The European Patent Organisation consists of two organs: the European Patent Office and the Administrative Council. Pursuant to Art. 4 EPC, the task of the Organisation is to grant European patents. This shall be carried out by the European Patent Office supervised by the Administrative Council. Thus, the Administrative Council is supposed to supervise the European Patent Office.

With this background in mind, I went with great interest to a speech given by Dr. Christoph Ernst, the recently elected chairman of the EPO’s Administrative Council, at the Max Planck Institute in Munich. I was curious what he would have to say about the Unified Patent Court (UPC), the German constitutional complaints and the two most pressing problems that the EPO currently has, at least in my humble opinion, namely the quality of its products and the serious understaffing of the Technical Boards of Appeal, as regards which I started writing (and complaining) over a year ago.

With regard to the UPC, I learnt that this is a good idea from a European perspective, even though it may occasionally lead to some disruption of the existing business models of some. All well and good. Will it come and when? On that I did not learn anything. I cannot remember Dr. Ernst using the word ‘Brexit’ even once. He did mention the German constitutional complaint against the UPCA ratification, but his only two comments were “I am afraid I must disappoint you – I cannot comment on it here since I am a member of the Ministry of Justice”, and “I hope that it will end well and that it will soon be decided”. Amen.

Turning now to the two problems mentioned above, i.e. quality and the understaffing of the Boards of Appeal, I was flabbergasted to learn that the first was not actually a problem at all – at least not for Dr. Ernst – and the second has meanwhile been solved since the vacant positions have now been filled up, as Dr. Ernst explained.

Hmm. “Die Botschaft hör ich wohl, allein es fehlt der Glaube”. (I hear your message loud and clear, but still I don’t believe it – Goethe, Faust)

I may devote a separate post to quality, which I admit is a difficult subject and with regard to which I think care should be taken not to overemphasize “emotional” factors and “felt quality”, as Dr. Ernst argued with some force, but where one should also be wary of the fact that there is a huge temptation to overestimate one’s own quality if asked to measure it. There is a famous saying that 80% of German Professors believe that their work is above the average of their peers. And in view of the EPO management’s impeccable record on “own-trumpet blowing”, as Robin Jacob LJ. once acidly remarked, I think that the Administrative Council would be well advised to have quality checked by an independent authority, or by a comprehensive user consultation, rather than putting too much trust in the judgment of the EPO management. Another probably sensible proposal was recently filed by a reader of this blog in regard to one of my earlier contributions:

Beside the meaningless quality marker under ISO 9000 which is regularly trumpeted to be excellent, the EPO should publish the real quality statistics which are set up by the audit department. The figures will probably look quite different, hence a reason why they are a well-kept secret.

Maybe the Administrative Council (AC) could talk to someone from this audit department and find out what their findings are (to be fair, perhaps they have already done so, but Dr. Ernst mentioned nothing about that). From the discussion following Dr. Ernst’s speech, it became pretty clear that most in the room – a mixed audience of patent attorneys, attorneys at law, academics, EPO members and judges – were anything but convinced that quality has not suffered as a result of the latest changes in EPO policy (see my earlier reports on this blog). Perhaps this will give the AC Chairman something to think about, although I am not so sure. I am afraid his mindset is more that he first wants to see evidence of a quality problem before starting to address it. Appropriate and fact-supported comments by readers are welcome! Prof. Hilty made an interesting concluding remark on this, i.e. who actually has the burden of showing that quality has not suffered as a result of the greatly increased productivity pressure?

But let us put quality aside and turn to the really good news. The Chairman of the EPO’s Administrative Council said – and I am not joking here! – that the understaffing problem has meanwhile been solved. He literally stated that the (vacant) positions have been filled again (“die Stellen sind jetzt wieder besetzt”).

How great!

Except that this is unfortunately simply not true.

