The independence of the Boards of Appeal: Merpel roars again

Still troubled by goings-on
at the European Patent Office
There are many aspects of the recent events (See here and links concerning the suspension of a member of the Board of Appeal, and here and links concerning the strikes and demonstrations) at the European Patent Office that trouble Merpel.  One is the apparent erosion of the independence of the Boards of Appeal.  One of their jobs is to tell the first instance that what they have done is wrong, which inevitably has a negative impact on the procedural efficiency of the EPO.  Given that this procedural efficiency is the stated aim of most of the current reforms introduced by the President that are the subject of so much concern, the continued independence of the Boards of Appeal is vital for all users of the EPO.  The Boards have even condemned as in breach of the EPC those procedures that were hardwired into EPO practice, such as the pro-forma Decisions "according to the state of the file" if the applicant did not want to pursue argument further and just wanted an appealable decision (see for example here).

There are troubling signs that the independence is being eroded, quite apart from the house ban and then suspension imposed by the President and the confirmed by the Administrative Council.  (Incidentally, this was referred to in the Communique as "unanimous", but was it?  Merpel has heard that there were two votes against.  Can this be misinformation?)

Readers may recall that there was a proposal to make the Boards of Appeal more independent of the rest of the EPO.  This proposal for the "Autonomy of the Boards of Appeal" has now been pretty much expunged from the EPO website, but survives here.  This proposal is now seemingly dead in the water.  Merpel has however heard that there are plans afoot to review the position of the Boards of Appeal, and this has been discussed at the "Board of the Administrative Council" (AC) or "Board 28".  This is a subcommittee of the Administrative Council according to Article 28 EPC and is currently composed of:
Ex officio members
  • Jesper Kongstad (DK) (Chairman of the AC)
  • Miklos Bendzsel (HU) (Deputy Chairman of the AC) 
Elected members
  • Sean Dennehey (UK)
  • Serafeim Stasinos (GR)
  • Habip Asan (TR)
Merpel supposes that the current examination of the institutional provisions relating to the Boards of Appeal is headed in the opposite direction from the previous proposal, ie to make them less autonomous.

There are already worrying signs that even the members of the Enlarged Board of Appeal do not consider themselves independent.  Two signatures on the now-famous letter of the EBA to the AC protesting the suspension of the Board of Appeal member were notably missing.  These are the signatures of Chairman of the EBA himself, and the member of the Enlarged Board still working (the other two have retired) who participated in Decision R19/12.  The President of the EPO is reported to have been furious at that decision, which found that an objection to the participation of the Chairman of the EBA on the basis of suspicion of partiality, because of his dual role as vice president of DG3 (the Boards of Appeal), was justified.  Can it be that pressure has been applied to these two persons?

In an interesting development, the Chairman of the EBA is also subject to an objection on the basis of apparent lack of partiality in case R 08/13.  Merpel has seen a submission recently filed on that case, which was available on the electronic case file for a short period before being taken down.  The representatives in that case argue that the non-signing of the letter to the AC by the EBA demonstrates that the Chairman's position as Vice President of DG3 is in conflict with his role as an independent judge.  There must surely be concerns that clear independence is not currently apparent.
The independence of the Boards of Appeal: Merpel roars again The independence of the Boards of Appeal: Merpel roars again Reviewed by Merpel on Thursday, December 18, 2014 Rating: 5


  1. In EPO speak, unanimous means all those who voted, so that abstentions do not removes unanimity e.g. 30 votes for, 4 abstentions, 2 missing votes (stuck in toilet...) would be unanimous.

  2. Lets suppose that a procedure under Art. 23 EPC is started before the Enlarged Board against the board member now under "house ban". Will the chairman of the EBA be able to sit in that case, as he is also a vicepresident bound to support loyally the president of the EPO who is proposing discilpinary actions on that member? How can he at the same time be seen as an impartial judge?

  3. The electronic file for R 08/13 appears to be online again:

    Discussions on roles of different bodies under the European Patent Convention and their mutual relationship are in my opinion very healthy discussion. No progress without some abbresion.

    This process, however, should be conducted in a fair an preferably transparant way. Taking down information, misrepresentation of facts - if the case - is a serious issue.

    Indeed, also I have seen more and more communications pursuant to Art. 94(3) that lack proper arguments underpinning all objections against all claims. The Opposition Division does not accept arguments like dependent claims apparently not comprising any features that could bring in novelty and inventive step to claimed subject-matter. Neither should applicants accept such arguments from examiners.

