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, 12 May 2016

Does the UPC spell disaster for the EPO Boards of Appeal?

Merpel has been thinking a little more about the announcement of recruitment of judges for the Unified Patent Court, and now foresees some unpleasant consequences.

According to Article 17(2) of the Unified Patent Court Agreement:

"Legally qualified judges, as well as technically qualified judges who are full-time judges of the Court, may not engage in any other occupation, whether gainful or not, unless an exception is granted by the Administrative Committee."
According to the selection process document:
"Candidates for part-time legally qualified judges have to request this exception if they wish to remain in private practice.  However, no exception will be granted to candidates who serve as members of the Board of Appeal of the European Patent Office (EPO) and who wish to remain members of the Board."
On the face of it, this only applies to legally qualified judges, but this is because only legally qualified judges need dispensation to have another occupation; technical judges can do so without dispensation, subject to the conflict rules.

In fact, Merpel understands that no EPO Board of Appeal members will be permitted to serve part time as UPC judges (ie while remaining employed at the EPO).  Article 149a(2) EPC states:
The Administrative Council shall be competent to decide that:
(a) the members of the Boards of Appeal or the Enlarged Board of Appeal may serve on a European patent court or a common entity and take part in proceedings before that court or entity in accordance with any such agreement;
(b) the European Patent Office shall provide a common entity with such support staff, premises and equipment as may be necessary for the performance of its duties, and the expenses incurred by that entity shall be borne fully or in part by the Organisation.
This clearly envisaged (while not finally deciding the matter) that Board of Appeal members could serve in a court such as the UPC, and so presumably that the drafters of the EPC 2000 thought that this would be a good idea.

However, the Administrative Council has taken no decision to allow members of the Boards of Appeal to serve as UPC judges, and Merpel understands that there is no plan to do so.  What she is not sure about is where the pressure not to allow BoA members to also serve on the UPC has come from.  She has heard that the EPO President is against the idea, as he does not wish to relinquish any EPO employees. Presumably, the Administrative Council is not in favour, otherwise they could take such a decision irrespective of the wishes of the President, but it seems that they have chosen not to.  But she also now wonders whether the Preparatory Committee is also not in favour.

This seems to be a great mistake.  The Boards of Appeal represent the largest concentration of expertise in adjudicating contentious patent disputes in Europe, with a proven track record of doing so in a transnational manner.  An early decision to potentially second a significant number of Board of Appeal members could have allowed this resource to be used for the benefit of the UPC, while allowing significant extra flexibility for the manpower of the UPC, whose caseload in the initial stages is unknown and unknowable.  The alternative that seems to be now being pursued of recruiting a set number of judges risks over- or under-staffing.

Perhaps the Administrative Council and the EPO President are concerned that the backlog of cases at the EPO Boards of Appeal (currently estimated at around 8000 cases) can only worsen if some Board members go off to be UPC judges part time.  This is an issue of concern, but it seems to Merpel that the solution is not to prohibit the Board members from being UPC judges part time, but rather to increase the manpower of the Boards to compensate.  The Boards of Appeal are large enough to accommodate some flexibility in staffing levels, much more easily than the fledgling UPC.

Merpel has heard from a judicial source that it is undesirable for a UPC judge to be an EPO employee, because an employee of the granting institution should not be involved in the litigation of a patent granted by that institution.  This is piffle (or perhaps she should say "nonsense on stilts").  The Patents Court has no difficulty being the forum for appeals from decisions of the UK IPO as well as the first instance litigation venue. There may justification for a rule that the same person cannot hear a case related to the same patent at the EPO and the UPC, but there is no justification for a blanket ban on the dual role of UPC judge and BoA member.

Merpel has now realised a further problem for the Boards of Appeal themselves.  As she reported earlier, they are currently significantly under strength.  If BoA members are not allowed to serve part time on the UPC, it must be very attractive to instead resign from the EPO and go to the UPC full time.  This is a time of potential significant upheaval for the Boards, with likely changes to location, career structure, independence, and work expectations.  The UPC must look like an attractive escape route.  But when there are already a large number of unfilled places, any significant exodus at this time could irretrievably lose expertise in some technical areas.  Such damage could take years to restore.  Moreover, it will result in precisely the outcome (increase in backlog of appeal cases) the avoidance of which  is presumed to lie behind not releasing Board members to serve part time at the UPC.

Merpel has no expectation of being heeded.  But there is (just) time to reverse the decision, if action is taken now, and to pursue the sensible course of restoring the EPO Boards of Appeal to full strength and allowing their members to act part time as UPC judges.


Old man of epo said...

Merpel may also wish to consider the recent mooted change to dg3 rules concerning the requirement of approval for employment after leaving the epo. Thus even retiring or resigning would not clearly free a BoA member, particularly if his/her pension were being held hostage? I think that was part of the proposed changes to ensure the Boards' independence.

Anonymous said...

Well... BoA members do NOT have any experience in patent litigation, do they ?

Claim interpretation, claim construction, doctrine of equivalency means nothing to them.

So they may be somewhat qualified for nullity actions in view of EP oppositions, but I doubt that they can be regarded as qualified for litigation...

Merpel said...

To Anon at 15:49

Do you really think so? Do you consider that it is possible to evaluate the novelty of claim without claim interpretation and claim construction? And even if they do not currently apply it on a daily basis, Merpel thinks it absurd to suggest that equivalence is not something that a Board of Appeal member cannot easily adapt their experience to decide.

