EPO Bound again - more precedental than ever: Precedent 2

The IPKat was very heartened by the responses to the post on Tuesday on the concepts of "precedent" and "binding nature" at the European Patent Office.  While all commenters did not agree, with him or with each other, taken together he thought the comments very constructive, particularly since he knows from previous posts and comments how emotive this subject can be.  There are a number of points on which he would like to follow up, now that he is safely back from the IPKat drinks (on which subject thank you to all who made the effort to turn up - it was wonderful to see so many of you - you know who you are).

1. Divided by language - is there a "gulf of understanding"?

IPKat explores the gulf
of understanding
What concerns the IPKat is this.  Presumably practitioners at the EPO know how the system works.  We use it on a daily basis.  The problem is that in this respect we don't have a common language to describe it.  Practitioners such as this Kat in the UK use terms such as "precedent", not necessarily intending it to carry the full weight of its common law heritage; others soemtimes attack the term, but not necessarily the underlying intended meaning.  It seems to this moggy that we agree on a lot (as of course we must because we are all in fact describing the same EPO systems) but are struggling to find a common vocabulary to express it. So what the IPKat is trying to do is get behind the jurisprudential theory to describe meaningfully and accurately how things work in practice.

MaxDrei asked "Does not this thread (thus far) reveal a gulf of misunderstanding, between the English patent law world and everybody else?" This Kat does not think so, but rather that there is lack of agreed language to express an understanding that this Kat remains convinced is largely shared even if not fully acknowledged.

2. Legal certainty

The previous post was primarily concerned with practice - how does a practitioner argue a case and how does a tribunal decide it.  It only briefly alluded to the other reason why the topic matters, which is legal certainty.  It also was primarily about attempting to describe the situation as it exists rather than opine as to how it should be.  Delving now into these two areas:

Consider two extreme situations (without necessarily suggesting that either of these corresponds to a real legal system that exists in any real jurisdiction).

In a system with a strong system of precedent and large body of caselaw, a practitioner will be able to advise a client of the likely outcome of a case with a strong degree of confidence, because the decision of a tribunal will be highly predictable.

In a system with no precedent, where the tribunal is free to decide the case before it on the basis of the statutory text alone, then, even if there is a substantial body of decided cases, there will be a higher degree of uncertainty as to how any particular case will be decided.

A rational client will only pursue a case with a reasonable chance of success.  The more predictable the system is, the less unnecessary litigation there will be; if the system is highly unpredictable, then there is a reasonable chance of success in more cases that are borderline.  Such cases be less borderline in a highly predictable system and so some would therefore not be pursued.

Therefore, an understanding of how prior decisions affect outcome of later decisions, and ideally a shared vocabulary to articulate this, is important to allow practitioners to properly advise their clients, and this should have the result of reducing unnecessary litigation.

This form of legal certainty is important for legislators too.  When there is a strong system of precedent, it is easier to discern how the law is working, and if necessary legislate to change it.  If decisions are more capricious, it is harder to see any underlying trends, and act to prevent undesirable ones.

3. An Answer to MaxDrei - the limitations of binding precedent

This is not what Merpel meant
by "bound by precedent"
In the third comment, MaxDrei asked whether concepts such as "technical" are better defined in a precedentally binding manner, or whether a degree of fuzziness at the margin of patent eligibility is preferable.  For complex matters, this Kat thinks that a degree of fuzziness is much preferred: bright line rules for complex matters tend not to work well in all situations.

Moreover, precedent can become very unhelpful if the precedent itself frequently shifts.  In the USA, the highest court seems to be changing the boundary of patent eligibility every few years, and this does not seem to help anyone.  It is not just about the system, it is also about how you use it.

