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Monday, 2 March 2015

EPO Enlarged Board tells Chairman: "disobey President when necessary"

The European Patent Office (EPO) Enlarged Board of Appeal (EBA) has issued an interlocutory decision in case R2/14 (PDF file, 2.3 MB), in which it once again addresses the dual roles of the Board's Chairman, who is also a Vice-President of the Office (VP3), among other issues.

The quite explosive highlights of this Decision, which is analysed in more detail below, are the following findings made by the EBA, at a time when the independence of the Boards and the degree to which they must be subordinate to the management of the Office have never been more closely examined:

    The Enlarged Board members getting ready
    to defend their judicial independence
  • As long as the Chairman of the Enlarged Board ("the Chairman" from here on) is also a Vice-President of the EPO, there is a potential conflict which might compromise his judicial independence unless properly handled.
  • The proper way to handle this is to balance the Chairman's obligation to obey the President (as VP3) against his invariable obligation to act at all times with complete judicial independence.
  • In cases of conflict the judicial role must take precedence, even at the expense of disobeying a direct instruction from the President.
  • The President's authority and power to give instructions to the Chairman in his role as VP3 and to exercise supervisory authority over him are limited by virtue of Article 23(3) of the European Patent Convention (EPC), which lays down the principle of independence of the Boards.
  • The requirement to disobey an instruction or direction from the President or to fail to provide assistance to the President must also apply where the effects of complying would be indirectly liable to affect the "work or working conditions" of the Board members.
  • The only proper, long-term solution is to revise the EPC so as to take the Boards out of the structure of the Office completely, placing them as a separate independent body within the European Patent Organisation.
Mr Battistelli, President of the EPO, was reportedly furious when, in a previous decision, R19/12 (reported here), the EBA decided that the nature of the Chairman's involvement in the management of the Office gave rise to a justified suspicion of partiality, and ordered that he be replaced by an alternative member for that case.

One cannot imagine that the new decision will make Mr Battistelli any happier. As noted above, the EBA specifically alludes to instructions from the President whose effects might affect the work or "working conditions" (a very hot topic across all levels of EPO staff ranks), particularly at a time when speculation abounds that the President is strongly supportive of a proposal to send the Boards of Appeal to Berlin and there is widespread concern within the Boards that this will hamstring their work.

So reading between the lines (perhaps more than was intended), Merpel discerns the EBA telling its Chairman that, if he is asked to assist with or support this move at an organisational level (after all DG3, under his wing, would have to be involved in the move), he must refuse to do so unless he is satisfied that there will be no adverse effect on the Boards, however indirect that might be. Even more clearly, if VP3 is called on or instructed to implement any sort of efficiency goals within the Boards, it appears that the Vice-President must refuse, again unless there is absolutely no possibility of this affecting the work of the Boards, and one cannot see how this would be the case.

And naturally we mustn't overlook the fact that the EBA also speaks directly to the President in this decision, telling him that his power to instruct the Chairman (as long as the latter is subordinate to the President as VP3) is limited by Article 23, and he may not issue instructions that would compromise judicial independence. This is an important shot in a power struggle between the Boards and the President, have no doubt.

While stated to be a non-public decision, it appeared on the EPO Register for public download (this may change) and the issues it covers are of such central importance to the independence of the EPO judges that it requires publication. Merpel has considered the balancing of interests between non-publication, the stated reason for which was to protect the private rights of the three Board members whose participation was objected to, and the strong public interest in reporting the decision which for the first time states that the President's power to direct the Vice-President of DG3 Appeals is limited by the overriding interest in judicial independence (as long as the Vice-President is also the Chairman of the Enlarged Board) and believes the correct course of action is to publish. More pragmatically, it does not read like a decision that is only for the benefit of private parties to an appeal; it reads like one that is expected to have a wide audience including the President, the Administrative Council, and probably everyone else -- not that this affected Merpel's thought processes.

So with that, let's look at the decision.

Background
 
At the time of Decision R19/12, in his role as VP3, the Chairman sat on two high level committees of the EPO, the Management Committee (MAC) and General Advisory Committee (GAC). The petitioner in that case (this being a petition for review of an allegedly wrong decision of a lower Board of Appeal) objected to the Chairman sitting on the Enlarged Board, saying that he was compromised by his dual roles. A reasonable observer would have a justified suspicion that he might be influenced in his review of administrative decisions taken by the Office given that he was involved intimately in the management of the Office. The Enlarged Board agreed and took him off the panel for that hearing.

Superficially it may have looked as if the EBA was rapping the Chairman over the knuckles for having given cause for someone to object, but the reality was very different. This was a Board protecting its Chairman and sending a message to the President: if you think that you can keep control of the Boards by appointing the Enlarged Board Chairman to a managerial role where he is bound (under Article 10) to obey your instructions and assist you unconditionally, think again. Doing so has compromised his role and the independence of the Boards -- hence the reported fury of Mr Battistelli at this decision.

The Chairman subsequently stepped down from both of the managerial committees, other than retaining an observer role for appeal-related matters.

The latest decision, R2/14, deals with a similar objection by a petitioner against the composition of the Enlarged Board panel assigned to its case (concerning an appeal decision with which the petitioner was dissatisfied). The petitioner objected to all three of the members, again including the Chairman, and the two other members.

The objection to the other two members

Before turning to the much more interesting case of the Chairman, let's look at the two other members. The petitioner asked for replacement of these Members, on the grounds that they came from the same Technical Board of Appeal, giving (said the petitioner) that one Board undue influence over the EBA in this case; also, that Board was in a similar area of technology as the Board whose decision they were being asked to review, which was likely to lead to partiality and undue sympathy for the decision under review; and finally, it was argued that EBA members in a petition for review procedure should not be members of the lower Boards of Appeal also.