The idea that nullity and infringement are different animals is a strange one to practitioners in many countries.

A more valid criticism, in Merpel's mind, is that BoA members will be unfamiliar with the procedural rules of the UPC, but then again so will everyone else.

Anonymous said...

Does Merpel have any thoughts about the (deliberate?) under-staffing of the Boards? I have witnessed the President state that there was no recruitment freeze, but this is clearly not the case; it is easily demonstrated by e.g. review of job advertisements / purrr-rusal of the business distribution scheme, that until recently there was a significant paws, er, pause. But what - other than petulance or "pay-back" for perceived wrongs - is the end game here?

- Charley

Anonymous said...

Perhaps the UPC will preserve us from the occasional nuttiness of the Boards of Appeal, whose decisions sometimes give the impression that they are made just to check that we're awake and paying attention.

Anonymous said...

"The Boards of Appeal represent the largest concentration of expertise in adjudicating contentious patent disputes in Europe". Really? Since when? Yes, they adjudicate on validity. But that is not the same (despite your wish that it were) as adjudicating on infringement matters.

And how many times have European Patent Attorneys tried to argue points of construction and interpretation before BoA members only to be told subtle matters like these are part of "enforcement" proceedings and, hence, not taken into account by the EPO? The BoA members have made good careers by avoiding these matters - particularly evidence in forms other than patent documents.

Perhaps Patent Attorneys might be better placed than EPO Examiners to take up Technical Judge positions in the UPC - at least they will be used to advising on enforcement as well as validity?

Anonymous said...

To Merpel:

According to my personal experience BoA members simply do not bother about anything, which happens after grant/opposition. Infringement discussions or equivalency are completely new matters to them (not in the sense of novelty :-)).

Being a DE practitioner I am of course maybe biased/bifurcated in my thinking, but in my view the BoA will have to learn quite a bit of different thinking when being confronted with infringement issues.

This may of course be different for a UK judge, who is used to thinking about both issues in parallel...

Best regards from Munich


gorgo said...

Somebody who thinks that the boards of appeal do not deal with claim interpretation and equivalence cannot have spent much time before the boards or in their decisions.

Infringement is another matter, but as the applicable rules very from country to country, every judge at the UPC will have to learn a lot in this domain.

The attorney arrogance displayed in some of the above comments is just frightening. If like me you have to deal with EP attorneys every day, you wonder what gives them the right to look down on others. Really. Speck and plank, remember?

MaxDrei said...

This looks to me like a deliberate and cold-blooded re-boot of the patents system in Europe. Ever since 1978, the patent litigators have been grinding their teeth in frustration, that patent attorneys and a Patent Office have been in the driving seat, when it comes to matters of patent validity in Europe. Who do they think they are, the judges and litigators cry.

One has to admire the lobbying skills of the litigators, to persuade the politicians and the judges and industry, that this aberration in Europe must cease, and that the age-old order must be restored. The conduct of pan-European cases on validity must be wrested away from mere patent attorneys, and brought home to the wise visionaries within the international law firms, serving their CEO clients. Never mind that the White Book of the case law of the Boards of Appeal of the EPO is far and away the most coherent and intellectually rigorous body of caselaw on the validity of patents that the world has ever seen. The only thing that has ever enabled strong FTO opinions to be given to industry is that White Book. Compare the mess of patent law that any national Supreme Court makes, when it ignores the teachings of the White Book.

As ever, you only know what you've got when it's gone.

Anonymous said...

MaxDrei makes an excellent point regarding "wise visionaries". Hear hear.


abc said...

"Infringement is another matter, but as the applicable rules very from country to country, every judge at the UPC will have to learn a lot in this domain."

Exactly. The beauty (ahum) of the UPC is that the judges will have to apply those very "same" applicable rules when deciding on equivalence and on infringement in general.

Anonymous said...


What kind o' old fashioned nonsense!

Anonymous said...

@ Old man of epo said...
surely to arouse vocations in DG3, in a recent email to his "managers", the amazing singing principal director DG1 (who became famous at EPO thanks to his very personal interpretation of "commandante che guevara" on Youtube some years ago) the clown reports about the new plan for a new DG 3 career:

one will stay 5 years in one grade (no bonus, no steps to secure independance HAHAHAHA), then another 5 years in the next grade.

Anonymous said...

If you see the mess that drafting patent agents often make of claims which are then granted, often without any A84 objection, it is unavoidable that the BoA deal with claim interpretation and construction. Especially in chemistry, exactly that is the BoA's daily job. How many times are A83 objections made and elaborately discussed before the BoA while in fact they are A84 objections? How many decisions do not start their reasons with the interpretation of the claims? Someone who seriously thinks that the BoA have never dealt with construction and interpretation of claims, has no experience with the BoA and has not taken the trouble to read the decisions. Just take the white book and look up A84.

The question of nullity is not different from that a normal opposition situation. What is different is the question of infringement, where the evaluation of proof will play a big role. However, the judgement of the validity of proof is also not or not much different form that used in cases of alleged public prior use. So I, as a former patent agent, think that the BoA members are absolutely the best to start with UPC and to lay a good coherent basis for what is new to all of us. Apart from their experience with working in different languages.


MaxDrei said...

Given the excellence of the White Book of DG3 case law, patent disputes in Europe these days usually come down to an argument over the facts. Is the teaching in the patent sufficient to perform the claimed invention? Is there in D1 a disclosure good enough to enable something within the claim? Was there a novelty-destroying prior use or not? How actually does the accused embodiment perform? Once the facts are established, the law is almost invariably straightforward to apply, both on infringement and on validity.