4. A further view

The IPKat was delighted to receive this email comment from Mr. P.E. (Paul) Mazel of TRIP Advocaten en Notarissen in the Netherlands, which gives a view from the perspective of the motivation of a person deciding a case.  With permission, the comment is reproduced here:

Thanks for your interesting blog on precedents and EPO. Being not only a practitioner but a honorary judge in an appellate court (and sometimes arbitrator) as well I would like to comment on the use of the word mentioned above. Often a decision of – say the Dutch Supreme Court – is not persuasive at all (let alone binding) and ‘I’ would like to decide otherwise in a case at hand.  However, one should realize that ‘my’ decision might be appealed and thus the question arises: will the Supreme Court (or the ECJ) changes its mind if there is a (non-binding) precedent. One of the issues to be considered in that respect is how old the precedent is. If it is old enough – say 5+ years – and met some criticism it is easier to diverge than when it is young and met universal acclaim. Is there a cue, for example from an opinion of an Advocate-General, that the Supreme Court might change its course?
You also consider the capacities of the parties: can they “easily” afford the costs and time involved with an action before the highest court? How important – financially, principally - is the matter raised? Were the proceedings initiated by both parties to get a landmark decision or is it just an ordinary case which happened to be blessed with some more interesting aspects?
But finally it is your gut feeling which alone is imperative for your decision: if you feel a precedent leads to a unjust decision, do not follow it. It has been said of the Dutch Supreme Court that it shoots first and then draws the target. This might apply to many more instances – including the BoA of the EPO. But perhaps not to the Courts of England and Wales. 

This comment, as well as some of the comments on the original post, illustrate how a judge is motivated to decide a particular case in a non-precedental system.  Returning to expressing an opinion rather than being simply descriptive, this Kat likes the dictum "if you feel a precedent leads to a unjust decision, do not follow it", and dislikes the situations (which nevertheless seem not to be that common) where a tribunal is forced to an outcome that it does not wish for under the weight of a binding precedent that it does not agree with.

EPO Bound again - more precedental than ever: Precedent 2 EPO Bound again - more precedental than ever: Precedent 2 Reviewed by Darren Smyth on Wednesday, July 16, 2014 Rating: 5


  1. Darren thanks but I suspect the EPO is a special case. More than a thousand decisions each year handed down by DG3, and no supervisory judicial instance to muck up the steady progression towards legal certainty that is there for all to see in DG3's White Book.

    Recall Robin Jacob telling us all that this White Book had pride of place on his desk when he was a Lord Justice of Appeal in the Supreme Court of England and Wales, because he thought it one of the finest resources available.

    In the earlier blogpost, I suggested to readers that the proof of the pudding lay in the eating: that successive Editions of the White Book reveal fewer and fewer developments in the substantive law of patentability, because, by now, it's all "the settled caselaw" of the EPO.

    I'm not sure that the Supreme Court in (for example) Germany achieves such certainty. It has a big caseload, but hardly as much as the near 30 Boards of Appeal of the EPO. It seems to me that the BGH is still all over the shop on what constitutes "new matter". That might in turn be because, still, it has difficulty grasping the philosophical difference between novelty and obviousness. That, in tuirn, might be a consequence of another Thing I mentioned earlier, that on the mainland the court assumes the role of the person skilled in the art.

    But let's remain optimistic. After 30+ years of patronising the EPO, the BGH has finally come round to the EPO way of handling novelty (the EPO's "clearly and unambiguously derivable" test).

    So, all in all, thank goodness the EPO has not been under the boot, the "Binding Precedent", of a supervisory Supreme Court with an inadequate appreciation of the consequences of its decisions on validity.

    Of course some will say, the EPO doesn't handle infringement Y/N. But, compared with validity, that's an easy call.

    20 years ago, on leaving England for the mainland, I thought that Binding Precedent was essential for legal certainty. I now know better. But, as I say, it could well be that the EPO is a special case.

  2. Proof of pudding...
    ...or cake and eat it too?


  3. It appears from MaxDrei's Whitebook comments, that in essence there is (despite claiming otherwise) binding precedent.