None of these objections gained much traction and were dismissed pretty quickly. In particular it was held that the design of the legal framework envisaged that Enlarged Board members would also serve on Technical and Legal Boards, and no change in this scheme, or in the appointment of particular members to an Enlarged Board panel, was intended when the EPC was revised to permit petitions for review under Article 112a.

The objection to the Chairman

As regards the Chairman, the initial objection simply referred to the finding in R19/12, and initially the petitioner appeared to believe that the nature of the objection was self-evident from that decision (the EBA agreed as it happened, i.e. the nature of the objection was clear). When the Chairman was asked to comment on the objection he submitted a statement saying that he had relinquished the duties that had given rise to a problem in R19/12, quoting from the relevant order of the President removing him from the committees; he further stated that he was not aware of any pressures on him to compromise his judicial role in pursuit of e.g. efficiency goals.

The petitioner tried to expand its case three times. In a first reply it enumerated several reasons why it believed the role of the Chairman was institutionally compromised due to his alternate role as VP3, even if he had stepped down from the relevant committees. Then, before oral proceedings, it sought production of numerous internal and confidential documents that (it said) might reveal the extent of the Chairman's involvement in management activities and/or the President's interference in the Boards of Appeal, and also requested that evidence be taken from various parties to explore the extent of the Chairman's management activities. Thirdly, following oral proceedings and while waiting for the decision to issue, it wrote to the EBA again saying that the "house ban" affair, covered in this weblog at length, exposed an incident of partiality: nearly all of the internal members of the EBA had written a letter of protest at the President's actions (in suspending a Board member and kicking that member off the Office premises). However, the petitioner noted that the Chairman had not signed this letter, which the petitioner said demonstrated that "other [Board] members could not expect the Chairman to defend their rights vis-à-vis the President."

Did the Chairman's failure to openly criticise the President suggest partiality?

The Board did not look at the "house ban" point, i.e. the inference that should be drawn from the failure of the Chairman to sign a letter critical of the President (a letter signed, incidentally by each of the members who wrote this interlocutory decision along with nearly every other internal member of the EBA). It was made late, and was different from the initial objection. The initial objection had been based on an alleged structural or institutional partiality (of the in abstracto kind) inherent in the dual roles, whereas the observations on the Chairman's failure to sign the letter of protest against the President was based on actual conduct and were aimed at establishing in concreto partiality.

The EBA explicitly said it was not considering the house ban point for procedural reasons alone and that it had not looked at the merits, suggesting to Merpel that there may be scope for a new objection on this explicit point -- and the petitioner appears not to have any qualms about rocking the boat, so perhaps we can expect another new objection and a second interlocutory decision.

Could the petitioner obtain internal documents and evidence from the Office?

The EBA also refused the requests for production of internal documents or the taking of evidence from the Chairman and others. The EPC did not have discovery procedures that would allow a party to uncover documents that might support its case, nor could a party expect the Board to make its case for it -- an appellant or petitioner had to produce its own case for the Board. In the absence of such documents and evidence the petitioner had merely made vague assertions and suggestions that had no evidential basis.

Merpel smiled at the additional suggestion of the EBA, apparently made without irony, that the petitioner could have asked for these documents from the competent bodies. This suggestion betrays an admirably naive faith in the power of a nicely-worded letter addressed to the management of an organisation which appears to be deeply paranoid and averse to any examination of its internal procedures, and which is at war with its own stakeholders over the very issues that the documents would reveal. But perhaps Merpel is wrong. Prizes will be awarded by this blog to any patent attorney who successfully convinces Mr Battistelli to send them the internal investigation guidelines used when investigating Board members, which is one of the documents sought by the petitioner.

The structural/institutional conflict in acting as Chairman & VP3

All of the foregoing meant that the decision was confined to the R19/12 point itself: had the circumstances changed sufficiently since that decision so that the Chairman was no longer to be regarded as under a suspicion of partiality?

The Board accepted the Chairman's account of his reduced activities and disengagement from the relevant committees without question. Nevertheless it noted that the Chairman had dual roles, one managerial in which he was subordinate to and answerable to the President (Arts. 10(2)(f) and (3) EPC), and the other in which he was "in no sense hierarchically subordinate to the President and is not answerable to him" (see Art. 23(3)). These managerial and judicial roles could in principle come into conflict with one another.

The EBA labelled this potential conflict as a "normative conflict" between two equal-ranking rules of the EPC (Art. 10(3) vs Art. 23). All other relevant rules, such as Art. 10(2)(f), or the Staff Regulation that might apply to the Chairman as an employee under Arts. 10 & 11, were subordinate to Articles 10(3) and 23.

Resolving the "normative conflict" using (you guessed it) praktische Konkordanz

The EBA once again noted [presumably in the hope that someone from the AC is listening to the highest patent court in Europe] that the only permanent and clear solution to the question of judicial independence would be to separate the Boards of Appeal entirely from the Office, making the Boards a separate, fully independent body within the European Patent Organisation. While this would require amending the EPC, they helpfully reminded the petitioner [Hmm, says Merpel, for a non-public decision it seems the authors expected a wider audience than a lone disgruntled patentee], and noted also that there was a draft amendment to the EPC ready to go, but that a diplomatic conference would be required to make the necessary changes. The proposal to give the Boards organisational autonomy had widespread support, backing this up in a deadpan footnote quoting from none other than a "B. Battistelli", writing in the GRUR Newsletter in 2010.

