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.

Thursday, 5 November 2015

The Beautiful Game: a view of the EPO Board of Appeal manpower shortage

Football (not to be confused with American Football) is famously described as "The Beautiful Game" [as described by legendary Brazilian soccer star Pele: see here and here].  One frequently-discussed feature of the Beautiful Game is the phenomenon that, in the highly competitive world of professional football, in which teams consisting of eleven players contest each other, a team which is one man short will play better than when at its full complement of eleven [for discussions of this phenomenon, which really is the exception rather than the rule, click here and here]. Merpel wonders whether the same principle is being applied at the European Patent Office (EPO), where it may appear to the interested bystander that fielding a weakened team is to become a matter of official policy and that the Boards of Appeal are assumed to deliver better results when their numbers are depleted.

With only her retractable claws to count on, Merpel has been doing some counting. It seems to her that, when January comes around, there will be somewhere in the region of seven unfilled vacancies in the Legal Board, out of a total of 31, and plenty of other gaps in the team line-up. As she sees it:
  • Boards 3.2.3, 3.2.4 and 3.2.6 will each be lacking one technical member;
  • Board 3.2.8 will be short of a chairperson;
  • Board 3.3.1 and 3.2.2 will each be short of two technical members;
  • Board 3.3.3 will be short of a chairperson;
  • Board 3.3.9 short of one technical member;
  • Boards 3.4.1 and 3.4.3 will each be missing one technical member;
  • Board 3.4.2 will be chairless;
  • Board 3.5.1 will be short of two technical members and a chairperson;
  • Board 3.5.2 will be short of a chairperson;
  • Board 3.5.4 will be short of just one technical member and a chairperson;
  • Board 3.5.7 will be short of one technical member. 
[Note to puzzled readers: the three number code used above is redolent with meaning. The initial "3" refers to Directorate-General 3 of the EPO, which means the Boards of Appeal. The second and third digits represent a technical subject category and subcategory. Further information about the distribution of business between the Boards can be found here]. 

If Merpel's arithmetic is right, and assuming that no appointments are being made between now and the end of the year, this all means that there are seven legal, 14 technical and six chairs missing [not counting the one currently suspended member].

It has been suggested that the EPO can do without so many Board of Appeal members because the volume of appeals may be falling.  This suggestion has however been disputed.  While statistics can lie or mislead, there should be some actual and verifiable numbers floating round which can confirm or deny (i) whether the number of appeals is falling and (ii) whether, if there is data to support this claim, it reflects an actual trend or is merely a deviation from the norm.

Merpel also hears a rumour that the number of Board of Appeal members is being culled since a large number of potential users of the EPO system will wish to opt for the untried and indeed currently non-operative Unified Patent Court revocation proceedings in preference for EPO oppositions. If this is the case -- and it would be surprising if it were -- it would be good for someone at the EPO to say so.

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29 comments:

Jim Kinnier Wilson said...

Interesting post, Merpel. It seems to me that in the early days of the UPC revocation system, which will of course come into effect when the requisite number of Member States sign ratification instruments, there could well be patents that are within the EPEU for those Members States, but still classic EP for Member States that have not ratified. Opposition proceedings could still be needed in as many instances as before, even if the UPC central revocation is initiated.

Michael Factor said...

Sounds like Musical Chairs. One keeps removing the chairs one at a time, until only the Head of the EPO is left standing!

Anonymous said...

Presidio

"[...] the EPO can do without so many Board of Appeal members because the volume of appeals may be falling."

Vienna is a serious option and with the number two in Article 97(2) EPC being clearly be number two soon: Smaller site, less appeals, smaller boards - easy peasy.

The Cat that Walks by Himself said...

Re: Vienna

Also in Vienna, the BoA can make decisions that will make it to a first choice dispute forum. I guess.

Proof of the pudding said...

Without knowing how the various branches of the UPC will perform, why on earth would anyone seek revocation before the UPC instead of filing an EPO opposition? Only if you missed the opposition deadline would this make any sense at this stage.

Further to Jim's comment, I would add that there is a serious possibility of the number of oppositions actually increasing as a result of the advent of the UPC.

As Jim points out, oppositions will still be required for all of the following:
- Spain;
- all EPC but non-EU member states; and
- signatories to the UPC that do not ratify the agreement.