While a few Board of Appeal chairmen were appointed (out of current board members) and a number of current board members were apparently re-appointed in the last AC meeting, the overall result was such that EPO users can only be very disappointed. Following Dr. Ernst’s speech, I asked around and quickly learnt that there have, in fact, been virtually no new appointments of technical members lately. Very unfortunately, the official communiqué on the recent Administrative Council’s meeting as published on the EPO’s website again hides this fact from the public by using the usual and completely meaningless verbiage

The Council also decided on appointments and re-appointments to the Enlarged Board of Appeal, the Boards of Appeal and the Disciplinary Board of Appeal.

(which raises the question as to why the AC does not itself draft and publish its own communiqués? – more substantive information and less hagiography to the EPO President would be a better fit for a supervisory body than the current setting – sorry, if I am too direct here).

In any case, it cannot be denied that the large majority of the more than 20 open positions as shown by the latest complete business distribution scheme from the end of 2016 have not been filled. Just to mention one example, the pharma board 3.3.02 now (finally!) has a new chairman, but still no (zero!) technical members. Its cases go to TBA 3.3.01. The backlog of cases grows and grows. This cannot be the solution!

Dr. Ernst was confronted with this fact by some members of the audience after his speech. He seemed genuinely surprised, if not even a little embarrassed, on hearing this and said he was not aware of this.

This raises serious questions.

I assume that Dr. Ernst genuinely told the audience what he believed to be true. If so, one must wonder how on earth he could come to this view. Did somebody falsely inform the Chairman of the EPO’s Administrative Council? If so, who was it and will that have any consequences? Or did the Chairman not bother to inform himself properly? He may be forgiven for not reading this blog, but is there nobody around him telling him what is going on?

As I wrote in the introduction, the Administrative Council’s primary role is to “supervise” the European Patent Office. I am not sure that the AC lives up to this challenge at this point in time, especially if its chairman does not even know that the body he is supposed to supervise is doing (almost) nothing to improve the meanwhile catastrophic backlog of EPO appeal cases. I can only repeat myself: URGENT ACTION IS REQUIRED HERE! This matter should not be allowed to wait until the next EPO President takes over. It is a shame that most of the vacant positions are not even being advertised at the moment.

But this can only get better. Dr. Ernst did give me the impression that he is genuinely interested in a dialogue and ready to listen. At least he emphasized his openness time and again during the quality discussion. I will send him a copy of this contribution and of your comments, if any, and will encourage him to establish better and more direct contact to EPO users and to EPO staff about where exactly there are perceived problems and what can be done to solve them. Dr. Ernst concluded his Q&A session with the statement: “One achieves the most positive results by a critical dialogue”.

I could not agree more. Let us take him and the AC up on this and work together for a future of the EPO where staff again feel appreciated and trusted by management rather than put under constant pressure and super-supervision, where users are satisfied with the quality of the EPO decisions/patents, and where opposition and appeal proceedings take no more than 1.5 years per instance without depriving parties of their fundamental right to present their cases fully and adequately in two instances. It is possible if all hands work together: EPO users, EPO and BoA staff, and – in particular – the EPO management, properly supervised by the EPO’s Administrative Council.

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19 comments

  1. Bravo Thorsten. Thanks for speaking out. Speaking out works. It seems to have resulted in a new President for the EPO.

    True, complaints about any fall in “Quality” need to be backed up by evidence, evidence in a form that is understandable to a 5 year old (or a delegate to the AC). Who can provide it? Who is willing to speak up and provide it? Your firm, Thorsten? It must by now have loads of data. More, in fact, than more or less any other EPO user.

    The problem with a “Supervisory Board” is well-known. I experienced it myself, when sitting on the Board of a publicly-funded Arts Centre in London in the 1970’s. Management runs rings around the AC. The AC interests itself only in the accounts. It is not equipped to “take on” the management, in an area like “Quality”. Nobody expends all their troops in a battle they cannot win.

    Or take VW. Take quality in diesel engine manufacture. Has its AC had the wool pulled over its eyes?

    What’s to be done? I have no idea, beyond kicking up a fuss. As you are doing, in no uncertain terms. Again, bravo!

  2. Thorsten – I commend your approach in being so direct. The situation at the EPO has for far too long resembled the story of the Emperor’s New Clothes, with the EPO’s management proclaiming that quality has been maintained when it has been obvious to anyone who cared to look that this is simply not true.