So with no diplomatic conference in prospect, how was the conflict between the Chairman's role to be resolved. Borrowing a legal concept called "practical concordance" (praktische Konkordanz) from German constitutional law, they said that the conflicting rules had to be interpreted in a balanced manner:
39.7  In applying the concept of "normative concordance" to the present case, the Board concludes that the President's power to give instructions to the Chairman in his function as VP3 pursuant to Article 10(2)(f) and (3) is limited by Article 23.

The Chairman is therefore relieved of any obligation
(a) to obey any presidential instructions or
(b) to observe any other administrative/executive directions or
(c) to assist the President pursuant to Article 10(3) EPC
if and to the extent that any such instruction, direction or assistance might affect him and/or any other member of the boards of appeal, including the Enlarged Board of Appeal, in performing their judicial duties [...]

39.8 An indirect effect in this context could even be caused by any measure of the aforementioned kinds which, prima facie, is not immediately and intentionally directed to the exercise of judicial duties in the narrow or obvious sense.

Similarly, measures directed to less central aspects of the work and working conditions of the Chairman and other members of the boards of appeal and of the Enlarged Board of Appeal could also have longer-lasting effects. These might be perceived by the members concerned and/or by a reasonable observer, for example a party to proceedings before a board of appeal or the Enlarged Board of Appeal, as influencing the independence of the members of the boards of appeal or the Enlarged Board of Appeal.
The Board continued that, even if he scrupulously tries to balance his two roles, the Chairman/VP3 could be faced with an unresolvable conflict where he either obeys the President (and fails to uphold the principle of judicial independence as a result) or he disobeys the President and thus fails in his role as VP3:
In that event, one may legitimately expect that his judicial duties under Articles 23 (3) and 24 and under Article 6(1) ECHR must prevail.
So there it is. As long as the Chairman remains subordinate within the hierarchy of the Office to the President, nothing in the EPC, his contract or the service regulations, permits him to compromise the independence of the Boards, and nor may the President legitimately instruct him to do anything that affects the working of the Boards.

81 comments:

Anonymous said...

"Prizes will be awarded by this blog to any patent attorney who successfully convinces Mr Battistelli to send them the internal investigation guidelines used when investigating Board members..."

These guidelines were appended to the letter signed by most members of the Enlarged Board, complaining to the Administrative Council about the exclusion of a Board of Appeal member. Merpel published a copy of the letter at the time, but subsequently removed it. Nevertheless, a copy remains here, together with the investigation guidelines.

While I'd like to be able to claim the prize, I feel it would be inappropriate since I have not personally convinced Mr Battistelli to send them to me.

Roufousse T. Fairfly said...

Thanks for the news, this decision requires some more digesting.

The B.B. footnote is köstlich!

If the Hyperprésident succeeds in his "reform" and throws DG3 onto the same treadmill as the rank and file bozos, with the zillion reversible microsteps in the pay scale, the snakes-and-ladders (but mostly snakes) style performance reporting, the blanket surveillance, and general micromanagement of the work, I guess the next step might be to demand the board members to recuse themselves, rather than their boss. The career reform would constitute new facts.

Anonymous said...

Thank you very much Merpel for drawing everyone's attention to this important decision. It is a pity that the European Patent Organisation and the European Patent Office seem to be more interested in hiding these decisions than encouraging a public debate about its merits.
Moreover, it is a shame that the contracting states seemed to regard the creation of a unitary patent more important than removing the structural deficits of the European Patent Convention (cf. R0002/14, FN. 2 last sentence, citing B. Battistelli, GRUR Newsletter 2/2010).
I think right now it is common ground that a diplomatic conference becomes more and more inevitable.
Perhaps it would be a good idea to think about further room for improvement in different areas of the EPC as well.

Anonymous said...

What a corker! Pince-sans-rire!!!

Merpel said...

To the first commenter: my original copy of the EBA letter did not have the investigation guidelines appended to it, but thank you all the same. No prize but you get a katpat for finding them. Now if you can also point readers to all the other documents sought by the petitioner ...

Anonymous said...

Nobody will read this twisted novel, least the addressees.
Reading the order is enough: the EBA has given in to the president and Vice President and obsoleted R19/12 after just one year. They have given in to the pressure of a board member having been ousted with illegal means and the threat to be sent to Berlin.
This decision in itself is proof enough that no EBA or any other BoA is independent, a judicial instance. Nor have they ever been nor will they ever be.

Anonymous said...

What is also noteworthy is that the decision followed and oral proceedings held in November 2014.
However, there does not appear to be any record of this OP being held in the public file.
https://register.epo.org/application?number=EP99965105&tab=doclist

Normally oral proceedings before the EBA should be public according to Article 116 EPC.

Anonymous said...

It seems that anonymous of 08.09 is one of those that have either not read, or if read, completely failed to understand, the decision!

Anonymous said...

"In cases of conflict the judicial role must take precedence, even at the expense of disobeying a direct instruction from the President. "

And the big story is?

Anonymous said...

"The Chairman subsequently stepped down from both of the managerial committees, other than retaining an observer role for appeal-related matters."

Pardon me while I snigger.
Surely you mean "The Chairman was removed from both of the managerial committees ...".

It is also worth noting that we only seem to have "verbal assurances" about this as there doesn't seem to be any official decision or announcement. I may be wrong on that but if I am please point me to such a document.

Anonymous said...

After this decision, Mr Battistelli won't move the Boards of Appeal to Berlin... he will now send them to Mars!

Anonymous said...

