From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Friday, 5 December 2014

The Alicantation of the European Patent Office

News is coming in thick and fast from the European Patent Office, and so Merpel once again finds herself gracing the pages of this blog (following earlier posts here, here and here).  This time, a kind Katfriend has pointed Merpel in the direction of a most fascinating article on the website of the German magazine JUVE.  It is in German, but Merpel found that Google translate did a pretty wonderful job.  (Other online translation services are available.)

The last paragraph of this article reported the suspension of the Board of Appeal member that was reported by the IPKat yesterday.  That report in turn caused some confusion among readers, and so it seems now necessary to clarify that the suspension of the Board of Appeal member, which reportedly happened on 3 December 2014, for alleged suspicion of spreading libelous comments, is a different event from all of the following:

  • The suspension of a patent examiner who was also a former member of the Internal Appeals Committee (IAC) that handles internal disputes, working in Munich, that apparently happened in October.
  • The reported suspension of another former IAC member, who worked in The Hague office, and was allegedly suspended last month.
  • The departure of the head of communications Oswald Schröder in October.  UK readers may be familiar with Private Eye "Curse of Gnome" - perhaps here there has been a "curse of Merpel", as only a couple of months previously Oswald Schröder had written to the IPKat "Should you wish to cross check facts in the future, feel free to contact me".  Alas that is no longer possible.

Merpel has also heard that this latest event, the suspension of a Board of Appeal member, is being protested by the Enlarged Board of Appeal to the Administrative Council (who meet next week - Merpel repeats her encouragement to write to the representative of your country if you wish to make your views known).

Returning to the JUVE article, some semblance of a plan emerges.  It seems that the President of the European Patent Office does not like having independent Board of Appeal members, and would like the Boards of Appeal fully integrated into the EPO structure and under the control of the administration.  This is of course the complete opposite of the "initiative to make the independence of the boards of appeal more visible and to revise the European Patent Convention accordingly" which is what Merpel understands the Board of Appeal themselves to have wanted.  That initiative has completely stalled under the present regime.

The plan to subsume the Boards of Appeal into the EPO management structure was termed in the JUVE article "Alicantisierung" - a lovely term that Merpel will translate as "Alicantation".  That is, to make the EPO administratively resemble OHIM.  This includes having the Court of Justice of the European Union as an appellate court from which an appeal from decisions of the EPO Boards of Appeal would lie.  As any fule kno, OHIM is an EU body and so naturally is the CJEU, while the EPO is not.  It seems hopelessly fanciful to imagine that the non-EU contracting states of the European Patent Convention, such as Switzerland, Norway and Turkey, would consent to the CJEU arbitrating their affairs.  There are other problems:

  • The OHIM organisational setup means that there are 4 instances available in every case (first instance, OHIM Boards of Appeal, General Court, CJEU), which denies rapid access to justice.  Patentees and Opponents are hardly likely to welcome this for patents as well.
  • The CJEU has hardly distinguished itself in the IP law that currently comes under its remit, such as trade marks, designs, and supplementary protection certificates.  
  • The Unitary Patent proposal and Unified Patent Court agreement were designed to give the CJEU as little substantive competence as possible, so states are hardly likely to welcome the handing over to it the judgment of substantive patentability.

If it indeed be true that the Administrative Council will discuss such a plan next week, it will be a groundbreaking meeting.

Some commenters on earlier posts have questioned why any of this matters.  The IPKat considers that it is in the interests of all users of the patent system - applicants, patentees, third parties and opponents - that cases are dealt with by examiners and appellate bodies independently and according to the merits of the case alone.  The separation of powers envisaged by the EPC is designed to ensure that, and, when that independence is undermined, we should all be concerned.  In addition, as other commenters have pointed out, if the EPO Boards of Appeal are not considered sufficiently independent, the whole EPO setup could be considered unconstitutional by some countries such as Germany, who would then be forced to withdraw from the European Patent Convention altogether.


Anonymous said...

Although, with respect to the Boards of Appeal of the EPO, it has to be said that, while a patent granted after a BoA hearing can be litigated in a national court, there is no comeback from a BoA revocation decision. Indeed, the odd position of the BoA is one legitimate point made by the Spanish case against the Unitary Patent/UPC.

Barbara Cookson said...

There might be something to be said for hiving off the Boards of Appeal to the UPC - it would ensure the court had business in its early days

Anonymous said...

Might I respectfully suggest that 'alicantisation' is more pleasing to the ear?

Must also respectfully traverse opinion of Ms. Cookson: UPC is also an EU body and thus not suitable as a place to park DG3.

Ah, Alicante. One of our (EPO) Principal Directors, a certain Christian Archambeau, went there to be a Vice President. He was not greatly missed. Unfortunately, he is on contract there and, for some absurd reason, has the right to be integrated back into EPO if he returns.

One rule for them...

Anonymous said...

As surprisingly good Google Translate may be, there's an interesting linguistic and legal nuance in the JUVE text that may be lost in translation.

The article says that the BoA member has been suspended for "Verbreitung übler Nachrede", which indeed roughly translates as "spreading libellous comments", but differs from "Verleumdung" (slander) in that the "libellous comments" have not necessarily been proven false (just not proven true).

In my opinion, this is a very dubious basis for taking such drastic action. Not only the person concerned wouldn't have been given the opportunity to defend himself proving the eventual truth of his statements before an independent panel, but one fails to see the reasons for such urgent action. And there are of course the issues of freedom of speech and judicial independence.

It would certainly be unprecedented, and a slap in the face of Mr. Battistelli, if the EBoA was indeed to present a formal protest to the AC. I believe that, in his urge to bring the EPO entirely under his own personal control, he may have acted somewhat...injudiciously.