There are also likely to be a large number of patents opted out of the UPC system. And as the icing on the cake, a significant proportion of those patents that are granted with unitary effect will be valid in more territories that they would otherwise have been under the old system - meaning that the pool of potentially affected competitors (i.e. potential opponents) will be increased.

With all of the above in mind, it appears to me to be nonsensical to be reducing numbers in DG3 at this point.

Anonymous said...

Any idea how many will retire or not be renominated in the near future? Or do you include that in your figures? As far as I am aware the EPO has not placed any ads for new members so the likelihood of filling the vacant posts must be zero, unless the AC can parachute in suitably qualified people at its next meeting.

Cynic said...

Indeed, I think particular training in opposition work has been stopped for examiners so your theory about reduced oppositions filed at the EPO may well be expected. Of course, that could become a self-fulfilling prophecy if oppositions (and appeals) are delayed and, for example, a court in Paris were to be available but underused. I'm sure BB wouldn't wish that but perhaps transparency towards all interested parties (staff and attorneys) could be supplied?

DoNotFeedTheTrolls said...

On one hand (examination and opposition) the president is insisting on timeliness and early certainty, on the other hand (appeal) he is blocking the workflow. As far as I am aware (maybe oversimplifying), a Board without a member does not just work slower, it simply stops working because of legal requirements. And we see not only one, but several incomplete Boards. What does he want to achieve?
(UPC rings a bell)

Flyposter said...

Some commenters above seem not to understand the system: OPPOSITION is dealt with by DG1; APPEAL is dealt with by DG3. Thus, remarks about oppo have nothing to do with this post.

Ok, to move on: One fascinating thing which ahs slipped out from Bastistelli, however, is his opinion that the suspended DG3 MBA was part of a conspiracy of people determined to undermine both the EPO and the Unitary Patent/Unified Patent Court. One of the fairly bizarre justifications he has given for this assertion is that DG3 members might find their position threatened by the UPC. This implies that he believes 2 things:

1. that the alleged conspiracy is within DG3, although there seems no evidence for this;
2. until DG3 is reformed to his satisfaction, there must be no further appointments to it.

Fact: since R19/12, when VP3 was required by the EBA to recuse himself on the grounds that he could not be considered independent, DG3 has been considered by BB as an enemy.

It will be interesting to see the next decision by the EBA...

Proof of the pudding said...

Flyposter - there is no confusion. Oppositions are of course handled by DG1, but there is rarely any finality (at least for commercially important cases) until an appeal against the OD's decision has been concluded. Thus, the point that I made still stands - it looks like the opposition system will be more (and not less) heavily used after the advent of the UPC, and so DG3's piece of that particular pie will grow in size... with less people to dispose of it.

Anonymous said...

Flyposter, I think it is you who has failed to understand the comments here. The point about oppositions was that it could be an indicator that the office is expecting a lower number of oppositions in the future (and hence opposition appeals). The workload of the boards does, after all, originate not only from examination appeals.
How many MBAs have signed up to become judges in the UPC courts? I know I would have put myself forward as a candidate if I was an MBA. Can we expect a mass exodus when the courts are up and running?

Wrote H. Bosch

Anonymous said...

"Le Temps Detruit Tous" quotes…

BB views the world through his very own lens,
enjoying his diorama of light and shade without offence.

With a picture of him and the EPO that failed develop in the dark room,
there he was strangeness in the room and standing in his gloom.

BB will never see the EPO for what it is,
when always focused on the negatives.

We couldn't keep the pose we held before the flash,
then we started to lose focus- things were moving too fast.

Now he missed his shot, the memories obscured,
in his search for picture perfect- the images blurred.

Now the frame will remain vacant- waiting patiently,
as it longs for that picture perfect enough to fill it's vacancy.

maxdrei said...

For the politicians, the imperative is that the UPC, with its seat in Paris, gets off to a flying start and is a success. So the AC is right behind BB, in knee-capping DG3. Nothing can be allowed to stand in the way of UPC pre-eminence.

Millipede said...

One thing that seems tobe happening -which affects the position of the European patent attornays as a group -is that it seems that the number of dsecisions in Disciplinary Board o ppeal cases is decreasing. This may be due to a lack of suiffient legal members of the BoA since these make up most of the DBoA's.

Without replenishing the legal BoA members it seems that the DBoA has stopped functioning, which, next to the fact that the EPO is withdrawing more and more from the organisation of the EQE, may have an impact on the patent profession. Thus a warning for epi: watch your interests!

Cynic said...