In view of the WW1 photo:

It’s a long way for Battistelli
It’s a long way to go
It’s a long way for Battistelli
To command all EPO
(Completely!)
Goodbye, Democracy
Farewell to treatment fair
It’s a long way for Battistelli
Who’s now blocked by Chair.

Anonymous said...

How the chairman of the EBA ceased to be part of the management "team" is really quite irrelevant in the context of him being an independent chairman of the EBA.

Anonymous said...

Enlarged board? Surely this is only a technical board? Only 3 members is a bit of a give away.

Anonymous said...

Hidden?

I must have secret access to the EPO register.

Darren Smyth said...

Anon at 9:27 try Rule 109 EPC:

vhttp://www.epo.org/law-practice/legal-texts/html/epc/2013/e/r109.html

It is an Enlarged Board, not a technical board.

Anonymous said...

Is it pure coincidence that the first dismissive comment was made at 8.09?
(the story as it might have happened in a galaxy far, far away:
a) 8:00 enter office, switch on computer, go get some coffee
b) 8:03 look at emails - nothing from Him,
c) look at the IPFeline blog
d) sh.t if He sees that, He'll do his nut - I'd better take immediate steps to rubbish that R decision
e) 8:07 haven't got much time before He arrives - better make it short; a few lines will have to do
f) 8:09 post sent to the blog. That will teach them - I only pray He likes it)
;-)

Anonymous said...

EPO must save Money, so that now even the Eblarged Boards are not so ... well, enlarged.

Anonymous said...

DS 0943,
I live and learn. Thanks.
Interestingly, that also means this 3 person board was only there to identify clearly not allowable etc petitions. All the stranger that they go on at such length about such matters when the EBA under para b has to decide on the details. The first board could have merely ticked the box marked not clearly not allowed and passed it on, particularly as the petitioner cannot be heard at that point.

Anonymous said...

"I live and learn. Thanks.
Interestingly, that also means this 3 person board was only there to identify clearly not allowable etc petitions. All the stranger that they go on at such length about such matters when the EBA under para b has to decide on the details. ... "

R 19/12 was also issued by an "Enlarged Board" in three person composition.

Not that this invalidates the point you were making. I'm just mentioning it for information.

Anonymous said...

"Is it pure coincidence that the first dismissive comment was made at 8.09?"

No, absolutely not.

It is because hardworking, diligent, passionate-about-their-work, individuals get into work early, whereas whinging, layabout, overpaid, underworked, overfed, EPO examiners struggle to get out of bed in the morning and wander into work just in time for their 3-hour lunch.

Anonymous said...

"EPO Enlarged Board tells Chairman: "disobey President when necessary""i

That's all very well but what if the President tells the Administrative Council to instruct VP3 to show unconditional obedience to the President ?



Anonymous said...

The "investigation guidelines" conclude with:

(4) The implementation of this Circular shall be reviewed regularly, beginning
no later than 24 months after its entry into force
.

Article 20 states that they are to enter into force on 1 January 2013.

If I count my fingers and toes, and borrow my cat's paws (I can leave her her tail and whiskers), I guess that the 24 months are up.

What's up?

Anonymous said...

It might look very nice to continue bashing on the members of the EBA, and especially its chairman, but it is not by repeatedly claiming a supposed partiality of its members that it will become true. R 19/12 has set a clear signal, and some things have changed in order to insure impartiality of the Chairman of the EBA.
I am wondering what representatives want to achieve by such actions. Even if at a glance, time might be gained, as a petition for review has no suspensive effect, it is pointless to act like this.
There are still some important petitions for review pending, see especially R 8/13, in which a lot of questions relating to the independence of the BA and the EBA have been raised.
Why not wait until a decision is taken in this case?
A short reminder: the EBA has accepted to discuss the review in full (5 members), but Oral Proceedings scheduled for 10.10.2014 have been cancelled.

Anonymous said...

Actually 0809 is 0909 Munich time. But don't let that slow your ranting.

Anonymous said...

The decision reminded me of this paper on the AMBA website - see section 7:

Organisational independence of
the Boards of Appeal of the EPO
http://www.amba-epo.org/DOCS/PDF/OrgIndepBoA_AMBA_v24082009.pdf

Anonymous said...

0809 0909 whatever noone right in his mind would post any comment to this blog from his office computer.

Anonymous said...

While extremly verbose, an excellent example of verbal diarrhea the decision is nothing but a complete surrender to the boss, short off only offering a six handed foort massage.

Anonymous said...

I do all the time.

Anonymous said...

Is it me or does it seem a bit unrealistic that in order to preserve their independence the BoAs must potentially disobey orders from their management and risk their own hides?

Anonymous said...

The board intimidated by BB has shown no courage and has produced a pathetic decision. The three members have obviously tried a safe way out. The boards have no independent future.

Anonymous said...

Watching this from afar, I can't quite see where the problem with decision R2/14 lies, which is written according to what seems to be long established practice of the Boards.
Starting at the end, the "Order" can do no more than answer the original question, which was whether board members, and if so, which board members would have to recuse themselves. The clear answer given is: "None".
Next, the Summary of Facts and Submissions carefully sets out the petitioner's position. Had it omitted anything reasonably relevant, there would have been an outcry that the board was summing up the facts to fit its decision.
Finally, as far as the Reasons for the decision are concerned, it seems that the board simply carefully presented the detailed considerations that led to its Order. And there I really cannot see any trace of intimidation. Why would, for instance, Battistelli's own inconsistency between 2010 and now be brought into the discussion? To flatter him? Is the statement that the chairman of the EBA has to put his judicial role first also intended to appease the president? And so on ...
Could some of the negative comments be the result of a lack of understanding of how decisions of the Boards are structured and what can and cannot be said and decided in their decisions? Clearly, board decisions cannot and may not make broad political statements supported by short but careless argumentation.
Or is there perhaps a political motivationbehind some of the comments aimed at deflecting an uncomfortable message to top management?
Oh, and before anyone jumps to wayward conclusions about my person, as I said, I am just watching all this from afar.