    The binding appears to be on the force of thoughtful and well written early opinions, with the knowledge that if not so well written, judgments would merely clutter the decks with a handful of views, any of which can be later picked at whim for support.

    Oddly, this ability to pick at whim is reflected in the US by a court that is not itself subject to binding precedent: the US Supreme Court, which alone in the US hierarchy can decide - as it wants to - be constrained, or not. The exception that proves the rule, as it were.

    The comment by the post author ("In the USA, the highest court seems to be changing the boundary of patent eligibility every few years, and this does not seem to help anyone") appears to serve notice that the USE of binding precedent (either explicit by legislative formulation, or by judicial custom - or implicit by wanting to avoid a known pitfall of lacking actual binding precedent, thereby creating de facto binding precedent) is the "proof of the pudding."

    Ironic then, that the US shows that binding precedent works best - when it is used, and conversely, where it is not required, the de facto use also shows the system works best.

  4. Sorry for novice question from an anonymous. What is DG3?

  5. DG3 = Directorate General 3 = Boards of Appeal = 2nd instance of the EPO

  6. As the article states practitioners know how the EPO works. That means they know what EPO 'practice' would allow at the present time, and that applies to both the law and technology. So for example patentability requirements for antibodies have become stricter, medical inventions seem to require more robust data, proteins and nucleic acids now need to be defined by sequences. EPO practice encompasses both legal precedents and technology evolution, and the sheer volume of individual cases and Board of Appeal decisions means that practitioners have a very good 'feel' for these issues.

  7. The matter of res judicata, or precedent, creeps into the latest batch of decisons of the enlarged board regarding petitions for review of T 1760/11, e.g.

    The opponents seem to have been upset that the Board changes its position as to what should be considered the closest prior art in related decision T 401/01 (or should that be 04?)

  8. Max says evolution is good for legal certainty. That may be so after the 30+ years of "settling" of the case law. But where legal certainty is needed soon after a new legislative provision is put into effect, then binding precent allows those subject to the new law quickly to understand how the Courts intend to applying.

    As for fixing bad early precedents, then if truly important, they should be fixed quickly by reference to a superior court. If the courts reach a precedential understanding of the law which is at odds with the legislator's intent, ineffective or unjust, then it is for the legislator to better express his intent in amended legislation. Binding precent thus allows the legislator to see quickly where a bad law has been enacted, and to remedy the problem. Requiring interpretations of the law to "settle" gives the legislator an excuse to keep the bad law on the statue books in the expectation that the courts will come round to a sensible view, in the fullness of time.

    This is what happens in the UK. Courts reach a view that the law, correctly interpreted, has a certain effect, those subject to the law dislike the effect and lobby the legislator (Parliament) to change the law.

    Interestingly, this is also why Britain has an intrinsic dislike of law created by European institutions (ECJ/ECHR). A decision comes out of Europe. The decision explains the law. Most European courts take note, but expect the law to continue to "settle", and interpret around it.

    However, the UK courts feel bound by it and transcribe the law into binding precedent, which takes hold all the way down the tree, and then is applied henceforth.

    There is no way for Parliament to "fix" the law when it feels that the law is misintepreted, and no effective way for the courts to "interpret around" the decision, or to allow the decisions to "settle". They have to take the most recent decision as gospel, until the next decision comes along.

  9. Ah the Rule of Law. I recommend the book by retired top top top judge Tom Bingham, which explains with startling clarity what the absence of a written Constitution (and of a Supreme Court guarding the Constitution) means for the UK. Other countries that follow The Rule of Law have a written Constitution, and a Supreme Constitutional Court to strike down new legislation when it is unconstitutional. In England, by contrast, Parliament is sovereign, and nobody, but nobody, not even the Eurpoean Court of Human Rights, can tell the English Parliament when its Bills are incompatible with The Rule of Law.

    As ever, England is exceptional and delights in it, to the manifold confusion of all other countries. It will be a long time before mainland Europe swings over to adopt the system of English law.