But readers, where (if anywhere) is fact-finding done better than at the EPO? In the courts in London, I would of course say, but at what cost?

What would be nice is top quality objective and dispassionate English common law fact-finding applied to the established DG3 law on claim construction and the substantive law of the validity of patents. Fat chance of that though, eh? Nowhere near enough work for mainland patent litigators, is there?

Fragender said...

Well, I could think of further reasons for the UPC not takin on BoA-members.

1) Would a board member risk incurring the wrath of His President, in cases where he/she would have to rule in a way not favourable to the EPO?

2) The risk of the impression of a bias is indeed high.

3) Maybe not everyone agrees with MaxDrei in the quality of the BoA rulings and his dismissal of the national courts. As a DPMA-examiner I find the BGH decisions pretty coherent. In the cases I had to look at EPO-decisions (in parallel examinations or opposition proceedings) I found them often questionable and the reasons for the decisions often insufficiently disclosed (in German proceedings the courts would talk of "Begründungsmangel").

Just my 2 cents...


MaxDrei said...

Good point from Fragender. But how many English decisions does he read, I wonder. He would then be even more keen to disparage individual decisions of individual EPO Boards of Appeal. Naturally, as an Englishman, I find that the reasoning in the decisions of my own domestic courts appeals to me much more than what I find in EPO decisions. I guess it's the same for him, as a German.

My point though is the integrity of the "body" of established case law of the EPO, in the White Book and a distillation of more than a thousand decisions each year for more than thirty years now.

I regret that the BGH (unlike the UK Supreme Court) persists in maintaining its own line, choosing not to defer to the established case law of the EPO Boards of Appeal. Just as the USA thinks it only matter of time before the world swings in to line with American case law, so the legal community in Germany supposes it only a matter of time before all Europe adopts the BGH line.

But now, with the coming of the UPC though, it is indeed perhaps only a matter of time. If so, what a pity.

Anonymous said...

@ Fragender:

1) and 2): I think that it is rather the other way round. BoA members are excluded exactly because they ruled in a way that dipleased Battistelli in the past. The exclusion must be seen together with the understaffing of the boards, the attempts to move them out of Munich and to reform them in a way to render them more loyal.
Other EPO employees that have been more loyal and are surely more biased (maybe Mr. Lutz and friends) do not seem to be excluded from the UPC because the exclusion mentions only board members.

3) I think that it depends to what you are looking for. I agree with maxdrei and I find that english decision are better reasoned on the fact finding. BGH decisions seem, when you manage to extrapolate the reasoning from the amtsdeutsch, less reasoned than the average BoA decision. Decisions of my colleagues in the examinaning and opposition division are of course different and not to be compared with BoA decision: unfortunately I must agree with you that some of them are not very well reasoned.
But all this is, of course, a personal opinion.

EPO- examiner

MaxDrei said...

Oh, thanks for that comment, EPO examiner. In my enthusiasm for the point that the UPC will go all German I had overlooked the role of Battistelli in the build-up to the launch of the UPC, doing his best to ensure that the UPC is dominated by France. Not Germany, and certainly NOT by any judges who learned their profession at the EPO.

When Germany, France and the UK are united, that no judge coming from the EPO will have any chance of judging at the UPC, what chance do DG3 members have, in the Brave New World of patent law made by the EU?

Anonymous said...

From what I hear it is not the UPC that looms in the future of the BoA. Rather it is the new rules which were refused by the AC in december that spell disaster. Those rules will be presented to the AC in June without any serious change, so I heard, and render the BoA very dependent on the opinion of the president, so then indeed there is a danger that BoA members dare not decide independently anymore. Again, those new rules have been put together without any consultation of the BoA and dead against the opinions of the users of the system, who heavily criticised the fact that independence was mixed up with efficiency, which was in general found satisfactory. Also it will be impossible for former BoA members to work in the field of patents without the consent of the AC. By the time such a consent might be given, if at all, time has gone by and the request has become moot. In fact that amounts to a Berufsverbot for members of the BoA. So no returning to their old job e.g. as a patent agent, no consultancy, etc., preventing any possibility to create some extra income. Again an example of the utter undemocratic way the EPO is governed nowadays, going against all legislation found normal in the member states, which, should these rules be accepted this time, I cannot but regard as a vindictive collective punishment of the BoA members. What a world.....


puppet on a string said...

Do not worry. No DG3 members will dare to disobey.
From December 2015 onwards they can be suspended on half pay for a minimum of two years with the possibility of infinite extension.
All that is needed is for the President to make such a proposal to the AC.
Bye bye independence.

Fragender said...

@ MaxDrei:
I didn't mean to say the BGH-line is necessarily better. In some respects I think the BoA-line is better, in others the BGH line. The EPO has dumbed down the person skilled in the art way too much for my liking (I have over 12 years of experience as a design engineer...).
I simply wanted to say they are not necessarily making a mess, simply by not following the BoA-decisions.
And yes, I do read fewer British decisions than German ones - but I try to read at least the interesting ones. They seem to be well written, usually.
It will be interesting to see, which line the UPC will develop.

MaxDrei said...

Thanks for that comment Fragender. It winds me up. Forgive me if what I write in reply offends you.