Anonymous said...

There is a further new partiality decision:

http://www.epo.org/law-practice/case-law-appeals/recent/t112130eu1.html

I welcome the patent owner for trying to get the EBA involved via Article 112 EPC, i.e. in its "enlarged" composition including external members, because the missing separation of powers IS a fundamental point of law, which should not be handled by a three-person-board not comprising external members.

Anonymous said...

I don't see the relevance of T2130/11, linked in the previous comment. Is there a typo?

Anonymous said...

The decision is grap. The fact that you have to disobey your management to uphold law is the most blundant sign of partiality. This applies to the repudiated board in the same manner as on the one judging the repudiation. This decision is nothing but surrender. It says we are partial but brave. Well not so brave then having overturned R19/12.

Anonymous said...

Sorry, copy/paste error:

http://www.epo.org/law-practice/case-law-appeals/recent/t091938eu1.html

Anonymous said...

"The decision is grap."

You must be gidding!

Anonymous said...

The great thing about "grap" is that it never gets caught in web filters, not like "c**p"

Anonymous said...

I fully agree with Anon 12:10. The decision is really "grap". A court would never decide that a judge must disobey the law that the executive approved. It could say that a given law or arrangement is against the constitution or violates human rights etc but never "let that law or arrangement be but disobey if necessary". This shows the level of the alleged judges in the boards. To save their professional life -facing the possible anger- of BB they have gone a ridiculous route. Shame on that board! Dear members, if you do not show competence and courage in judging then you do not deserve independence.

Anonymous said...

I find the decision not bad. For all those who were not party to the proceedings (and in this case may also for the parties) the most interesting part is not the order but the reasons. And the reasons, for those who take the time to read them attentively, comprise a lot of interesting considerations.
First they go beyond R19/12 by clearly stating that there is normative conflict to be solved by a legislative initiative (points 39 to 39.2).
Then the board states how this conflict can be mitigated by requiring the Chairman do disobey all those instructions affecting the performance of judicial duties (points 39.7 to 39.9). Given that the board considers these possibly unlawful instructions to comprise also indirect measure, such as those relating to efficiency goals or less central aspects of the work or working conditions, this part must have induced some reaction in the president.
Furthermore these considerations together with the very reasonable proposal of CIPA set some yardsticks against which the proposal of the administrative council will be measured. We will see whether the council (and the UK government) were earnest when they declared their support for the independence of the board.
The disappointing part is the last one (from point 51 onwards) where the board did not consider the merit of the mess created by the president as the investigation guidelines and the “house ban”. Anyway these points have not been decided and will surely be raised again in another case. Thus I think that the council is well advised to solve these issues as soon as possible even if this will further disappoint the president.

Anonymous said...

This is even more dishonorable surrender of a BoA

http://www.epo.org/law-practice/case-law-appeals/recent/t091938eu1.html

Anonymous said...

Statements such as "this decision is grap", unsupported by cogent argument, says more about the commentator than about the decision concerned.
Is this perhaps a new strategy to try to discredit the boards in the eyes of the public in the hope that this will take the pressure off the Administration?

Anonymous said...

The recent decisions on partiality by BoAs and EBAs do not fall short of boot licking. These decisions more than the acts of the president prove beyond doubt that they are partial i.e. unfit to take independent decisions.

The outcome of the verdict of the EBA on their colleague under investigation can be taken for granted.

Anonymous said...

With the unitary patent the BoAs and by consequence the EBAs will become redundant. There is no reason whatsoever to have a second pseudo technical, pseudo judiciary instance with legitmate tribunals having been established.

The president's motives may be more or less noble, they are logical. With the establishment of European patent tribunals there is no way to maintain these pseudo tribunals which are likely to conflict with the proper courts.

A recent study showed (Papertigerpatents) that 80% of European patents are invalidatesd by national courts with peaks of 90% for software patents. Quite illustrative of the total failure of the EPO and the boards of appeal exerting supervision over its granting process.

No tears to be shed for them.

Anonymous said...

http://www.bardehle.com/uploads/files/Patent_Papiertiger.pdf

Anonymous said...

Interesting paper but, of course, it is self selecting in that only highly contentious cases advance to litigation and those complaints which are without all merit have already been filtered out. It hardly defines BiA quality since there is no indication what happened to the cases before litigation - did the BoA even see them??

Anonymous said...

Research like this only looks at patents which are attacked in the courts. But usually people only attack patents in the courts if their validity is doubtful. It is then not surprising that a significant number of these doubtful patents are held invalid. The sample is biased.

If they cannot find good prior art, then defendants are less likely to attack - especially in a bifurcated system such as Germany's where it requires a separate legal action. Instead, they will respect the patent and not infringe it. Or negotiate the best settlement they can achieve.

Anonymous said...

Statements such as "this decision is grap", unsupported by cogent argument, says more about the commentator than about the decision concerned.
Is this perhaps a new strategy to try to discredit the boards in the eyes of the public in the hope that this will take the pressure off the Administration?

No, my dear friend, it is a strategy by all the president's men. It prepares the way for BB getting rid of the boards before his favorite project, the UPC, starts operations. The UPC will then immediately start dealing with over 2000 cases a year and will be headed by its first president of the court ( guess who!)