Anonymous said...

i hope somebody can help me understand the problem ?

Presently, the AC appoints the President as well as BoA members. Under this scheme the BoA are considered "independent".

Suddenly, when the BoA members fall under the President, they are less independent ?

The AC has anyway the authority to tell the BoA what to do... why would it make a big difference if it does so through the President ?

Anonymous said...

@Anonymous: Please have a look at your copy of the EPC (Article 23(3) EPC). The members of the BoA are only bound by the EPC. They do neither take orders from the AC nor from the president. That's the idea of separation of powers.

Anonymous said...

AC cannot tell boards what to do. Boards are not bound by any instruction. AC must maintain board independence.

Anonymous said...

To Anonymous 19:28,

The problem is that the President has essentially unlimited powers over "ordinary" employees: he appoints them, decides on their career, and can exercise disciplinary authority over them pretty much arbitrarily (Art. 10(2)(f),(g),(h) EPC). It would be particularly inappropriate for a Board member to be under the direct authority of the president because the job of the former is essentially to judge the work done by the organization managed by the latter.

For this reason the members of the Board are put under direct control of the AC, which is at least a collegial body made up by representatives of all EPC Contracting States; this reduces considerably the risk that any single person or government may exert undue influence on the members of the Boards. In any case, even the current state of affairs is considered far from ideal by many, who would prefer a fully independent judiciary.

In view of the above, the house ban reported by the previous post appears to be in violation of the EPC itself, as the president of the EPO may only propose disciplinary action against a member of the Boards of Apppeal to the AC (Art. 10(2)(h) EPC), not take action on his own motion.

Anonymous said...

With the former Vice-President Mr Messerli, Battistelli would not have dared so much, but the present VP-3 is clearly one of his servants and has no courage at all. Fortunately, most of the members still have a sense of law and justice and will resist and keep working according to the EPC. Hopefully the rules of law will prevail and Battistelli will be prevented from doing further harm to the system with all his illegal moves and hidden agenda. It is very sad to see these developments within what used to be a model organisation.

Anonymous said...

If the rumour of a member of a BoA being banned from the premises is correct then all the remaining members have no option other than to declare themselves potentially impartial and halt all appeal proceedings. The President according to the EPC simply has no powers to interfere in the activities of the boards and if he does so they become affected by this influence.

Anonymous said...

At the EPO the Vice-Presidents advising Mr Battistelli are nowadays just a bunch of muppets. The most disappointing performance, however, is that of Mr Raimund Lutz, head of the legal/international affairs. Based on his background as judge and President of the German Federal Patent Court, he'd be expected to know the rules of law and to respect them. He doesn't at the EPO because he is the main supporter of Battistelli's course of action and of his blatant disregard of the basic rules of laws and human rights. A shame for the hosting country of a great international organisation!

Anonymous said...

Article 23(1) of the EPC:
"The members of the Enlarged Board of Appeal and of the Boards of Appeal shall be appointed for a term of five years and may not be removed from office during this term, except if there are serious grounds for such removal and if the Administrative Council, ON A PROPOSAL from the Enlarged Board of Appeal, takes a decision to this effect."

I would like draw your attention to the wording "on a proposal from the Enlarged Board of Appeal". The president is not entitled to make such a proposal! This is just unlawful! Scandal! Hopefully the administrative council is not corrupt.

Anonymous said...

The issue is whether house ban is equivalent to removal from office ( Art 23(1) EPC).
House ban might be, in extreme cases, a justified measure.

Anonymous said...

Very interesting article:
This guy is really good.

Anonymous said...

It may be that turkey, Switzerland etc are not part of the EU. But if AC decided EPO decisions where made subject to CJEU then what could they do to stop it? Is unanimous vote required?

Anonymous said...

Is unanimous vote required?

This plan would need an amendment to the EPC. Art. 33(1)(b) gives the AC the power to amend certain parts of the Convetion "to bring them into line with an international treaty relating to patents or European Community legislation relating to patents".

A decision under Art. 33(1)(b) may not be taken before the international treaty or community legislation has entered into force (Art. 33(5)). It requires unanimity and shall not take effect if a contracting state declares within 12 months that it does not wish to be bound by it (Art. 35(3)).

It may be doubted that the power to amend under Art. 33(1)(b) covers fundamental changes to the EPO such as Alicantation.

The only other way to change the EPC is through a diplomatic conference (Art. 172(1)). The AC must decide to hold such a conference (three-quarters majority, Art. 35(2)), three-quarters of the contracting states must be represented, three-quarters of those represented and voting is required for adoption of a revised text (Art. 172(2)). Many years are then required to give the contracting states the opportunity to ratify the revised text (Art. 172(3)). Those that fail to ratify cease to be party to the EPC (Art. 172(4)).

The 10 non-EU contracting states in principle can block any decision that needs a three-quarters majority, but that is probably not the biggest hurdle (taking into account e.g. that those countries include Monaco, San Marino, Liechtenstein).

Anonymous said...

Interesting article.

Anonymous said...

Rumours have it that it is not a random member of the Boa, but actually one involved in R19/12. Seems the president took it personal.
(The other two are retired in the meanwhile)

Dear Moderator: wouldn´t mind not to have this posted if only someone could tell me it wasn´t true. Also I do hope TOR works. Wouldn´t mind keeping my job either.

Anonymous said...

To the anonymous poster of 16:31, as EPO Examiner I know of one BoA member who has had a "house ban"; that member is not one of the named participants of decision R19/12.

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