This tosh about the skilled person which the German courts have in mind being more resourceful than the one found elsewhere in Europe is for me an abomination, because it reveals the judges as unable or unwilling to distinguish between what is old and what is obvious. Start with the BGH's Urgestein Justice Rogge and his steadfast position that the moment in time for construing the disclosure content of D1 is not on its date of publication but on the day before the date of the claim. What absolute nonsense. This is just the court showing its reluctance to let the patent owner "get away with it" and beat off a novelty attack on the claim in suit.

In the EPC, Article 56 is enough to deny patents to everything that was obvious at the date of the claim. The function of Art 54 is quite another, namely, to prevent the "same" subject matter being patented twice in quick succession.

But what is the "same" invention. In an era where tiny increments and very specific selections are of key usefulness and technological importance, Art 54 (and 87 and 123(2) EPC must be of scalpel-like precision. There is no room for a woolly Heinz Bardehle concept of "enhanced novelty" that lies somewhere between strict novelty and open-ended obviousness. That way lies legal uncertainty, not greater legal certainty.

Remember Humpty Dumpty? “When I use a word,” Humpty Dumpty said in rather a scornful tone, “it means just what I choose it to mean — neither more nor less.”

Perhaps we can agree, it does not help the level of legal certainty in patent litigation when judges think they are Humpty Dumpty and can please themselves.

But, you cry, letting folks have a patent on every tiny increment results in thickets of patents, stagnation and stasis. Not so, I assert. The correct antidotes include 1) real world assessment of what in truth the skilled person (looking to learn) can "derive" (directly and unambiguously) from any given document 2) strict confinement of the scope of the claim to the contribution to the art, no more than that, and 3) strict application of Art 123 EPC.

That said, of course there are too many trivial patents. But that's because for a long time the EPO and the USPTO were too lax, and the wrongly issued patents from those days are these days going through the courts, colouring the attitudes of the judges. Judges please take note: I think the Patent Offices are more watchful now.

Fragender said...

No offence taken, MaxDrei!
Our views are probably more similar than apparent at first glance. I mostly agree with your statements. And I am also happy to grant a patent on tiny improvements - if they are not obvious to the person skilled in the art. After all, tiny improvements usually can be circumvented easily and do not hurt the competition.
My misgivings about the EPO-approach are, that with their strict formalisms about closest prior art and the would-could test (which may be OK in the majority of cases, but not in all cases) they dumb down this guy/gal. The person skilled in the art should be the average engineer (I am doing electronics) with more than a few years of experience. Not an Einstein, but most certainly not the guy who is laid of in the next downturn, either.
So, for me the BGH-line on insufficient disclosure (in which the skilled person needs just the tiniest of hints on what to do, to make the disclosure sufficient) is over the top, as is the EPA-line on obviousness, where the skilled person will need massive hints to even look at different documents.
I am not so sure, that the patent offices really are more strict now. The USPTO is still granting at an astonishing ratio. When talking to patent attorneys, they all complain about the EPO rejecting applications for formal reasons, not for material ones. They also complain about the German examiners skilled person having too much knowledge and being too smart. I assume these complaints to be at least partially founded in fact...

MaxDrei said...

Frag, your words drive me on. Incidentally, we seem to have left novelty behind now, and have moved on, to Art 56 and 83 EPC. But that's OK.

Not sure where you get the idea from, that the hint or suggestion in the state of the art has to be "massive" before an EPO TBA will "even look at" it. Not my experience. One thing i like about the EPO Approach to Art 56 EPC is that it minimises the debate about who exactly the PHOSITA is. Either there is a hint or suggestion, or there ain't. The poor old EPO-PSA gets a good kicking every time some attorney loses a case. Yet what it usually comes down to is a lack of imagination on the part of that attorney, what evidence to put forward, and how best to argue the case.

For the reasons you give, and on which we agree, Patent Offices around the world should continue to grant patents for new and useful subject matter which was not obvious, however trivial the invention seems to be. But it's in the nature of an ex parte examination to determine whether the inventor gets something or nothing, that a lot of dodgy stuff will continue to get through to issue. Inevitably. Governments and courts should recognise that reality, and deal with it robustly.

One must remember at all times that, for the sake of objectivity, the notional addressee (the PHOSITA) is a legal fiction, with properties not found in any real human. This objective litmus paper knows all the art, in all languages, but is devoid of any scintilla of inventive mental activity. No real person is like this. Do you like objectivity, or would you rather cases be decided subjectively?

I note the demise of the notion in the German courts that the level of inventive height sufficient for a Gebrauchsmuster is less than for a 20 year patent. There is no room for different heights of inventive step or activity, when obviousness is done properly objectively as at the EPO. A good way to do Art 56 EPC is when the answer is a straight yes or no. I do not know any other jurisdiction in the world, apart from the EPO, where obviousness is a binary question and where it will not affect the result whether the PHOSITA does or does not have a PhD.

Anonymous said...

Whilst it might certainly have helped out in the early stages of the UPC to take on board members of the Boards of Appeal, it seems the reluctance of certain national judges to consider members of the Boards of Appeal to be judges like themselves which eventually lead to them not being taken into consideration for posts at the UPC.
If I am not wrong Sir Jacob said to the face of members of the Boards of Appeal that they were not judges, and took as pretext Art 111.....

To my knowledge, none of the members of the Boards of Appeal having applied to the UPC even got an acknowledgement of their candidature.
But DG1 examiners have been invited to follow training as technical judge for the UPC....