    It is very difficult to provide direct evidence on quality without breaching confidence. The exception is cases where one is an opponent… but then, as an opponent, one would naturally be expected to complain about poor patent quality. What therefore REALLY matters is the perception of the patent profession within Europe and the actions that those within the profession take based upon that perception. On this basis, the EPO clearly has a problem with quality. This is because it does not take a genius to figure out that a vastly decreased rejection rate plus a vastly increased grant rate means that there is a high likelihood that patents are being granted with invalid claims (and perhaps with invalid claims only).

    On a separate issue, I find it extremely disturbing that the chairman of the AC does not know the full facts regarding appointments (to the Boards of Appeal) for which the AC is responsible. It has long been apparent that the EPO President does not provide the AC with the (full) facts and/or presents “facts” in a very misleading way. This is an untenable situation that must be brought to an end as a matter of great urgency.

    The AC’s reputation has been severely damaged by its uncritical approach to information provided by the EPO President (to say nothing about the AC’s abysmal performance in case Art. 23 1/16) and there is a lot of remedial work that needs to be done to persuade observers that the AC is not effectively controlled by the EPO President.

  3. You know that if somebody accuses you of being distracted by ““emotional” factors”, you are very close to the truth. Rhetorically, the last refuge of the scoundrel.

  4. As a commenter said on another blog, may be even Max Drei, what is going on at the AC is he tail wagging the dog. I could not come to the meeting, but it appears clearly that the information given by the management of the EPO to the AC is biased to say the least. The present tenant of the 10th floor is manipulating the AC at will!
    How on earth can the chairman of the AC claim that the problem of the Boards is solved? I fully agree with Mr Bausch that the contrary is true.
    When on the other hand one hears that the appeal fee should raise up to a level of 7 000 €, in words seven thousand Euros, the strategy behind this becomes more clear every day: first dry out the working force of the Boards, make accessing them so expensive, so that every user of the system will think twice of appealing a decision of first instance.
    From a purely rational point of view, when it takes too long, and is too expensive, grind your teeth and accept what is going on. The net result is that any problems with the validity of a European Patent will end up primarily at the UPC. This is a very elegant way to avoid in the long run any conflict of case law between the UPC and the Boards on the validity of patents. Is this what the big industry wants? If the answer is yes, then owe it, and stop pushing the SMEs as a kind of fig leaf.
    I take bets that the opposition fee will increase as well. The pretext for increasing the appeal fee is that the Boards should provide more income in view of their costs. If one thinks about the same way for opposition proceedings, the fee will have to be increased.
    At the moment there is a concerted action from the Office towards SMEs, cf. the document heralding the need of the UPC for SMEs. Can you imagine a SME forking out 7 000 € for an appeal if its application is refused, and later having the perspective of forking out another 11 000€ + in fees if it wants to start an infringement action before the UPC, or 20 000€+ if wants to make a counterclaim for revocation when attacked? This is not serious and should be hung “an die große Glocke” as Germans would say. Why is there so little said about those facts?
    That the quality is going down, is clear. I have seen communications which are not worth the paper they are written on. The mobile hair dresser saloon was just one element of the top of the iceberg.
    I have seen a decision from an opposition division which makes one cringe. Following a request of maintenance in amended form, the opposition division decided to reject the oppositions! All three members of the division signed, and the formalities officer did not see anything either. In spite of what the tenant of the 10th floor has been touting at the UPC conference in July, the 3 man divisions of first instance have long time gone. There are clear oral instructions given by some directors: if the first member decides to grant, the two other have to shut up and sign. With the premium system introduced, the examiners will not annoy each other. Another stupidity.
    You just have to look at some decisions of the Boards in appeal following refusal of the application. There is an increasing number of decisions in which the Board cites better prior art than the one found during the search. It might not be the role of a Board to redo the search, but if the original search is appalling, what else should be done? And this only happens if the application has been refused. The internal audit figures have to be made public. The sooner the better. They speak a clear language.
    What should be done is to regularly file complaints at the complaints department, but even in flagrant cases of errors, the reply is anything but satisfactory. Only if there is a clear message coming from the outside, and going not only to the EPO but also to the delegates in the AC, things will not change. It is to be hoped that epi wakes up and start complaining as well.
    The latest measure in order to increase quality is to recruit examiners on 5 years contracts, renewable or not. A contract will clearly only be renewed if the examiner behaved correctly. What is happening at the boards is to be pushed through to the first instance. When one thinks that the training costs of an examiner will only be recouped after three years, it is anything but certain that this measure will be beneficial to the office in the long run. And one can guess of what will come out….
    Which sensible person will accept to leave its home country, decouple himself from any national social security and pension system in order to come to the EPO with the risk of being thrown out after five or 10 years? And then be left with nothing. May be young people having just finished their studies, but certainly not people with some experience having a family and children. May be some civil servants seconded to the EPO might accept, as they will in general have a right to return, but nobody else.
    The worst is that the tenant of the 10th floor wants to introduce this system on January 1st 2018. As he is leaving the office at the end of June 2018, he should even, out of plain decency leave such a big reform to his designated successor, and not pre-empt his presidency.
    To sum it up: the situation is by far worse as one can think, and if nothing is happening to stop this folly, the whole patent system will go down the drain. Is this what you want?