    Incidentally, isn't it a bit naive, in these days of unremitting election campaigning and coalition government, to suppose that the legislator will react "quickly" to remedy a defect in one of its own recently promulgated laws. Witness for example the painful efforts of the US Congress, to tinker with the patent law of the USA.

    And another thing: does Anon at 12:36 hr suppose that Res Judicata and Binding Precedent are two names for the same thing? If he does, IPKat, more education needed I fear. On the mainland, it seems, the point still hasn't registered!

  10. Just a quick note in response to MaxDrei's last point - I realised last night that the whole topic of res judicata and estoppel, and how these differ from precedent, was relevant here, and decided to do a further post on this matter. I probably won't have time for a few days, however, so please bear with me.

  11. Perhaps a bit subtle and perhaps a bit too off topic, but the notion picked up by MaxDrei's comment about the role of the Court (taken as the US Supreme Court) as guardian of the Constitution is not quite correct. The guardianship of the Court does have a role, but that role is neither the single role, nor the most important.

    The tri-partite structure and the doctrine of separation of powers also provides guardianship. After all, if no one monitors those doing the monitoring, then those doing the monitoring will be left unchecked - and damage, often pernicious, ensues. There is no single branch with final say. Checks and balances are more important than one branch uber alles.

  12. Since there will be another post, I will add my thoughts. The comments of Mr. Mazel seem to confirm that the organizational framework is relevant for the status of precedent. Of course, a refusal by a TBA is final, but if the TBAs are not consistent, predictable and reasonably applicant-friendly, companies will start filing national applications again. On the other hand, there's no Congress to step in and the EPC will most likely not be changed anytime soon, so the EPO has to make the system work. Another typical aspect is the relatively short appointment term of 5 years. Too many rogue decisions and you're out, I can only hope, although I am aware of an apparent exception. Finally, I think the White Book is not always clear as to what is currently prevailing case law, I prefer Visser for that - I think the EQE plays its own role in defining what is present "case law".

  13. RE: Another typical aspect is the relatively short appointment term of 5 years. Too many rogue decisions and you're out

    As far as I know, the situation is exactly opposite to what you described. Usually, appointment for life (read: for long) or election is used to insure quality and a required degree of independence.

  14. Yet, whether or not following precedent or whether on being bound by res judicata, it seems that thanks to (or despite of?) the EPO case law the decisions in Europe have harmonized in such a way that the courts now use the case law of the Borads of Appeal and each other's case law to aid in making their own decision (at least as far as I have seen it, this is now commpon practice in the courts in the UK, Germany and The Netherlands; I do not know enough of the decisions in other countries to judge if the courts there also follow this trend).

    if we compare the days of Catnic and Remington/Improver to now, it seems that a lot of progress has been made, which progress hopefully will culminate in the UPC, where a further harmonization will be achieved.

  15. Another typical aspect is the relatively short appointment term of 5 years. Too many rogue decisions and you're out, I can only hope

    That's not how it works in theory, nor in practice (not in the BoAs nor in any other court). TBA decisions are anyway not taken by single persons.

    Finally, I think the White Book is not always clear as to what is currently prevailing case law, I prefer Visser for that - I think the EQE plays its own role in defining what is present "case law".

    The White Book covers essentially everything, so also issues for which the case law has not yet settled. Questions on such issues will simply not be posed in the EQE (unless the Guidelines happen to have a very clear passage on it or there is some other public notice by the EPO explaining the first-instance practice).

  16. I am amused and troubled at the same time by the posts of MaxDrei, calling for "more education," whilst seeming unable to be educated himself.

    I wondered to myself while reading this attempted distinction between having or not having "binding precedent", and realized that it has been MaxDrei advocating for a particular viewpoint that has drawn the lightening.

    From this vantage point, it appears that the "name" of binding precedent is what is disliked (while the actuality of having some sort of de facto binding precedent is evident in the development of any sense of "Darwin" best law.