I see however another problem should members of the Boards of Appeal serve at the UPC. There is no mechanism foreseen should the case law of the UPC diverge from that of the Boards of Appeal and Enlarged Board of Appeal when validity is at stake.
It would be a very uncomfortable position for a member of the BA serving on a UPC panel to support a decision which is clearly at odds with a decision of a Boards of Appeal or the Enlarged Boards of Appeal. The possibility of a dissenting opinion is foreseen in the rules of the UPC, but such a position is never comfortable.
As the UP is a patent granted by examiners of the EPO, the latter are bound by the case law of the Boards of Appeal. What if the UPC decides in a totally opposite way?

What will happen at the UPC is the same as what happens nowadays with national decisions vs. DG3. They will carefully ignore each other.

On the other hand, when one sees the position taken by the BGH in case of added subject-matter (Wound healing device, X ZR 161/12) shudders go down one's back. This decision is in clear conflict with G 1/93 (inescapable trap), although the BGH claims it is not the case.
For the same token, undisclosed disclaimers in the meaning of G 1/03 are clearly a fiction. What if the UPC decides to get read of the fiction?

The (not so) secret hope of some national judges wanting to serve on the UPC is that UPC case law will rapidly render obsolete case law of the Boards of Appeal. I am not sure that this will ever materialise, and certainly not at the beginning.
When one looks at the few UPC mocks which have taken place here or there, proceedings before the UPC seem to carry a very heavy national ballast, and the role of the UPC court of appeal will be very important to fight those national tendencies.
To make things clear, I have never been, and will never be a member of the Boards of Appeal.

Anonymous said...

From Hellokitty
To Old man of epo

The "recent mooted change to dg3 rules concerning the requirement of approval for employment after leaving the epo" says quite a bit more than that. All recent EPO publications are like Patent claims: they appear innocuous at first sight, but the wording is chosen to be devastating.

First: these rules foresee compensation for some chosen ones, at the discretion of the President. That is a nice way to ensure your friends are still be paid after they leave the EPO.

Second: these rules ARE NOT LIMITED TO DG3. Sure, the title will make one think so, but the text foresees no limit. It is for everyone, clerks, examiners, board members, etc... The proposed rules are: you live the office, the President decides whether your new job is in conflict with your previous occupation, anywhere in the world and for two years. There is no example of a non-competing clause reaching that far anywhere else in the world.

Third: there is no link between compensation and limitation. For example, reading the text, a recently dismissed member of the staff representation is seeking work as a patent attorney. The President will be able to prohibit that for two years, without compensation.

Fourth: the document is not moot, it will be presented again in the June session.

This document, if accepted in the June session, will simply insure that nobody can live the Office, unless approved by the President. It will also insure that dismissed people (and there are plans to make dismissal for insufficient production a simple administrative procedure) have no way to work for 2 years.

Just read the text as you would read a Patent claim.

Proof of the pudding said...

Here's an interesting question: what would be the consequence if an EPO employee (let's assume for the moment a member of DG3) were to defy a "ban" imposed by the EPO president on taking up new employment?

Presumably, it would be impossible for the EPO to take legal action against their former employee. This is because such action would need to be launched before the national courts, which apply national laws and not EPO internal rules. (Plus, of course, the EPO might be reluctant to take action in the light of the very high likelihood that the EPO's rules would be found to be contrary to national laws.)

Would that mean that the only action that the EPO could take would be depriving their ex-employee of the benefit of a pension from the EPO? If so, that could be a risky strategy - as it could open the door to legal action against the EPO. In such a situation, what defence could the EPO mount against an accusation of "stealing" acquired rights from their ex-employee? If the answer is their internal rules, then we return to the question of whether they would really want to try to justify those rules before a national court...

An issue here could perhaps be the challenge of getting a national court to accept jurisdiction for the dispute. However, it is arguable that the EPO's immunity would not apply to disputes involving the proposed, new rules. This is because immunity of the Organisation applies only within "the scope of its official activities" (Art. 3(1) PPI). Further, such "official activities" are defined in Art. 3(4) PPI as "such as are strictly necessary for its administrative and technical operation, as set out in the Convention". It is hard to see how it could possibly be argued that the new rules could be argued to be "strictly necessary" when the EPO has functioned perfectly well for decades without them!

Anonymous said...

From Hellokitty
To Proof of the pudding

The Office would simply start disciplinary action and decide to cut the pension. And if you think you have a legal way out of that via the national courts, I suggest you inform the people recently dismissed about your findings.

Yes: I know about Art. 3(4) PPI. In practice, it is never applied. May I remind you that the Office was condemn by a Dutch court and that the Vice President said in front of Dutch TV that they will not follow the judgment? What more do you need?

Fritz said...

Suing a former employee by the EPO may not be so easy, but withholding the pension = income is an extremely severe punishment for any former employee, but especially so for pensioners who want to continue e.g. as patent agents. And it such a case it is the EPO that has to be sued by the former employee, which, as we all know, takes years. By the time the pensioner has won that case, he is dead.

Anonymous said...

From HelloKitty:

About the boards of appeal and the UPC: the UPC, as the EPO board of appeal and the German "Bundespatentgericht" foresees legal and TECHNICAL members. Finding legal members should not be too much of a problem (although the language requirements may prove to be a problem), but finding technical members will probably be. The technical members need to be:
-trained technically, basically they should have an engineering diploma
-fluent in the 3 official languages and
-trained legally (although not as much as a legal member).
Basically the idea is that the courts should have specialists able to understand in details what the Patent is about (especially important in difficult subject matter like chemistry, biotech, computers...).
In the EPO board of appeal and the Bundespatentgericht, the technical members were recruited from examiners.