  5. The new Chair of the AC is a professional Hit Man from the Justice Ministry of Germany. This is the Ministry that allows a scandalous backlog of tens of thousands of court cases in Germany. The small fry are pursued relentlessly (so as to satisfy the statistics of cases completed) while the Big Fish criminals get away scot free. How so? Because Big Fish have powerful friends and engage large legal teams. These kick up so much dust that the public prosecutors are overwhelmed, to the extent that Big Fish cases are still languishing when the limitation period expires and the criminals can no longer be pursued. Just one example, the head (Funke) of the criminal bank HRE. Google it!

    No wonder so many folks in Germany are so frustrated, and vote for the AfD. This is not good! Herr Maas (SPD), Herrr Ernst, readers, take note.

    The definition of madness, somebody once said, is to do the same thing all over again but expect a different result. It is naive, dear reader, to expect any improvement at the EPO. The top political imperative, at AC (that is, national Government) level, is that the UPC must be a success. Any institution (EPO-DG3) that could call such success into question must therefore be ruthlessly eliminated, without delay.

  6. A problem with the complaints system, as I see it, is that (whether or not by design) it’s incapable of spotting systemic issues. So everything gets treated as an isolated case, and they tend to look at the specific facts (one man’s unreasonable objection is another man’s divergence in interpretation of the prior art…) rather than the overall trends. Hence the management are able to go around claiming to be blind to any systematic degradation in quality because everything regarding examination/opposition proceedings is a matter of opinion and the only metrics that they have (speed and number of grants) say everything is fine within the parameters they themselves have chosen.

    Meanwhile, in the real world, I and other attorneys at my firm (and others) are increasingly seeing shoddy examination that speaks of intolerable time pressure, inadequate training and inexperienced examiners. A non-exhaustive list of depressingly common problems includes:

    – half-hearted or botched attempts by the Examining Division to amend the description in a 71(3) Communication, necessitating disapproval to undo the damage and/or complete the job properly

    – amendments introduced to claims by the Examining Division in a 71(3) Communication that unnecessarily affect the scope of protection, again necessitating disapproval and a stern letter to the EPO explaining that the Applicant cannot consent to the amendments

    – shoddy search opinions (especially in the international phase) that only contain brief comments on the independent claims and/or only give the vaguest reference to “relevant” passages in the prior art

    – “copy-and-paste” Art.94(3) communications that simply reiterate old objections verbatim and don’t at all address the amendments or arguments made in previous submissions

    – Art.94(3) communications that contain perfunctory, badly-worded, muddled and/or poorly-reasoned objections that have clearly been thrown together so that the examiner can get the case off their desk in time for an arbitrarily-imposed internal deadline (since it seems that speed is all that matters for the quality metrics)