    And yes, I still meet examiners who are willing to extensively discuss an application over a cup of coffee or a telephone call. My sincere respect to them. But a significant amount appears to spend less and less time drafting well reasoned statements. Could this be a result of the President pursuing procedural efficiency? I do not know. But it looks like many have this opinion.

    And that is the reason why we need independent boards of appeal. That are truly independent from the executive powers of the European Patent Office.

    Considering various submissions from People Who Matter from various Member States to the president of the EPO, I have some hopes there are powers that dearly value this independence as well. For which reason I tell myself that the confirmation of suspension by the AC may perhaps be to give the issue a bit of time to resolve this at the sideline. After all, the applicable board member was sent home with full pay.

    For various reasons, I remain an observer to this process - one of those reason being that proper action is already being taken by people close to me who represent my opinion. But still my fingers and tongue are itching for taking action.

    Thank you, Merpel, for not letting this rest.

  4. The electronic file is available but the submission referred to in the blogpost is not among the visible contents. This is correct according to the EPC since documents relating to allegations of partiality are not supposed to remain on the public file.

  5. "But still my fingers and tongue are itching for taking action."

    Then do! make a noise or write to people privately. See if your big clients would speak out - applicant opinion seems to be much more influential than patent attorney opinion.

    Intriguing that a GB delegate is involved in BoA ctte 28.

    One reason that Articles 6-8 of the UPC got taken out because of the huge noise surrounding it.

    Society needs the EPO to produce high-quality decisions, otherwise perhaps it should be renamed the PPO (Potemkin Patent Office)...

  6. Am I missing something in my understanding here? Someone has argued that the fact that an "independent" member of the EBA has not signed a letter agreeing with all other members of the Boards is evidence that they are not impartial and therefore not fit to act on a specific case?

  7. Why is Merpel so keen to promote the cause of these disgruntled patentees? This is clearly a step beyond addressing the independence issue.

  8. The number of decisions from examining/opposition divisions being set aside is increasing quite drastically. It is not only a problem when it comes to a decision according to the state of the file, which examiners consider a mere invitation to simply fill in a form and hence get a refusal with very little input, but which counts double as a final action. What examiners forget is that, even if an party has requested a decision on the state of the file, but has given some reasons why it does not agree with the division, then a decision, even on the state of the file, needs to be a fully reasoned decision and not merely filling a form referring to previous communications. Often the previous communications are also so confuse, that it is unclear what the actual ground for refusal is.
    The production is assessed as follows: 1 file= 1 point; 0,65 search + 0,35 final action, but if the final action is a refusal, then the examiner gets 1,35 points.
    What is also interesting to know is that when a file comes back from the boards of appeal, the production counter is reset to 0, when full examination has to restart, whatever the reason for sending the file back could be. It is thus the interest not only of the examiner, but also of his manager to make as many points as possible, with the least effort. A quick refusal, and a reset counter is thus very interesting.
    If the division committed a substantial procedural violation, the counter should not be reset, as this is a premium for slapdash decisions.
    Just an overview of decisions with an SPV in recent times:
    Not taking into account arguments of a party
    T 1199/10, T 1312/10, T 1093/13, T 129/14, T 1961/13, T 427/10, T 2038/13, T 2375/13, T 116/12, T 1843/11 (10 decisions)
    Decision not motivated
    T 374/12, T 2105/10, T 1205/12, T 1469/11, T 2393/11, T 305/14, T 996/12, T 1936/06 (8 decisions)
    Various reasons
    T 21/09, T 1929/13, T 405/12, T 674/12, T 1855/13, T 2111/13, T 623/12, T 2164/11, T 1765/13, T 1448/09, T 820/10, T 983/10, T 990/06, T 2106/09, T 2335/12, T 313/10, T 2557/12, T 1034/11, T 116/12, T 1249/12, T 382/10, T 1340/10, T 1500/10, T 996/12, T 2373/11 (25 decisions)
    The overview does not claim to be exhaustive, but it certainly shows a clear trend in the recent years.
    If the production pressure on the examiners is increased, it is to be feared that more substantial procedural violation might occur, or more quick grants will be decided on the basis of a summary search, although a majority of examiners still would like to be proud of their work. As the pressure becomes more intense, they might give up and play with the system, be it only not to be penalised.
    In any case it is thus important that the members of Boards are not put under a similar pressure, and clearly retain their independence, but it cannot be excluded that what is presently going on in first instance diffuses into the Boards, or at least some "managers" at the EPO want to increase production/productivity there as well.