The EPO board of appeal is the single largest collection of people filling the requirements of TECHNICAL members (especially when one considers language requirements).

Now Battistelli, being motivated by his personal vendetta against the board of appeal, has caused a major problem. In a well run office, the board of appeal would be sufficiently staffed, so that a fraction of their members could be sent to the UPC to train future staff and deal with the first cases. Battistelli closed that route twice: by making sure that they will be legally excluded to do so and by refusing to staff the EPO board of appeal for years. None of this is proper management: every manager knows that when a new branch is started, training new staff is a bottleneck. It is in all the management books.

Proof of the pudding said...

Hellokitty - you may well be right. However, the only pension that I am aware of having been "cut" (that of Ms. Hardon) was apparently restored. I doubt that Monsieur le President reversed his decision purely out of the kindness of his heart... which might mean that there were other (e.g. legal) reasons that left him with no choice but to hand over what, in any event, were acquired rights.

The question of whether the EPO respects the judgement of a national court is, ultimately, a matter for the AC. That is, they have the power to order the president to respect any judgement - and to eject him if he refuses to do so and/or to lift his immunity. I guess that whether the AC decides to take any action depends upon how much political pressure they feel under from their bosses back home. Not the most ideal set-up for ensuring that fundamental rights are respected at the EPO, but not entirely hopeless.

Here is another interesting point: the proposed, new conditions of employment (including what those in private practice might see as an equivalent of a restrictive covenant for DG3 members... and perhaps others) were not those that EPO employees agreed to when signing up. Imposing restrictions on future employment is a very serious matter, and so requires the explicit (and informed) consent of any employee to be bound by such restrictions. With this in mind, how could the AC even contemplate rubber-stamping the unilateral imposition of such restrictions by way of "new rules" that have not received the consent of the employees that they affect?

That alone would appear to be a very good reason for the AC to simply dismiss the proposed rules out of hand.

Fritz said...

First, very good reasons have not been the guidance followed by the AC for a long time, even less so under the Batistelli administration.
Second, Batistelli has recently denied the AC the power to tell him what to do.
So what is the sum total of this picture?
Disaster for the EPO.

Anonymous said...

From HelloKitty
To Proof of the pudding

Imposing restrictions on future employment does not require the consent of employees to be bound by such restrictions. That is what people do not understand when they sign up: they think the EPO is bound by its regulations. But the regulations can be changed at will and they already were: the staff were imposed new career regulations, new sickness regulations, and their invalidity insurance (paid for years) was simply canceled. It is not the conditions of employment they agreed to any more and indeed less and less people are willing to sign (the EPO did not find suitable candidates for more than half the post they wanted to fill). But the people who have signed have a single choice: accept the new regulations or find another work. It is a one-way contract: the staff have to respect it, the EPO can change the rules at will.

Also: Battistelli was told by the Council to reverse the judgement concerning 3 people, he paid lip service by reinstating the 20% pension cut. No legal reasons were at play. In the mean time, he his busy courting smaller countries to make sure the delegates who voted against him will be replaced. The June council will be massively in his favor, at least from the small countries and countries like Germany, NL, UK and France will realize that they only have one vote. Battistelli will then control the administrative council.

puppet on a string said...

"With this in mind, how could the AC even contemplate rubber-stamping the unilateral imposition of such restrictions by way of "new rules" that have not received the consent of the employees that they affect?"

Very easy. The same way that they rubber-stamped CA/D 18/15 in December.
Was there any consultation on that ?
No there wasn't but, hey, that didn't stop the AC rubber-stamping it.
Does that answer your question?

FIFA here we come ...

Proof of the pudding said...


Fair point.

Still, imposing restrictions upon someone who is no longer an employee of the EPO is a significant step further than everything that has gone before - even the retroactive extension of the period by which an employee may be suspended before a final decision is taken on their case (or, if we are speaking bluntly, extension of the period by which an employee might be "detained without trial"!).

As I understand it, the deal that every EPO employee signed up to was that the EPO would have no claim to infringe or limit the liberty of the employee after they left the employ of the EPO. It would therefore simply be impossible for any court of an EU Member State to validate a "condition of employment" that was unilaterally imposed (i.e. without consent of the employee, or even any form of additional compensation) and that purported to limit the liberty of an individual beyond the term of the contract of employment.

I know that we are operating in Eponia here, and not the EU. Nevertheless, the fact that the above is such a blatantly unarguable point means that, even if the AC erred in rubber-stamping previous proposals, they would really have no excuse for making the same mistake on this occasion.

puppet on a string said...

"they would really have no excuse for making the same mistake on this occasion."

Very true. They would have no excuse.
But if they made the mistake, who would call them to account?
Remember, they enjoy "immunity" for their actions.
Some court or tribunal might at some far distant date find the measure to be unlawful.
But even that is my no mean certain.
Do you think they will loose any sleep over such trivia?
Remember Wille Minnoye's famous words on Netherlands television.

Anonymous said...

From HelloKitty
To Proof of the pudding

The idea that some restrictions were applicable to employees after they left the EPO has always been in the service regulations. It makes sense: the EPO is dealing with confidential matter (unpublished applications), the employees are bound to confidentiality even after they left.