Anonymous said...

There is unanimous aggreement among experts that uncontested and/or unsettled patents are even weaker than those decided upon by revocation instances.

Revocation proceedings in Germany are so dirt cheap tjat the plaintiff has no reason not to try and a very high success rate.

http://www.law.berkeley.edu/files/Henkel_Joachim_IPSC_paper_2014.pdf

While this is just one paper it provides not only a sound reasoning but a copious list of references confirming that patent offices around the world are basically without function.

Anonymous said...

Anonymous 09 53

A most noble intention of the president. The Boas are not the safeguard of the system but its crux. The recent decisions comin back on R19/12 prove their cowardice and they prove the president is right, at least on this issue.

Anonymous said...

Can someone explain this to me:
The European patent system was, for nearly forty years a sucess story, and the boards of appeal highly respected even by the highest courts of Contracting States.

Since Battistelli has become president, there have been increasingly venomous attacks on the boards, and now one of the last bloggers even seems to argue for abolishing patent examination altogether (in other words, to have a system as in the French office which doesn't examine!).

Why this apparent reversal in attitudes towards the EPO and its Boards? Is this orchestrated by Battistelli wanting to become the last president ever of the EPO?

Anonymous said...

The high esteem basically comes from the patent attorneys who are substantially alimented by the office. The public at large does not know the office exists, and if they do, on matters such as software and food patents, they despise the office, for all the best reasons. In particular British courts and judges, have had much less than appraising words for in particular the BoAs, attributing intellectual dishonesty to them.

As to life without patent offices and/or examination France does not seem the most retarded nation, nor Switzerland for that matter. There is not more than a handful of civilised countries examining, or allegedly examining patents.

Anonymous said...

A system so broken that it gets more and more applications per year? I'm not using that as a winning argument but there seem to be here a lot of 'well, everyone knows' dismissal of the BoAs in particular. If everyone does know, why isn't somebody doping something about it rather than having Battistelli carry out his own social experiment? Or if he's supported by the AC, why don't they come forward with the argument that the patent system as per the EPO needs to be rethought? Let there be light? Somehow i don't expect they would because it isn't what they want. When the EU patent takes hold, it'll be interesting to see what smaller states or non-EU states think about the crumbs that remain for them. Or, come to think about it, even the IPO?

Anonymous said...

So, La Grand Nation and mighty Switzerland don't examine.
If that system is so good, then why do Germany, Russia, Japan and the USA, to name just a few, prefer an examination system? Oh, and should I be threatened under an unexamined French patent, if I want to see how strong that patent is likely to be, I need do little more than look across the border to see what the German examiner made of it. In short, the French system is actually a parasitic system.
It is facinating to see how this discussion is beginning to flush out the true intentions behind those that try to rubbish the BoA, and the EPO as a whole (except, of course, its very top management).l

Anonymous said...

A growing number of applications is a sure sign for a broken system. Of course you file your unjustified claims with a leniant rather than a strictly law abiding entity. The effect of mostly invalid patents coming from this system cannot be denied nor can it be denied that this is exactly what the users of the system want.

The true users of the system are not so much the applicans but the attorneys Increased litigosity stemming from the extremly low quality standards of the EPO and moreso the Boas is their business model and that of office and the boards.

Anonymous said...

The BoAs have rubbished themselves long ago. Looking what the German examiner or European examiner did is no guidance, 80% plus of their "products" get invalidated before courts. Rather flip a coin, its impartial and does not care for its privileges and does not pretend fees of any kind. Indeed a registration office would serve the public better than an examining one which conveys treacherous value to innocent paper smeared with trivialities. Search can easily be privatised.

Anonymous said...

The post by Anonymous @ 11:03 sounds in the old saw that patents are not really needed anyway.

Be it cause or correlation, I care not, nor does it matter much, but the identity remains: there are NO modern advanced societies without a patent system.

Until such a time that the "advocates" for a opposite view come forward with an example of a nation so willing to drink their koolaid and abandon IP protection as the alleged masses so demand, well, I will just dismiss those messages as being the same old propaganda as it ever was.

Meldrew said...

Anonymous 11:32 "A system so broken that it gets more and more applications per year?"

It appears you believe the PR talking about "filings" and read into this "applications".

This shows that advertising works!

See my blog for a fair assessment of the 2014 results.

In summary:-
- application numbers at the EPO are relatively stagnant but show signs of recovery;
- numbers could recover strongly if the European economy recovers strongly;
-the unitary patent may be an additional driver to increasing application numbers;
-as yet the EPO appears not to have positively repelled applicants.

MaxDrei said...

Why the acqzuiescence in the AC? Because its members are the national governments. They drink a stream of cash, which is dispensed to them by the EPO President (who seems to divide up the EPO profit cake as he pleases, in his absolute discretion, in a way known only to his closest cronies).

The Boards of Appeal are expensive for the EPO to run. So, for as long as they are part of the EPO, they suck off some of the cash, before it can flow to the Member States.

Does that explain it?

Anonymous said...

MaxDrei,
I believe you've hit the proverbial nail on the head!


Anonymous said...

"Grab" as in the world famous (in the UK) inventor Thomas Grapper?

Or like Goody Allub scribbled, Abt natural, I'm pointing a gub at you.

(Why did he run the risk, he could have filed a patent instead).

I know, I know, the topic is dead serious, but: SCNR.

Anonymous said...

Is all this ranting about the lenience oft he BoA backed up by any evidence? The data concerning the validity of the EPO patents are irrelevant because the BoA are not reviewing the granting process but only the refusal and opposition decisions.
I could only find the statistics in the EPO official Journal dedicated to the case law (issue 5 of 2014) and by looking at the inter partes cases in order to make a meaningful comparison with national courts the data do not seem to support the thesis of the lenient boards.