H Bosch,
I thought that members of the BoA had been forbidden or blocked from applying to the UPC. Could be wrong. Anyone know?

Meldrew said...

So let me get this right.

Users are going to:
- stop filing EP oppositions (fee €775) and EP appeals (fee €1860) with no liability for patentee costs if you fail;
- in favour of UPC revocations (minimum proposed fee €20,000) and appeals (minimum proposed fee €16,000) with liability for patentee representation costs of up to €3m;
- simply because it is potentially faster.

There will of course be those willing to pay for speed: however it is well known that although all have the possibility of paying for a Ferrari, most people make do with a Skoda or the like. The Skoda may be slower, but it is much less hair-raising.

When the official fees alone for UPC revocation and appeal amount to 13 times as much in official fees as opposition, and incur a cost liability large enough to buy a supercar, comparing oppositions with revocations is like comparing grapes with pumpkins. You get a lot of grapes for the same price as a pumpkin, and less chance of indigestion from eating too much in one go

I can see the UPC affecting the finances of those who miss the opposition period, since central revocation is likely to be much less expensive than country-by-country revocation. National revocation actions are likely to fall, as the opt out rate will not be 100%.

It should also be noted that opposition rates have dropped a little in recent years (a shade under 5% on average), but third party observations are growing in number fast as users are beginning to try to stop troubling applications being granted, rather than waiting to oppose.

The unitary patent and the UPC will make European patents more valuable and the opposition rate is likely to rise, as is the 3PO rate.

Stuck in the mire said...

About Vienna. The Staff Committee reported on the EPO's intranet yesterday that Vice-President DG 5 had officially informed them that the Office was preparing a paper for the Administrative Council, proposing that:
- DG 3 moves to Vienna
- the current work in Vienna (= patent information) moves to Munich

Apparently, this is just "an option". Nevertheless, it is one that is on its way to appearing in an official EPO proposal.

A move to Vienna would surely lead some (many?) Board Members to quit their jobs, if they're not mobile for some personal reason or other. The same for the people transferring in the other direction.

Black Sheep said...

Verifiable numbers concerning the number of appeals can be found in EPO’s annual report:
2010 2011 2012 2013 2014
Cases received 2 545 2 657 2 602 2 515 2 354
Cases settled 1 962 1 875 2 029 2 137 2 300

The figures show that the number of appeals has actually slightly decreased from above 2500 to below 2500. However, in 2014 the number of settled cases was still lower than the number of new cases which means that the pendency time increased. The decrease in new cases is the consequence of the project Early Certainty from Search which results in lower final actions of the Examining and Opposition Divisions. However, this can only be a temporary effect, because at some time all cases have to be dealt with.

As a result, pendency times of Appeals will rapidly increase due to the management’s policy of leaving DG3 posts empty. The number of appeals is no reasonable explanation for this policy. As with many other projects, the next administration will have to clear the mess.

Anonymous said...

Wild kitten said...

As Stuck in the mire rightly states, a move of patent information to Munich will motivate a number of patent information specialists to quit their jobs, leading to a brain drain in this area, too. This will affect even more users of the patent system than the BoA issue,as many more stakeholders depend on reliable, high quality patent information tools and services.

Nevertheless, BB will pay his usual lip service how important patent information is, at next weeks EPO Patent Information Conference in Denmark, the home country of the AC chair, Jesper Kongstadt.

The Cat that Walks by Himself said...

Maybe it is a good idea to have a survey among those who filing now oppositions (fee €775) and EP appeals (fee €1860) whether they would use the UPC instead. And whether they would be interested in faster oppositions and appeals at EPO, upon paying a higher fee, if necessary.

@ Meldrew
- in favour of UPC revocations (minimum proposed fee €20,000) and appeals (minimum proposed fee €16,000) with liability for patentee representation costs of up to €3m;
- simply because it is potentially faster


Meldrew, image for a while how numbers 20000/16000/3000000 sound in ears of SME's. It might be a one time event for most of them. Even, if some sort of reduction would apply to SME's, it is difficult to believe that this reduction would be 90%.

Meldrew said...

Interesting figures on the number of appeals and disposal rates. Adding up the figures from 2010 to 2014 you get 12673 appeals filed and 10303 appeals settled. The difference is 2370, roughly an entire year's production.