All these have always existed and have always been a potential problem: confidentiality, lack of independent justice, internal sickness insurance, lack of control on spending, etc... But it has never been an acute problem because it was never systematically abused (although some limited abuse was already there). The EPO has functioned quite well for the last 30+ years.

The problem today is that someone is systematically (ab)using the regulations and even strengthening them. That is why the EPO is suddenly in the Press.

Quite frankly, I don't see any way out. Battistelli will manage to get the council at his side, because he is literally buying the votes of the small countries. Countries with the most economic weight: Germany, France, UK, Italy, Netherlands, Swiss, etc... want him out but will be outvoted by a coalition formed by, maybe, Greece, Cyprus, Macedonia, Romania...

Proof of the pudding said...


Confidentiality restrictions are one thing, restrictions upon the freedom to choose one's own employment is a completely different matter.

An employer might reasonably take action to prevent misuse of confidential information gained by an ex-employee. However, for an employer to impose a "ban" on an ex-employee taking up new employment with certain organisations represents an infringement of the civil liberties of that ex-employee. Such infringements are typically either not permitted or, if precisely defined in a contract of employment in a manner that protects only the legitimate interests of the employer (and no more), are permitted for only a very limited duration - certainly no more than 1 year. However, even in those exceptional circumstances, what is permitted is rarely a total "ban" on taking up new employment, but more frequently a limitation (for a short duration) on the permitted activities (e.g. a ban on contacting ex-clients) of the ex-employee in their new role.

If any employer wants their employee to not take up a new role for a set period after handing in their resignation, then they have to pay them to stay at home (i.e. put them on so-called "garden leave").

What are the precise proposals from BB? I recall a period of 2 years being mentioned, but that seems way over the top (especially if those 2 years are not paid garden leave). And is there any precise definition of what "bans" can be imposed and for what reasons? Also, is there any scope for discretion in how or whether any "bans" are imposed? If so, are there any checks and balances that prevent such discretion being misused?

Finally, I note that there have been several references to BB "buying" votes at the AC from some of the "smaller" countries. Such a tactic would certainly be a "political" response to the fix that BB found himself in at the last AC meeting. However, is there any real evidence of such Machiavellian tactics being employed? If so, could that count as grounds for immediate dismissal?

Et sinon je reprendrais bien des croquettes ... said...

@ Proof of the pudding

listen mate, all your erudite arguments here to explain us how all these rules that are enacted by BB at the European Patent Office could never be in the ... - shall I say, civil society: why don't you put them in a letter and send it to the Representative of your country at the Administrative Council?

Because either he/she is as dumb as you get or he/she does not give a shit about what happens at the European Patent Office - as long as the money keeps flowing.


One of those... said...

@Proof of the pudding:

Yes, it could be a reason to fire Mister BB....
But! His immunit can only be lifted by the AC.
Any disciplinary measures can only be started and decided by the AC.
Any decission to fire, replace, send on "garden leave" with pay, ... of the president of the EPO can only be taken by the AC.

The same people who either vote yes because they want the money for their country/office, or because "we are only one vote, despite being one of the big three".

There was a time, not long ago, where it was diplomatic standard to not vote against the "big countries", especially not against the host countries.
BB played that card by pushing the smaller ones to show a "we do not like you and vote out of spite against you" vote.

What does the Dutch Hoge Raad? The current situation shows they cannot hope for the problem to solve itself, witho the SUEPo having been destroyed. They are facilitating the "Justice denied" by taking their time....
The Dutch givernment is getting in a really difficult situation here by not demanding more respect from the other member states, who outvote the Netherlands and telling the Netherlands to deny citizens their Dutch rights when going to work.

Name them and shame them ! said...

Don't forget the hypocritical little weasel in Berlin who preaches to the world via Twitter that there should be no "legal vacuum" at the FIFA.

But when it comes to the EPO where he derives an income of millions per annum he is completely silent.

Proof of the pudding said...

@Et sinon...

Well, show me the detailed proposal and concrete proof that it will be put before the AC and I will see what I can do about my complaining to my country's representative to the AC.

Anonymous said...

From Concerned examiner

Maybe we should not forget that Battistelli is French. As you have probably heard in the news, France is on general strike because of new work laws. If I have understood correctly, the new law will make it easier to fire employees. A few months ago, a minister also said that he saw no reasons why civil servants should have a permanent contract. And just like Battistelli salary is a scandal, the salaries of managers is presently a scandal in the French press.

Maybe this is also the future of the Office: examiners on 2 years contracts, automatically fired at the end of the period and prevented to work afterwards. After a year of unemployment without benefits, they would be glad to sign for another two years fixed period, at a reduced salary. Seems like a win-win situation for Battistelli.

In the context of this hypothesis, I see no reason why European patent attorneys would enjoy a lifetime license, BTW. Maybe they will also need to reapply as a representative every two years as well.

On yer bike ! said...

"As you have probably heard in the news, France is on general strike because of new work laws."

That would never have happened if Hollande had followed the example of "President" Battistelli and enacted new strike laws.

On yer bike !
(But make sure to check the brakes first ...)

Sauce for the goose said...

"In the context of this hypothesis, I see no reason why European patent attorneys would enjoy a lifetime license, BTW."

Well said old chap.
And a twenty year patent monopoly sounds so 1970s.
Let's have the validity of all granted patents subject to review on an annual basis.

Anonymous said...