Anonymous said...

MaxDrei, you are right. The member states get so much out of this System: not only enormous amounts of renewal fees ("Money for Nothing"), but cooperation programmes or the European Patent Academy (created solely for Training purposes for the national Offices) etc. There are so many ways Money is flowing from the EPO towards the member states. It would be an illusion to expect them to vote against the President.

Anonymous said...

The Boas are reviewing the granting processes when they review refusals, as a refusal is a possible outcome of the granting process evn though some first instance departments may have forgotten.

It is them the Boas who set the threshold for the examination inside the EPO. And somebody else herein above has provided the evidence how totally inadequte the examination process is when reviewed by proper courts.
They act as an appeal instance also in oppostions, opposition being a petty revocation and their results are much mire leniant and infinitely slower. Their pendencies being a lot longer than that of proper courts they do nothing but pronlongue legal uncertainty.

Their remission rate to the previous instance for further prosecution is abolutely scandalous.

Oppositions over the years have dropped in numbers because for a relatively modest cost you can get a professional ruling in Germany by a proper court as opposed to one of interested amateurs with a proper procedure and timeliness and a desirable outcome for the party asking for revocation. While this has no immediate effect on all member states, a negative ruling in either Britain or Germany practically kills the patent Europewide.

Anonymous said...

The EPO does nothing but drain money from the national offices. As long as the application is pendent before the office they get absolutely nothing. Once a patent is validated the EPO gets half of the national annual fees. This is free money but for the EPO. Most patents with the exception of pharmancy only get validated in a fraction of the member states. All others see no money whatsoever from the office.
Many EPO insiders project their own revenue and profit driven approach on the national offices which is actually absurd for most member states other than Germany, Britain and the NL. Actually selffinancing is the inherent reason for the poor quality of the office.

George said...

Wow, this thread has become negative as can be. Somebody unleashed the death squad? Whining has been replaced by ranting. Not sure that we are better off though.

Anonymous said...

We now have in the same comment an allegation that the EPO is draining money from the national offices (first line) and another allegation that "selffinancing" is the reason for poor quality (last line).
So, which financial model is it to be, draining money from others or self financing? It can't be both!

Anonymous said...

George,
Your comment is in my opinion spot-on, except you forgot to mention that most of the rants are also displying woeful ignorance.

Anonymous said...

The Epo drains money from the national offices to finance itself. Before a patent is validated, the national offices see no money whatsover. All cash flows to the EPO. Most patents are not validated in most member states. Applicant's actively keep the application pending before the EPO for financial and legal reasons. They save on national fees, national attorney costs and translations and during pendency before the EPO patents cannot be legally challenged before a proper national court. Its a win-win-loose situation. The winners are applicants and the office, the looser is the national public without a voice loosing both legitimate national fees for national rights and more so legal certainty. The Boas with their absurd pendencies further delay national fees and legal certainty. Many patents leave the office after a decade and more and still 80% of them are invalid.
You may or may not agree with British or German or French Courts but comparing their verdicts with that of the BoAs on a merely formal level, is like comparing Shakespeare with a cartoon.

It would be an extremely dangerous experiment to man the European Patent Courts with the personnel coming from the BoA or let the BoAs do some of this job. With the establishment of European Patent courts there is no more need or room for paralegal judges.

Anonymous said...

Oh, that is why they are now training divorce lawyers to become patent judges!

Anonymous said...

"The Epo drains money from the national offices to finance itself. Before a patent is validated, the national offices see no money whatsover. All cash flows to the EPO."

Whereas if the applicant filed national applications instead, the national patent offices would actually lose money. The fees they receive during the application phase do not usually cover the cost of examination.

"Most patents are not validated in most member states."

But that would also be true - probably more so - if the applicant had to file individual national applications instead.

"Applicant's actively keep the application pending before the EPO for financial and legal reasons. They save on national fees, national attorney costs and translations"

Have you seen the size of the EPO's annual renewal fees? Since most patents are not validated in most member states, the national renewal fees payable after grant are usually much lower.

"and during pendency before the EPO patents cannot be legally challenged before a proper national court."

Nor can national applications be legally challenged during pendency. It's true that the pendency times in the EPO are far too long, but they may also be long in some national offices. For example, in Germany the applicant can wait seven years before he even requests examination.

Anonymous said...

Some of what the last post says just confirms the previous one; some is slightly inexact,
In most countries you have no examination whatsoever and hence no cost.

In Germany you have deferred examination but any third party can trigger examination of any application at a low cost.

That is half way to a registration office which would be a reasonable approach. I.e, only examine patents somebody is interested in i.e. Far less than 1% of the cases.

The examination as practiced by the European but also the German office resulting in 80 % invalid patents does not produce the added value it was intended for, legal certainty. Neither for the proprietor and less so for the public which is more deplorable.

There are rumors that the EPO is about to introduce indefinitely deferred examination under the ironic header or "early certainity". You get a first opinion you don't have to answer to but you are not bothered by any further logorrheic communications unless you expressly ask for it.
Given the poor quality of both examination and appeal this just acknowledges the sad reality.

Anonymous said...

It it statistical nonsense to say that 80% of granted patents are invalid, for the simple reasons that only a minority of patents granted are subject to litigation during their life time.

Anonymous said...

It it statistical nonsense to say that 80% of granted patents are invalid, for the simple reasons that only a minority of patents granted are subject to litigation during their life time.

Anonymous said...

