Suspicion of Partiality in Enlarged Board of Appeal found justified

This moggy noticed a little while ago an extraordinary interlocutory decision from the Enlarged Board of Appeal of the European Patent Office in case R 19/12 (an application for review of a decision of a Board of Appeal).  It is unfortunately in German (and seemingly will stay in German only, since it is not marked for publication in the Official Journal of the EPO), and so he is immensely grateful that Katfriend Rudolf Teschemacher of Bardehle Pagenberg has prepared a jolly useful note over on the EPLaw Patent Blog, which he urges interested readers to consult.

The decision does not seem to have sparked the interest that it deserves, despite the fact that it has profound ramifications.  In fact, this Kat has seen only one other report, over in the news section of Dennemeyer's website.

Who said "judicial independence"?
In short, the Enlarged Board of Appeal, sitting in alternate composition without its chairman, found that an objection to the participation of the chairman on the basis of suspicion of partiality was justified, and ordered that he be replaced.  This would be astonishing enough, since successful accusations of partiality are extremely rare at the EPO.  What is more amazing is that the reason has nothing to do with the chairman personally, it is simply that he also held the role of Vice-President, DG3 (DG3 being the Directorate General responsible for Appeals).  According to Article 10 of the European Patent Convention, Vice-Presidents of the EPO shall assist the President. Accordingly, the Vice-Presidents, including the Appeal Board member in question, sit on the "Management Committee" of the President. The Enlarged Board of Appeal held that this dual function comprised his judicial independence and so gave rise to a justifiable suspicion of partiality.  As the EPLAw report notes:

The EBA adds that this conflict is not a consequence of the provisions of the Convention. The EPC stipulates neither that the VP DG3 is at the same time Chairman of the Enlarged Board of Appeal nor that VP DG3 is a member of the Management Committee or of other bodies with administrative functions. 

Because the reason relates to the structure of the management of the EPO, it presumably applies to this member in any appeal case, and to any other Board of Appeal member that might occupy a management position with administrative function in future.  This Kat supposes therefore that some readjustment of the management of DG3 will be required.
Suspicion of Partiality in Enlarged Board of Appeal found justified Suspicion of Partiality in Enlarged Board of Appeal found justified Reviewed by Darren Smyth on Thursday, May 15, 2014 Rating: 5


  1. Presumably, it applies to all previous instances where this has happened over the years? I am told it has been common practice. In which case, should all previous convictions (sorry, decisions) be declared void?

  2. And might I say that the return of some articles on patents has come not a moment too soon. There really has been too much published regarding trademarks and copyright recently, that the title IPKat has become confusing at best, possibly even fraudulent.

  3. T1938/09 makes interesting further reading.

  4. Hi Anon at 09:23 I cannot find T1938/09. Can you provide a link or a copy?

  5. I can't find T1938/09 anywhere?

  6. Darren,

    In fact, this Kat has seen only one other report

    There is also one here.

    Hi Anon at 09:23 I cannot find T1938/09. Can you provide a link or a copy?

    That would be EP98906678. It can't be found on the DG3 database for the reason that no decision was issued yet.

    I was told about this file a little while ago, but I haven't found yet any request or arguments made by the parties w.r.t. partiality. Do I need a stronger prescription for my spectacles, or has this aspect been (temporarily?) withdrawn from the public part of the record?

    The newest event in the file is dated 14.5 and announces the cancellation of the OP appointed for... 8.5.

    The reason for the very late adjournment isn't clear. It might have been caused by the request for postponement made by one of the parties for the reason of a schedule conflict.


  7. Fly, thanks for the explanation and the connection. Very helpful.

    Now you mention it, I recall a cryptic off-thread comment somewhere in the blogsphere recently, to the effect "Any news what's happening in EP 98 906 678". On opening the EPO file of that case, I noted it to be one that lies in the tender hands of Mr Oswald's Board (only saying).

  8. For case T1938/09 you need to consult the extensive submission filed with letter of 6 May.
    The reason that the OP was cancelled is due to the filing of a partiality objection.

  9. Anon at 10:55 those submissions appear not to be on the public file. There are no documents on file submitted to the EPO in May. Roufousse appears to be correct that they may have been removed from the public file, at least for the time being. Can anyone assist with this?

  10. Darren Smyth,
    Proceedings re-arranged for 01.10.2014. Objections made on 06.05 were too general (provisional opinion) but will be heard then (not public). Details are presumably confidential so arguments cannot be made public (yet).