The ratio of cases settled to cases received has improved in recent years. However, the dramatic jump in settlements and drop in appeals received may be due in part to a working through of CA/D16/13 amending the rules concerning refund of appeal fees, and CA/D14/13 increasing the appeal fee by 50%. Paying people to leave the queue and charging more for entering the queue was a very sensible change; but the effect may be temporary.

[Does anyone know whether the number of appeals in 2015 is likely to exceed 2014? The number of decisions looks like dropping from a scan of the BoA database].

Still, it must be acknowledged that the Boards of Appeal were beginning to keep pace with the workload and the number of actual decisions in 2014 appears to have been up on the number in 2013. If under-manning prejudices this, the system may grind to a halt.

By the way, extending the calculations back to 2006 you get 21495 appeals filed, and 17082 settled - the difference of 4413 represents roughly two year's production.

Does this increase in appeal stock mean that the time taken for disposal of appeals has increased by 2 years since 2006? [What is the actual appeal stock now?]

Could the increase in appeal stock account for a more brutal experience in the appeal process?

Would a move to Vienna decrease productivity and increase stock still further?

You might think so, I could not possible comment.

Conspiracy theorist said...

In my view, the UPC is such a sub- sub- sub-optimal compromise that it will take years of operation (and "fixing" of some of the more problematic issues) to get the functioning of the system even remotely within the range of what will be acceptable to the majority of (potential) users of that system.

With this in mind, one wonders why there appears to be (on the face of it) a political will to load the dice in favour of the UPC system, by means including kneecapping one of its key competitors. Are patent applicants and holders really in favour of this? I very much doubt it.

Which all points to a much more troubling question. That is, what democratic (or user-driven) mandate do BB and the AC have for damaging the functioning of DG3?

Also, what is so important about ensuring the immediate success of the UPC? Is it to save face for the politicians? If so, then they need to grow up and realise that Rome was not built in a day.

If there is slow uptake in the early years, and the court runs at a loss, it is hard to imagine the whole project being abandoned - so why not allow things to run their natural course? If the UPC offers genuine value to users, they will come round to it in the end.

Anonymous said...

We are the Office said:

"Agreement on a Unified Patent Court":
"ARTICLE 14
President of the Court of First Instance
...
(2) The first President of the Court of First Instance shall be a national of the Contracting Member State hosting the seat of the central division."

ANY QUESTIONS?

Cynic said...

C theorist,
BB is 65, leaving EPO at 68. He needs a glorious international success to either make his legacy or to act as a springboard to greater (political) things. Moving the IP world to Paris will look good on his cv.

Anonymous said...

We are the Office indulges in selective quotation for satirical effect.

Article 14(1) of the Statute of the UPC reads:-

"1. The President of the Court of First Instance shall be elected by all judges of the Court of First Instance who are full-time judges, for a term of three years, from among their number. The President of the Court of First Instance may be re-elected twice."

A reason to prevent BOA members from putting their names forward for the Court?


Satyricus

Throttled and still alive said...

"what democratic (or user-driven) mandate do BB and the AC have for damaging the functioning of DG3?"
Don't take it bad honored colleagues of DG3,if their damage was limited to DG3 and the handful people working there it would be a lesser evil. We all know that throttling DG3 is just one line in their road map.

"Moving the IP world to Paris will look good on his cv." Don't forget his bank account.

Anonymous said...

“Le chat à deux têtes” says…

All EPO recruitment and internal staff moves seems to be rightfully halted until an external review of the new service regulations has been carried out, as requested by the AC!.. all potential external recruits are placed on a reserve list and internal staff remain in their old positions as established under the previous service regulations and for the sake of not jeopardizing their chances for successful appeal outcome. …. sounds like a frozen conflict!

Anonymous said...

Cheap and cute says…

Young outside team leaders recruited for senior management positions on a temporary contract are the flavour of the day (profile EB)!... and EPO senior staff are either side-lined or placed into team leader positions, because they are too expensive and maybe they know too….

epoleaks said...


BB made the following changes to the appeals system at the EPO:

He removed 2 out of 3 chairmen of the appeals committee because they issued the "wrong" opinions.

He disciplined the expert members of the appeals committee nominated by the staff representation. Then he appointed all 5 appeal committee members. That is at odds with the statute.

He added an additional hurdle in litigation against the EPO: the reviewed decision.

BB has, by statute, the last word in every employment related appeal. So far, BB decided against any employee filing a case.

This explains why, for any work related conflict at EPO, the ILO is the only resort.

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