It's not just that only a tiny minority of patents are subject to litigation after grant. People usually only launch nullity actions against weak patents, where they believe they have a good chance of winning. So the majority of strong patents do not appear in your statistics. It was pointed out previously that your figures are invalid because of selection bias. You have not addressed this.

Anonymous said...

Hard evidence that it is the strong patents that get invalidated

http://www.law.berkeley.edu/files/Henkel_Joachim_IPSC_paper_2014.pdf

The 80% invalid granted patents is actually only a lower limit.

Anonymous said...

The terms weak and strong patents as opposed to valid and invalid patents is a giveaway.

Weak patents are those which can be invalidated easily strong patents which need some effort to invalidate, in the end they are both -> invalid.

Nobody right in his mind ever tries to enforce a weak patent before a court in the first place. The proprietor of such an invalid weak patent risks to loose not only the cheap revocation proceedings, but also the expensive litigation proceedings and most of all the expensive overvalued patent itself.

The alleged infringer has no reason not to try cheap revocation.

It is the proprietor who selects what he tries to enforce, Non-enforcement is a sure sign of a weak patent.

In Germany more than half of revocation proceedings are settled out of court. According to reliable source (see above) the proprietor offers the alleged infringer a free beer, so he does not loose the strong but nevertheless invalid patent alltogether.

Meldrew said...

"Nobody right in his mind ever tries to enforce a weak patent before a court in the first place."

There are plenty of patent holders who are in their right minds asserting weak patents, particularly in Germany. Separation of infringement and validity proceedings means that an infringer of an invalid right can be impeded for a significant time before the right is found invalid. Often, small companies just cannot take the risk.

In Germany more than half of revocation proceedings are settled out of court.

Sometimes because the point has gone. If the infringement court finds against you the quickest way back to market is to take a licence.

According to reliable source (see above) the proprietor offers the alleged infringer a free beer, so he does not loose the strong but nevertheless invalid patent all together

So jointly conspiring to affect trade in an anti-competitive manner by keeping the other suckers off the market. Actionably?

The amount of patent litigation in Germany is seen by some as a strength. It is certainly good for litigators, and probably prosecutors, as the system is certainly an encouragement to get and maintain even invalid and weak patents. This also encourages opposition to clear the path (more work for attorneys) - that is why most opponents at the EPO are German.

In short, the German litigation system is so loaded in favour of the patentee, it is not surprising a lot of money is spent obtaining and attacking rights.

Anonymous said...

Sometimes because the point has gone. If the infringement court finds against you the quickest way back to market is to take a licence.

Sometimes but most of the time not, claims above interesting article.

So jointly conspiring to affect trade in an anti-competitive manner by keeping the other suckers off the market. Actionably?

Is not this what patents are about? Monopolies such as patent are hardly a means to enforce competition. First you try alone and you share if you have to,


In short, the German litigation system is so loaded in favour of the patentee, it is not surprising a lot of money is spent obtaining and attacking rights.

80 % invalidation is hardly an incentive to assert invalid rights and not a sign of patentee friendliness.

The high litigation rate is only the result of very low procedural cost in Germany. This appears a strength, you can actually afford to defend yourselves from mostly unjustified claims. A court unlike a patent office does not have to care about selffinancing. If it were like that tribunals would only hand out acquittals and dearh sentences as they are arguably cheaper than feeding someone in jail

Anonymous said...

Your latest Berkeley paper is marked "Early draft, please do not circulate. Comments welcome". Here are a few comments.

The paper reveals just how unreliable the data is.

Only 35% of the patents were found "fully invalid". The way you get to 75% is by adding in another 40% which were found "partially valid".

This 40% covers a complete range of possibilities:

At one end, the court will have only required a minor amendment, and the patent emerges unscathed. The attacker has lost, and the patent remains effective against infringers.

At the other end, maybe only sub-claim 6 remains valid, covering a feature that no-one is interested in.

And every possibility in between.

You simply cannot form reliable conclusions on such poor data. You especially cannot apply the results from a tiny minority of litigated patents to the vast majority which are not litigated, on the basis of a handful of interviews and a small survey of opinions.

Note also that the data only covers cases where the court reached a decision. 55% of cases settled instead. Again, that will cover a huge range. In some cases the infringer might have given an undertaking to stop selling his product. In others, the patentee might have granted a licence. That might or might not have been what the patentee wanted all along.

The paper just gives a few anecdotal opinions to suggest that licences were granted. And then concludes - with no evidence - that therefore the patent was invalid. My own equally valid opinion - based on direct experience - is that this is only one of a number of possible reasons.

It also suggests - again with no evidence, and contrary to my direct experience - that only robust patents are attacked.

The paper asks for comments. Here's one. Rubbish.

Anonymous said...

Well somebody who puts a paper on the internet not wanting it to be circulated? The URL does bot point to some professional patent haters. Neither greenpeace nor mr. Stallman

Partially invalid is still invalid. Partial invalidity speaks possibly for the patent attorney drawing it up and adding something somewhere deep in the description which is weird enough not to be considered obvious. From the patent examiners point of view this makes no difference. He or she granted invalid claims. This on the first level is a personal inadequacy when the number approach or exceed 80% it is an institutional inadequacy.

The paper suggesst using logic that robust patents are attacked more often and provides empircal data from interviews. The paper is not alone. Bardehle's Papertigers go in the same direction and quote even higher numbers on more recent data. Patent offices are not only inadequate, they have become more so over time. Due respect for your opinion but your experience is only a single data point, and possibly an interested one.

The article explains that and why unsettled patents are even weaker, the free beer approach.

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