    – Basic legal errors that aren’t even a matter of opinion (asserting that a reformulation of the objective technical problem in reply to an inventive step objection constitutes a violation of Article 123(2) (!!!); raising a novelty objection against a specific claim on the basis of a generic prior art disclosure; etc etc)

    – unnecessarily early issuing of summons to Oral Proceedings, which I fear will only get worse once the new Guidelines take effect at the start of November

    – unwillingness to take part in meaningful telephone discussions, contrary to the Guidelines

    – increasingly poor standards of English in substantive communications

    – refusal decisions that bear only the slightest resemblance to issues discussed during examination proceedings

    I could go on…

    Of course, a knock-on effect of this is that there will be an increasing number of Appeals, making the backlog problem ever-worse.

    Surely it is time for a coordinated effort across Europe for attorneys to raise these concerns with their AC representatives?

  7. The other day, when doing some file inspection work, I found a complaint letter written by the in-house representative of a German SME and sent to the EPO. If your command of German is sufficient, have a look. The writer analyses three concrete cases and draws some chilling conclusions on patent quality at the EPO and its consequences. The contrast with Mr Battistelli’s self-congratulatory trumpet-blowing is striking, to say the least.

    https://register.epo.org/application?documentId=EZMRZYSD4349561&number=EP06022243&lng=en&npl=false

    (if the link does not work, look up any of patents EP1777452 or EP2768359 or EP2481259 in the Register and look for the written submission dated 30 September 2016).

    Best regards

    Michel

  8. This in reply to “Michel” (and the Complainant with the office in Kandel, Germany).

    We need to be clear on what we mean by “quality”. I say that the patents issued by the UK Patent Office prior to 1978 were of very high quality. Clarity was a big issue. What issued was crystal clear.

    Yet the UK Office in those days made no examination of obviousness. Nevertheless, patent litigation was as rare as hens teeth. And when it happened it was only when both sides thought they could win. Nobody spent money trying to enforce a claim that would like go down as obvious. Why can’t every EPC country arrange it like that?

    But the firm in Kandel is distressed that the EPO is not filtering out, prior to issue, claims that are palpably obvious. Why is that so important? Has its client been enjoined by a court, to cease manufacture? I doubt it. And if it has, was that because the court declined to consider evidence of invalidity of the asserted claims? What is stopping the court being educated, that the patent owner’s claims are without foundation?

    These days, more than ever, given the rise in prior art in countries like China and Korea, it is no longer tenable to assert that claims examined by a Patent Office are valid. A different definition of “quality” is needed. One might need to downgrade the level of confidence that what issues from the EPO is valid. But was that ever the case?

  9. To add a positive aspect: it appears to me that the EPO has slightly relaxed its approach with respect to original disclosure. Only five years ago, it was more or less required to have literal/verbatim disclosure, while you can now get away with carefully made deviations from the verbatim disclosure.

  10. Who are you, Peter Parker, and what do you know? Many years ago, the Tegernsee Group concerned itself with this issue and DG3 has taken it to heart. Have you only just noticed?

    Talk about re-arranging the deckchairs on the sun deck of the Titanic. Your post is a joke, right?

  11. Well MaxDrei, I am a practioner and I make my living by getting EP patents granted for my clients. Over the years, hundreds of them. I know the original disclosure issue form the trenches, i.e. from working with the examining divisions and opposition divisions. The original disclosure requirement is a bigger issue for my clients, in particular clients form the US who might not have “EP style applications”, than a backlog at the BoA or a Communication not giving a detailed assessment of some dependent claims. I give developments with respect to a change of patent practice some time before I exploit them in pracitce, because I do not want to be the person that has to tell the insurance that the client is considering legal action because his client manouvered him into an “inescapable trap”. It is my understanding that more lenience with respect to original disclosure is very widespread at the EPO now and that this change came under Battistellis presidency.

  12. Mr Parker, thanks for that very revealing reply. Now I know for sure that it’s a joke. You “understand” that within the EPO there now manifests itself a more enlightened view of Art 123(2) EPC. And that more enlightened view, you say, “came under Battistelli”. I can’t believe it: you give the credit to BB. As John McInroe might cry “You cannot be serious!”