From Concerned examiner

The validity of patents is already subject to a yearly tax, but what I meant is that patent attorneys are just as dependent from the Office as examiners are. We could imagine that in a year or so they would also be asked to prove their "loyalty", could be asked to renew their exams or whatever. If Battistelli decides to cancel one's accreditation, there is no real recourse, is there?

Anonymous said...

@ Proof of the pudding.

The new regulation would read as follows:

"A permanent employee or former permanent employee intending to engage in an occupational activity, whether gainful or not, within two years of leaving the service, shall inform the appointing authority thereof.
If that activity is related to the work he carried out during the last three years of his service and could lead to a conflict with the legitimate interests of the Office, the appointing authority may, having regard to the interests of the permanent employee or former permanent employee and the service, either forbid him from undertaking that activity or give its approval subject to any conditions it thinks fit."

Proof of the pudding said...


Thanks for the heads-up. Is there any publicly available (official) document showing the proposed wording?

Also, are there any detailed definitions of / limits placed upon terms such as "related to the work he carried out", "legitimate interests of the Office" and "the interests of the permanent employee or former employee"? If not, then I agree that there is considerable cause for concern.

At least at first glance, it is very easy to see how an unscrupulous individual who was granted powers as specified in the proposed regulation could abuse those powers. For example, unless strict limits were placed upon the use of those powers, and an impartial overseer were appointed to ensure that they were applied fairly and consistently, then there would appear to be ample scope for the new powers to be used in a threatening and/or vindictive manner.

epoleaks said...



62. In order to foster the public’s trust in the integrity of the services provided by the EPO, it is proposed to introduce a system for monitoring and preventing
potential conflicts of interest after termination of service with regard to all
employees of the Office, including the members, Chairmen and the President
of the BOA.

63. The BOA themselves addressed this issue in their case law. In decision G
2/94, the EBOA held that it would be desirable in the interest of legal certainty
for the Administrative Council to specify an exact period of time following
termination of a person's appointment as a member of the BOA during which
such a person may not appear in or conduct oral proceedings before the EPO.

64. As the regulation of potential conflicts of interest in post-service activities is not limited to the BOA, which is the scope of the current document, it is submitted in a separate document (CA/29/16), although its adoption is part of the current package of measures.

Anonymous said...

Proof of...

Strict limits? Anon quoted para 2 of the new article. Para 8 of it states:
"The appointing authority may lay down further terms and conditions for the application of this Article to the respective employees; these shall cover in particular the form and content of the information referred to in paragraph 2"

Limited enough? Perhaps not if you consider the non-exclusive nature of 'in particular'.

Proof of the pudding said...

epoleaks and anon

I have no reason to doubt the accuracy of what you are reporting, but is there anywhere that I can get my hands upon my own copy of CA/29/16 (and the document from which epoleaks quotes)?

Having considered the detailed proposals, I have to say that I struggle to see how a conflict of interest could arise simply by an ex-EPO employee taking up a new position in the world of patents. Sure, it might make sense to have a "cooling off" period, during which an ex-employee's interactions with the EPO are strictly limited. However, given the ruling in G2/94 (placing limits upon the ability of ex-Board members to make oral submissions), I would say that there is currently very little in the way of even a perceived problem in this area.

Even if the EPO management was minded to deal with this perceived issue, then the best way of doing that would surely be to place a temporary (i.e. time-limited) ban upon certain categories of ex-employees making submissions to the EPO. There would appear to be no justification whatsoever for any kind of ban on taking up new employment. Such bans are simply unnecessary (and would, in any event, be totally disproportionate in the circumstances).

With this in mind, I fear that adoption of the new proposals would expose the Boards of Appeal to yet more allegations of perceived bias - on the grounds that not only the conditions (or renewal) of their current employment but also their future employment and/or retirement conditions could depend upon keeping the President happy.

Patience said...

So far the document has been supplied to the internal GCC for consultation and is visible to all staff - it isn't a final document but has a CA number in preparation for submission (in amended or unamended format) to the next AC meeting. I think it also goes before the Budget and Finance Comm. There's a formal procedure so it isn't public yet. In practice the GCC (10 mgt, 9 staff) will not change a comma. Thus you have to wait a couple of weeks yet.

Listening to the construction machines with a headache.... said...

The Register article about an AMBA letter to the AC regarding the proposed reforms.

If that is true, then our President follows his targets to the minimum letter.
He has been told to consult. check. Nobody told him to listen to the arguments and come to an agreement regarding a proposal during these consultations.

I wonder what DG3 would say if I came to Oral Proceedings in Examination or Opposition and have the decision already on the table. Efficient procedure, yes. But....

I would be doing what our President is doing. yet I could be charged with professional incompetence and be fired over this.

Anonymous said...

From: HelloKitty

The problem with the proposal, as usual, is that it lacks checks and balances. If someone leaves the Office or is fired and seeks another occupation, even without pay (say being the head of the local Union...), the President can say no. He just has to say it is against the interest of the Office. The person can only complain to the ILO-AT tribunal In Geneva who, in practice, only checks whether formal conditions are met. ILO-AT will then obviously agree with the decision, as all recent jurisprudence shows.

Furthermore, in the new system, the personal member getting a new job must first inform the President and wait two months before accepting a new job. In the present system, there is no such obligation.

There is a new paper about the Paris criteria explaining that the Office will hire massively in the next 3 years, creating redundant examiner posts once the backlog is processed. I understand that hundreds of "redundant" examiners will be fired then. All this is very worrying.

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