  11. If said documents are not of public record, how does the poster know they exist? Does anyone have respect for confidentiality any more?

  12. In my eyes, R19/12 is of fundamental importance, and I perceive this decision to be a kind of a declaration of independence by the Boards made against the EPO President.

    I heard rumors of grumblings in DG3 regarding the current authoritarian streak which prevails, and this decision could help prevent the EPO from becoming a drunken vessel instead of an organisation committed to implementing a system of law.

    In my unlearned opinion, this decision will have not only an effect on the composition of the Boards, but also on all other instances of the Office, especially when read in the light of G 5/91:

    For these reasons, it is decided that:

    The questions referred to the EBoA in the present case are to be answered as follows: Although Article 24 EPC applies only to members of the BoA's and of the EBoA, the requirement of impartiality applies in principle also to employees of the departments of the first instance of the EPO taking part in decision-making activities affecting the rights of any party.

    Issues of hierarchical control of one member over the others also occur in first instance decisions. Certain directors, who are in formally charge of selecting the members of a division, are also in the habit of chairing the divisions which they selected. The practice seems to be more prevalent than what I initially believed.

    An example of this can be seen in T2346/10. The appeal made by the angry private applicant was rightly rejected by board as being inadmissible. It's however a pity, as it would have been undoubtedly very interesting to see what the board could have made of the correspondence exchanged with regard to his formal complaint. Some letters sent out by the Quality Department, and the Director-cum-Chairman on his own letterhead do raise legitimate questions.

    The EPO is now considering introducing a new layer of "management" where colleagues sitting in divisions would be put in charge of a "group". I don't know the full details, but from what I heard, former peers would be involved in drafting the performance reports of their immediate colleagues in addition to being part of divisions. I see this as the introduction of a managerial control of a type comparable to the one seen at the USPTO, and which is incompatible with the intention of the EPC drafters.

    Appellants would be well advised to find out more about the composition of the Examining or Opposition divisions...

  13. In the US there is a phrase: Too close for comfort.

    Also in the US, the (currently vacant) role of the leader of the USPTO is also not only the "chair" of the Article I court (the PTAB) - with the ability to sit on any case she wants, not only the boss of all judges on the PTAB, not only has the power to select particular judges for particular cases, but also is responsible for selecting and enforcing whatever policy the USPTO may choose to want to have.

    I would be curious as to what the ROW thinks of that arrangement, especially regarding 'impartiality.'

  14. "this decision will have not only an effect on the composition of the Boards, but also on all other instances of the Office, especially when read in the light of G 5/91"

    Are you really so sure? For the rule of law to operate, a legal framework or finding is necessary, but not sufficient.

    There must also be a desire by those vested with the responsibility of discharging the the law, actually to follow the law.

    In the wider political arena, there are daily examples of the law being twisted or ignored by our elected, or unelected servants to their convenience. A standout example is the contortions of ECB in relation to the bailouts.

    The decision is interesting, but is it anything more than a cri de coeur?

  15. Is there not partiality in every judicial system? Someone must decide upon an administrative function for the running of the judicial bodies, but how can they reasonably do so without input from that judiciary?

    Am I correct in thinking that the Lord Chancellor in the UK is a political appointment, yet their role is supposed to be independent. Their habit of changing legal advise to suit the aims of the prime minister being a coincidence.

  16. As suggested in several blogs R19/12 might be due to some political motivation following the claim filed by Spain in ECJ against the unitary system.

    This beign said I fully agree with the comment of anon of 15 May 09:16:00 BST

  17. (sigh)

    Anonymice [sic] at 13:03 and 6:16, your ignorance and patent-elitism is showing.

    IP does not stand for Is Patent only. It stands for intellectual property, which fully includes more than just patents - it fully includes copyright, trademark, trade dress, and trade secrets.

  18. Your non-patent elitism is showing. The comments referred to the lack of patent articles and was not a criticism of the presence of equal/fair quantities of non-patent articles.

    I must, however, admit that if I didn't see another copyright or trademark article ever again it would not be too soon. Unless, of course, it is next instalment in the budweiser v budweiser saga, which is clearly gripping: "we own the rights, no, we do, no they are ours you ruffian, take your hands off". Almost as unpredictable as an Eastenders plot.

  19. Anonymous @ 15:47,

    If your post was to defend the earlier posts, then you are in clear error, as those earlier posts equated IP coverage implicitly to be proper only when that coverage was strictly patent coverage.