  9. Quis custodiet ipsos custodes?

    Who custards the custard?

    I could have been a Judge, but I never had the Latin for the judgin' Peter Cook

  10. Every time I look at the online file for R8/13 there is less in it. Even the original letters from a third party merely questioning why the "cancelled" hearing went ahead without the public being notified of this fact have gone now (they were there for a couple of months).

  11. It is interesting that although the EU Commission have observer status at the Administrative Council I understand they were not present at "that" meeting.

    As the EPO will be granting and administering the Unitary Patent, should the Commission perhaps take more of an interest?

  12. There is no transparency at the EPO and no governance as well. This is bound to end soon because there are concrete moves to bring the recent scandals at the attention of those who are likely to intervene. Battistelli and his cronies should soon fear for their positions.

  13. Viewed by the number of comments (especially on earlier IPKat posts on this topic) the affairs at Eponia attract a large amount of attention. Luckily so! I agree with anonymous 0f 08:18 that I really appreciate that Merpel is spending so much attention to this situation.
    Although there is a danger that the IPKat functions as the (in)famous British tabloids which are enlarging potential scandals, it seems that in this case the coverage is warranted given the fact that the EBoA members already themselves have tolled the bell.
    If the community (meaning patent professionals that have dealings with the EPO) would need to react through official channels such as the epi things will be processed too slowly and the venom that may have been intended will be diluted the moment the message is delivered to the EPO. In these cases it is good to have the public infromed through the press, and Merpel can help on this. I saw on this site that there have been political questions in the UK parliament and also in Germany things are spreading outside the EPO.

    Thanks merpel, and please keep your coverage up: you are providing a big favor to the European patent community.

  14. It IS a scandal.

    EPO management and AC must know that they can manoeuvre around the prim and dainty professional associations with ease.

  15. Dear All

    Merpel et al. might help us if they told us what the particular Board member is accused of, warranting the drastic temporary suspension. I would assume it has nothing to do with his/her office as Board member - correct? Assuming for the sake of argument that its is something like libel/slander, or inflicting bodily harm, what would the reaction of the members of the Enlarged (not to say "Enraged") Board be?
    Also, why does Merpel suggest that the 28 Committee - or anyone on the Administrative Board for that matter - should have an interest in reducing the independence of the Boards? In fact, the most efficient way of countering any abuse or overreaching on the part of the President of the EPO is expecting or requesting the Administrative Board to step in. Please - do not expect the European Commission to be the cure-all!

    Merry Pre-Christmas !

  16. Dear Anon at 15:06
    The Board member who has been suspended is accused of "dissemination of defamatory material", apparently about a particular high level (Vice President) employee of the EPO. It can be assumed that members of the Enlarged Board of Appeal are aware of that.

  17. Merpel referred to the alleged offense of the Board of Appeal member in this post:

    as "for alleged suspicion of spreading libelous comments"

    One of the commenter pointed out:

    "The article says that the BoA member has been suspended for "Verbreitung übler Nachrede", which indeed roughly translates as "spreading libellous comments", but differs from "Verleumdung" (slander) in that the "libellous comments" have not necessarily been proven false (just not proven true)."

    The reason for the house ban was also stated here as "alleged dissemination of defamatory material":

    Merpel apologises if this information became lost in later posts - when news develops it is not practical to repeat everything on each occasion

  18. As far as I am aware from a source within the EPO, the alleged defamatory material concerned a particular topic of debate which the EPO president had previously put to bed by clarifying to the staff that an investigation by the investigation unit had found no truth in the rumours (this was back in 2013). He then made clear that any further malicious rumours would result in unspecified consequences. He has now informed staff that current actions refer back to that communication. In the meantime, other blogs have carried the stories further and provided some documents. Whether the board member is connected with that or with other issues concerning the same VP is not clear - all that is clear is that there is a direct link to the president's previous warning. Whether the commentary is defamatory or not and whether the accused is guilty of defamation is to be decided. I have no idea and neither did my source.

  19. The independece of the BoA and the independence of the divisions are just two sides of the same coin. Latest developments give even more powers to the directors - each grant must be approved by a director... do you ever think about Art.19(2) when you see a director chairing an OD?

  20. Anonymous @ 1440,
    Technically speaking, the BoA member is not allowed to tell anyone else what the investigation is about, according to Investigation guidelines. However, if the president reveals the generality of the investigation then his cover is blown (although to admit you are an accused may also be a 'crime', even if your absence is obvious and your removal from the building may have had witnesses). Maybe there are different rules for BoA members?

