notional reader is a techie not a philologist.

But that we knew already. Oder?

That said, I do hope that DG1 will gradually relent from ist "verbatim or nothing" stance. For DG 1 though, it has to be made clearer in The Guidelines. My hunch is that it will be, in forthcoming Editions.

Anonymous said...

Quote: There is however a clear difference in approach between advocates of different nationalities. "There are some good ones elsewhere, but the British -- even the solicitors -- are the best

Oh whow - my experience is entirely different. The Germans are the best.

MaxDrei said...

What else could CRS say, when performing to a London audience? Come on guys, where's your sense of humour?

And if I happen to think that the blunt, direct and business-oriented Dutch are the best (taking as they do the best of both the German and the English advocacy skills) then almost certainly.......I'm a Dutchman, aren't I?

Don't believe me? Then look at the Dutch caselaw, and how it unashamedly and cold-bloodedly picks the best out of both the English and the German.

Anonymous said...

"As for the First Instance, there aren't actually any procedural rules."
Good to know. We can't make any procedural errors then?? I think not.

Anonymous said...

Is true that president Batistelli has sacked head of oeb communication?

Anonymous said...

Here's a report of the departure of the EPO head of communications

Anonymous said...

Is it strange that ipkat is not reporting on president Battistelli marching Mr Schroeder off the building "by mutual agreement"?
Or will replace the secretary to the administration council by his own secretary?
Or that president does not approve the appeal board independance and tries to put pressure by not appointing new members or reappointing?

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