    I note that you are a “practioner” whatever that is. I dare say though, it is no obstacle to being yet another on BB’s PR payroll.

    What you assert though, on cause and effect, would be like saying that heart disease is the result of speaking English.

    BB doesn’t write the caselaw of the EPO. In fact, his attitude to Rule of Law is entirely the contrary. He doesn’t cultivate it. He pisses on it. Have you still not realised it yet?

  13. Strange things are afoot in the world of (reporting on) the EPO. After months of a self-imposed moratorium of reporting on all matters EPO, a well-known IP blog finally posted something… about the appointment of Mr Campinos. The comments on that post raised some interesting issues that – like those raised in this post – deserve some airing. But now all of those comments have been deleted and the comments function disabled for that post.

    What is going on? With perhaps only one exception, I cannot see how the deleted comments could possibly have posed a legal (e.g. libel) issue. So why delete them ALL?

    Whilst I am not inclined to believe in conspiracy theories, I am very troubled by this development… especially when one considers the curious silence of all “mainstream” media outlets on the situation at the EPO. If Mr Ernst is earnest in believing that “One achieves the most positive results by a critical dialogue”, then this development should trouble him too.

    Against this background, I can only commend you again, Thorsten, for speaking out about the troubling situation at the EPO. Whilst most attorneys are too afraid (or too ignorant or complacent) to speak up, your airing of these issues has demonstrated to me that I am far from being alone in being appalled by the current direction of travel at the EPO. Keep up the good work!

    1. I have no own insights of what happened at IPKat, and my only comment is that there could be many (also purely technical) reasons why the commentaries on this particular blog were deleted, so I will abstain from any speculation.

      As readers of this blog know, I believe in and honor the right of free speech and encourage readers to engage in a civilized critical dialogue about matters of common interest. It goes without saying that such a civilized critical dialogue should neither include insulting or denigrating other people or institutions, nor suppressing critical, but well-substantiated opinions by others. The Kantian “golden rule” applies everywhere.

      1. Thorsten, it is indeed still possible that there is an “innocent” explanation. However, let me say that it is becoming increasingly hard to believe in such a version of events. I mean, are we to understand that it is merely coincidence that “technical” problems only affect one post, which post just happens to be on a topic previously affected by a moratorium on reporting?

      2. We now know that the deletion of comments on the IPKat thread was deliberate:
        http://ipkitten.blogspot.co.uk/2017/10/ipkat-comment-moderation-policy_25.html

        We are reminded that EPO-related comments on IPKat must follow strict rules. However, it is immensely disappointing (to say the least) no attempt was made to remove only those comments that transgressed the rules.

        As to whether it is correct for Merpel to assert that “The overwhelming majority of comments were purely libellous ad hominem attacks on a man that has not even taken office”, readers can judge for themselves:
        http://techrights.org/wp-content/uploads/2017/10/censored-by-ipkat.pdf

        By my count, a total of 3 (out of 34) comments could reasonably be characterised as referring to “the character, motive, or other attribute” of Mr Campinos. Of those, only two go in any way beyond mere mention of facts regarding his background… and, in any event, seem pretty mild by the standards of blog posts even in the civilised world of IP. So, not quite an “overwhelming majority” of problematic comments, then? Unless, of course, you believe that a 6% level of (mild) “opinion-based” comments qualifies as such.

        So, it seems that we are back to my initial comment – that strange things are indeed afoot in the world of (reporting on) the EPO.

  14. Dear Concerned Observer,

    you will have noticed by now that certain people are giving their best trying to influence or ‘guide’ public opinion on topics like the EPO or the UPC in a direction suiting their interest. It is no coincidence that minions of them have assumed (or have been installed in) key positions at key IP blogs. I would encourage any commentator to take a screenshot of his/her comment before submission and make it public should publication not occur within a reasonable time. The mere number of reported incidents would quickly show whether we are talking about technical glitches or something else.

    Our friends at the Ministry of Truth are fighting windmills!

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