    Both the US and EP systems show this, but from opposite paths.

    In the US, as noted, hardcore binding precedent works best where it is enforced. At the highest level, the US Supreme Court, where it is not enforced, the Rule of Law is most upsetting.

    The EP shows the same result by a different path. There - by name - the term is avoided, but in principle the term is practiced as evident by the Whitebook.

    I look back at the topic and see one person promulgating a view that is contradicted in multiple systems. And that view is the view that has been put forth by the person calling for others to learn.

    Learn what exactly?

  17. Well there you are, readers, Anonymous at 16:42 yesterday is asserting that the EPO's "White Book" the Digest of the Caselaw of The Boards of Appeal, is the EPC's version of "Binding Precedent" (even if not called by that name). I suggest that Anon tries out his theory on the examination and opposition divisions of the EPO.

    In my experience, lawyers who have never practised outside an English common law jurisdiction cannot imagine a legal world without Binding Precedent, and lawyers who have spent their entire careers in a civil law (not English law) jurisdiction cannot imagine how Binding Precedent actually works. This thread rather tends to confirm it.

  18. In a civil law system, i.e. without binding precedent, a judge having to decide on a legal question will take into account how other judges have decided that same question, but he is under no obligation to follow earlier decisions. His judicial independence not only allows him, but obliges him, to make up his own mind on that question.

    In a common law system, i.e. with binding precedent, a judge having to decide on a legal question for which the case law provides an answer is obliged to follow that answer. He is not allowed to make up his own mind on that question. (Of course there are lots of subtleties involved, as explained in the IPKat's first post.)

    A civil law judge is bound only by statutory law. A common law judge is bound by statutory law and by case law.

    Civil law systems strictly speaking have no "case law" and so the title of the EPO's White Book ("Case Law of the Boards of Appeal") is somewhat misleading.

  19. RE: In my experience, lawyers who have never practised outside an English common law jurisdiction cannot imagine a legal world without Binding Precedent, and lawyers who have spent their entire careers in a civil law (not English law) jurisdiction cannot imagine how Binding Precedent actually works.

    MaxDrei, it is quite brave of you to write on a forum with 10261 subscribers that lawyers from your experience have quite forgotten a comparative law course taught them in a law school.

    As long as, you've brought up a civil vs common law subject, I will dare to express a thought that the EPO legislation resembles more a common law system than a civil law system.

    A civil law system usually has an extensive system of detailed statutes covering procedural and substantive matters, while case law gives interpretation of open norms used in statutes, exceptions, etc.

    A common law system, in turn, relies primarily on case law, complemented with statutes.

    The EPC having only 6 articles on substantive examination, formulated as open norms, hardly can be unambiguously associated with civil law legislation. An analogy with a common law system seems to be more close and, therefore, "as a rule binding" case law justifiable.

  20. RE: A civil law judge is bound only by statutory law.

    This is not exactly so. There are classical (especially higher court) decisions that interpret certain widely used provisions of statutes. View points of such classical decisions constitute an indispensable part of application of a statute provision.

    It also happens that such classical decisions are codified, i.e., become a statute provision, with time.

    Something like that, I would foresee for substantive provisions of the EPC.

  21. It readily appears that much learning is still required - even by those who would deem themselves quite experienced.

  22. Reading the thread, one is struck once again by the skill and wisdom of those who back in 1973 wrote the pared down, irreducibly minimalist, substantive patentability provisions of the EPC, adopted as they are by now in the national patent law statutes of 38 (and counting) sovereign EPC Member States, a mix of common law and civil law countries.

    As I always say, the heavy work of "harmonising" the substantive patent law of Asia, Europe and the USA has already been done. England has no problem reconciling the sovereignity of the Monarch in Parliament with the persuasive authority of the established caselaw of the Boards of Appeal of the EPO. To harmonise substantive patent law, world-wide, there is no longer any necessity to compromise.

  23. ubber alles...?

    Someone still needs to learn


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