Not much time for blogging today, but yet another referral to the Enlarged Board may deserve our attention. TBA 3.5.03 referred the following questions to the Enlarged Board, of which question 3 may have the greatest Impact:

1. Ist im Beschwerdeverfahren das Recht auf Durchführung einer mündlichen Verhandlung gemäß Artikel 116 EPÜ eingeschränkt, wenn die Beschwerde auf den ersten Blick unzulässig ist?

2. Wenn die Antwort auf Frage 1 ja ist, ist eine Beschwerde gegen den Patenterteilungsbeschluss in diesem Sinne auf den ersten Blick unzulässig, die ein Dritter im Sinne von Artikel 115 EPÜ eingelegt und damit gerechtfertigt hat, dass im Rahmen des EPÜ kein alternativer Rechtsbehelf gegen eine Entscheidung der Prüfungsabteilung gegeben ist, seine Einwendungen betreffend die angebliche Verletzung von Artikel 84 EPÜ nicht zu berücksichtigen?

3. Wenn die Antwort auf eine der ersten beiden Fragen nein ist, kann die Kammer ohne Verletzung von Artikel 116 EPÜ die mündliche Verhandlung in Haar durchführen, wenn die Beschwerdeführerin diesen Standort als nicht EPÜ-konform gerügt und eine Verlegung der Verhandlung nach München beantragt hat?

In English:

(1) In appeal proceedings, is the right to an oral hearing under Article 116 EPC restricted if the appeal is prima facie inadmissible?

(2) If the answer to Question 1 is in the affirmative, is an appeal against the decision granting a patent prima facie inadmissible in this sense, which Appeal has been filed by a third party within the meaning of Article 115 EPC and which has been substantiated by arguing that there is no alternative remedy under the EPC against a decision of the Examining Division not to take into account the third party’s objections concerning the alleged violation of Article 84 EPC?

(3) If the answer to one of the first two questions is no, can the Board hold oral proceedings in Haar without violating Article 116 EPC, if the appellant complains that this location is not in conformity with the EPC and requests that the oral proceedings be moved to Munich?

In the Board’s view, a referral of the question of the right venue of the oral proceedings (Referral Question 3) to the Enlarged Board of Appeal appears necessary according to Article 112 (1)a) EPC, since the question is of fundamental importance for a large number of appeal proceedings, answering it serves to ensure a uniform application of the law, and the Board considers that a decision on this matter is necessary.

The deciding Board placed much reliance on earlier decisions T 1012/03 and T 689/05, according to which the right to be heard in oral proceedings includes, as a subset of the right to be heard, not only the right to be heard at all, but also the right to be able to present the arguments in the right venue. The right venue is not automatically the seat of the European Patent Organisation referred to in Article 6 (1) EPC, but regularly the venue referred to in Article 6(2) EPC, at which the department responsible for the proceedings within the meaning of Article 15 EPC of the European Patent Convention is located, provided that the venue of the department must be compatible with the European Patent Convention. (T 1012/03, reasons no. 41 et seq.; T 689/05, Reasons no. 5.3).

In the referrings Board’s view, the decision on the question will essentially depend on whether the President of the European Patent Office or the Administrative Council of the European Patent Organization, who empowered the President to rent the new office building and thus approved the relocation of the Boards of Appeal in the municipality of Haar, either had the power to relocate departments of the Office within the meaning of Article 15 EPC also outside the locations mentioned in the EPC (Art 6(2)) including the Centralisation Protocol (Section I(3)a)), or whether Article 6(2) of the EPC is to be interpreted as meaning that “Munich” is not the city of that name, but rather the greater Munich area. The referring Board clearly favours a strict Interpretation of “Munich”.

The Board added that it is unaware of the exact reasoning, by which the President in 2016 expressed the view that a relocation of the Boards of Appeal in a place outside Munich’s city limits are in accordance with the EPC; it has therefore not yet formed an own final opinion on this question, but apparently found it sufficiently debatable and relevant so as to refer it to the Enlarged Board.

In my own view, this is quite an interesting and remarkable development. I have always queried why the Boards had to move out of the Isar building at all and never believed the official excuse that this might help to increase the appearance of the Boards’ independence. Anyway, the hearing rooms are still there, but do not seem to be used much. Will the Boards return one day? Stay tuned!


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15 comments

  1. As far as staff regulations of the EPO are concerned, staff members ought to reside at their place of duty. Haar used to be among a list of towns around Munich in which staff member may reside without infringing their duty of residence in Munich at large. A similar list of towns used to exist for The Hague, Berlin or Vienna.

    And here we come again to the topic of the independence of the Boards of Appeal.

    There are ways to look at the way there is a lack of independence:

    1) Members of the BA are primarily staff member of the EPO. In spite of being appointed by the AC, members of the BA remain under the authority of the President in administrative matters. It is because the then president of the EPO considered that he has administrative authority over any staff member of the EPO, be it a member of the BA, that he barred a member of the latter from entering the premises of the EPO, be it in Haar, Munich or anywhere. The separation of powers was the last of his worries, but it is something that he ought to have respected.

    2) Transfer of the BA to Haar. With this mind set it cannot be a surprise that he decided as a retaliation measure to ban the BA outside the main building and to send them in exile to Haar. The AC was his diligent helper. It is a summit of cynicism to claim that this move was there to increase the appearance of the Boards’ independence.
    It is here that the new referral finds its place. In the past there was talk to send the BA to various places outside Munich, e.g. Warsaw, but the EPC did not appear to provide for the necessary legal basis. A town outside Munich is prima facie also outside any legal basis, as explained by the referring BA.