    There is no such thing evident as non-patent elitism. A proper meaning of IP (including non-patent areas) is NOT elitism of any kind. It is merely treating the term correctly.

  20. Fair point by Anon at 12:02.

  21. Indeed but, of course, the party or parties concerned all know the facts or at least enough to know why their case was postponed at the last minute. And presumably one party must know all his/her facts. Or did the EPO cancel of its own motion? Unlikely so near the date. Or has R19/12 greater significance? Are other boards also delaying cases? Or is it all a coincidence?

  22. Anon @ Thursday, 15 May 2014 12:02:00 BST
    "If said documents are not of public record, how does the poster know they exist? Does anyone have respect for confidentiality any more?"

    As far as I am aware, appeal proceedings are public proceedings and any submission made by the parties should normally be available to the public unless there are valid reasons for withholding it.

    In the case in question, the submission of 6 May was filed by the appellant's representative, Maiwald Patentanwalts GmbH:

    The submission included a detailed critique of the legal framework of the EPO's appeal system written by a former senior German judge Siegfried Bross:

    If the document in question is not available via file inspection, could this be because the EPO has improperly suppressed it to avoid "Copy-Kat" partiality objections ?

  23. And they are not available via file inspection, so how does one obtain copies of such publicly available documents? Is there a secret passage within the EPO Register? Was said document ever made available online, and if so was it made available for long enough to be picked up by a google search bot?

    If a copy is e-mailed to Darren by anon@20:18 he may post them for all to see.

  24. @ Anon 20:18
    Rule 144(a) EPC, documents relating to the exclusion or objections to members of the BoA or EBoA are excluded from file inspection under A 128(4) EPC. Now, secrecy on the side of the EPO should be covered by the Service Regulations, secrecy on the side of the attorneys involved by Art. 2 Regulation on Discipline. Probably the applicant himself is free to divulge things.

  25. Hear, hear Anon @ 09:16 and 13:03. This PatKat agrees that it is nice to see a 'hard' IP article for a change.

    Enlighten us Anon @ 20:18, whence can we lay our paws on a copy of the 6 May submission?

  26. Anon 20:18 speaking here.

    Referring to Rule 144(a) EPC, I am not at liberty to disclose any further details.

    I suggest that anyone who is interested should contact Maiwald and enquire about the availability of the "Gutachten" written by former judge Siegfried Bross (which unfortunately for English-speaking monoglots is in German).

  27. The next oral proceedings of the EBA in an R case is set for June 12. It will be very interesting to see what the EBA decides in this occasion on the suspected partiality of VP3 and EBA´s chair. The facts are the same, but the composition will be different. Will they agree or disent with R 19/12? Will the party raise an ojection?
    I canot avoid remembering the Chinese curse: "I wish you to live in interesting times".

  28. Anonymous Anonymous said...

    The next oral proceedings of the EBA in an R case is set for June 12. It will be very interesting to see what the EBA decides in this occasion on the suspected partiality of VP3 and EBA´s chair.

    Case number, you cad !

  29. Anon 20:18 speaking again.

    The "Gutachten" by Siegfried Bross referred to above was also submitted in the following case last year (letter of 8 May 2013):

    R 08/13 - T 1676/06 - App. No. 96 102 992.3

    The letter of 8 May 2013 was the Petition for Review which should (hopefully) be accessible externally via file inspection for those who are interested.

  30. Anon 20:18 speaking again.

    I can confirm that the "Gutachten" by Siegfried Bross referred to above is publicly accessible via the the letter of 8 May 2013 (& annexes) submitted in the following case:
    R 08/13 - T 1676/06 - App. No. 96 102 992.3

    The "Gutachten" was apparently originally filed in connection with a "constitutional complaint" submitted to the the German Bundesverfassungsgericht.

  31. The German attorneys who mounted the successful partiality challenge in R 19/12 have posted the relevant documents (in German) on their website:

  32. "which unfortunately for English-speaking monoglots is in German"

    And what about the (e.g.) French or Spanish-speaking monoglots? Is it not unfortunate for them also? Or, is it only English-speaking monoglots who are monoglots?

  33. Anonymous 15/10/14 11:46 said "And what about the (e.g.) French or Spanish-speaking monoglots?"

    The question is inapt as no French or Spanish monoglot, by definition, will be reading this blog. Stop being so PC and get back to work.

  34. Never heard of Google Translate?


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