  21. VP3 notwithstanding, all DG3 Chairpersons signed the letter except TWO, who either wouldn't or couldn't.

    I have good reasons to believe that neither could.

  22. @ Anon 10:54.
    Let's precise that a refusal brings 2x0.35 points=0.7. Search brought months earlier 0.65 point. Total for the whole file, as you wrote, 1.35 point.
    May I take this opportunity for thanking you for publicly disclosing the recent explosion of scamped files. While some examiners make courageous efforts for maintaining a decent quality, others smelled the wind and use
    all means for speeding up search and examination. Worse, since they just do what is asked by the management, they don't have to fear any reprimand.

  23. @anon 19:52
    This scheme has been in place for years since PAX entered into force, so what is the link with the "recent explosion of scamped files" ?

  24. "Thanks merpel, and please keep your coverage up: you are providing a big favor to the European patent community."

    Not with one-sided postings.

  25. The PAX scheme might be in place for a while, but it is a matter of fact that the number of SPV has seen a sharp increase in the recent years.
    This is the result of the directors pushing further the pressure they themselves undergo from higher management.
    Just taking high producers as directors, and not people who know the job and hence can help and "direct" their examiners on the right track, is also leading to this effect.
    The whole ISO 9001 certification is just a joke. Abiding by given procedures does not necessarily give good products, especially since examiners do not want to play censors on colleagues, for fear of retaliation. They want to keep an acceptable working atmosphere and not to start fighting with each other. So they sign as 2d member and chairperson whatever crosses their desk in the hope the other will do so as well for their own files.
    Quality does then necessarily go down the drain, but the effect will not show until much later when all the present managers at P, VP or even at PD level will benefit a cushy pension, without having before congratulated themselves about their excellent management skills.
    It is not by repeating like a mantra that the EPO is the best patent office in the world that this status will be maintained, but as long as the production plan is achieved, everybody at the top level and the AC is happy.
    As the plan has been achieved for many years, why was it then necessary to bring a direct performance related part into the salaries as now decided? Just because some VP, who only has ever done searching in his life as examiner but does not have the faintest idea what examining an application or dealing with an opposition means, is of the opinion that examiners should earn their salaries? Does he warrant his salary???

  26. @anon 20:33
    Reasons for quality drops:
    rotations of directors every few years (regardless of technical qualification),
    areas of competence,
    granting for any cost (chairmen get for every grant under the new quality system a time bonus, but zero for refusals)

  27. @Anon 22:04
    Main reason for quality drop: absolute lack of promotion prospects since 2 years now for those who are not in the top 5 producers. The career scales which enter in force in 2015 will dramatically accentuate this movement.

  28. As an examiner I can only agree with the Anon that wrote "This is the result of the directors pushing further the pressure they themselves undergo from higher management.
    Just taking high producers as directors, and not people who know the job and hence can help and "direct" their examiners on the right track, is also leading to this effect".
    The worst is yet to come, mark my words...

  29. Dear all, just a correction on the EPO point system. The 0.65 - 0.35 is long gone (with introduction of PAX). Now we count "products", i.e. search and final actions in examinationes. For the productivity calculation (which until now was the only official target given) we have the formula (No of searches x 0.6 + No of examinations x 0.4) / time spent. Only for the calculation of productivity, the refusals count as 2 instead of 1. But the time needed to reach a refusal (almost always through oral proceedings) does not justify the extra point, i.e. examiners still prefer to grant (if possible). An no one likes having the file sent back from the Board of Appeals. The argument that the examiner knows the file and it will be a quick point does not hold water, since it takes at least 2-3 years for the file to come back.

    1. Do not forget that nowadays for a grant a chair gets 15 minutes extra, while for a refusal he is punished by having to hold oral proceedings and getting no time... so first examiner is always advised to grant...

  30. Now back to the independence of the boards of appeal. Or dependence, if I am reading the recently decided and published rules correctly.
    I see:
    A complete integration of the boards of appeal in the career system of the EPO,
    Board members have a probationary period, contrary to their 5-year appointment (art.23(1)EPC),
    The performance of board members and chairmen and therefore their renomination after 5 years is determined by the management aka executive.

    After all the noise made by the interested parties about the importance of the boards' independence, how can the administrative council decide such rules, making it ever so clear that the boards are supervised by the management? Apparently that is their intention?

    Nice summary!


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