    3) The structure of the BA and their budget. The President of the BA is appointed by the AC on a joint proposal made by the BAC and the president of the EPO. So the president will never agree to forward a candidature he disapproves. The President of the BA manages the BA and, to this end, have the necessary functions and powers delegated to him by the president of the European Patent Office. What if the president removes the delegation of powers?
    That the president of the EPO will provide the President of the BA with the necessary resources, as set out in the adopted budget is non-committing. What if the president of the EPO is of the opinion that the budget requested by the President of the BA does not have the approval of the president of the EPO.

    We seem to have arrived at a similar situation as that preceding the separation of the Federal Patent Court from the German Patent Office. But history never repeats itself…..

    All those points and the latest referral show that it is high time that the BA should be considered as a completely autonomous judicial body with a clear distinction between the EPO as such and the BA. The system worked fine as long as no president of the EPO put his nose into the business of the BA. The outcome of all this might not be the legacy the former head of the EPO wanted to leave to history, and it would be good so.

    Independently of the present referral, it is high time to call a conference of ministers as foreseen in Art 4a in preparation of a diplomatic conference in order to separate the BA from the EPO. There has been in the past a proposal of separation between the BA and the EPO, but it was not accepted by the AC and the member states. It is however not too late to act!

    Techrights: FINGERS OFF!! Directly or indirectly

  2. The only manner to make the Boards of Appeal independent of the EPO, would be to delete Art. 15(f) and (g) EPC and insert them into Art. 6(2) EPC, which will then read as follows:

    The organs of the Organisation shall be:
    (a) the European Patent Office;
    (b) the Boards of Appeal and the Enlarged Board of Appeal;
    (c) the Administrative Council.
    This amendment requires a Revision Conference, because this falls outside the competence given to the Administrative Council enshrined in Art. 33(1)(b) EPC.

    Note that if Art. 6(2) EPC were amended in the proposed manner, many articles and Rules should be rephrased, because the wording “European Patent Office” which now refers to the departments of the first as well as the second instance, would no longer be correct.

  3. As A friend of the EPO noted we seem to have arrived at a similar situation as that preceding the separation of the Federal Patent Court from the German Patent Office – my understanding is this happened after a case in 1959 of the Bundesverwaltungsgericht (Federal Supreme Court for Administrative Matters) that neither the German Patent Office nor its Senat qualified as an independent court under Article 19(4) of the Grundgesetz (German Basic Law) which provides that a person who’s rights are infringed by an act of the public authorities is entitled to redress before an independent court.

    As Cees Mulder noted, the Boards of Appeal as a body is not independent of the EPO.

    Given the Dr. Stjerna’s constitutional complaint before the Bundesverfassungsgericht (BVerfG) I’ve two questions:

    i) As I’m based in Ireland, I can’t find anything more than very a brief reference to the 1959 case on the internet – does anyone have more detail on this case and its aftermath? I’m particularly interested in what happened between 1959 and 1961, after the German Patent Office was found not to be independent and before the German Federal Patent Court came into existence.

    ii) What happens if the BVerG finds that Broads of Appeal of the EPO are not independent? I have no knowledge of German constitutional law – is it possible for German law to tolerate a conflict with the EPC until it is resolved (using the excellent fix suggested by Cees Mulder) or does Germany fall out of the EPC system?

    1. Answer to Richard Gillespie’s question i):
      As a consequence of the decision of the Bundesverwaltungsgericht in 1959, decisions of the German Patent Office became subject to an appeal to the 3-level administrative jurisdiction (Verwaltungsgericht München, Bayerischer Verwaltungsgerichtshof, Bundesverwaltungsgericht). In order to resolve the problem, the German Constitution had to be amended for creating the Bundespatentgericht in 1961 as a special court for patent matters, inter alia for appeals against decisions of the German Patent Office. Details of this history may be found in several contributions in “50 Jahre Bundespatentgericht” (Bender et al. ed., Carl Heymanns, Cologne 2011).
      This above scenario might also suggest an answer to question ii). This would be a horror scenario for the European patent system for which those would be responsible who failed to pursue the plan to create independent Boards of Appeal, a plan mainly designed by members of the Boards and laid down in doc. CA/46/04 which was discussed in the Administrative Council in 2004 without substantive objections but it failed to be put on the agenda again. Eventually the EPO removed the document from the archive on its website. In its structural reform of the Boards of Appeal designed by the administration not by the Boards, the EPO dealt with the perception of independence not with its substance.

  4. Apart from the issue of location and independence, I like the objection from appellant that Art. 84 issues cannot be raised in oppositions by a third-party. There is indeed an imbalance, and while I think it is impractical to open decisions to grant for everyone to appeal, potentially Art 100 should be amended.

  5. Another question: technically speaking, should not all ORAL proceedings before the Boards of Appeal (in Haar) be postponed until the EBA provides its ruling on the question of whether the EPC permits oral proceedings to be held in Haar?

    1. The information I have is that there will be no general suspension. Of course, if one of the parties queries whether the BoA is authorized to conduct a hearing in a particular case in Haar, I would imagine that the case would have to be stayed.

  6. Dr. Stjerna’s constitutional complaint before the Bundesverfassungsgericht (BVerfG) relates to the UPC and not to the Boards of Appeal of the EPO.

    There are however four cases pending before the BVerfG which relate to the independence of the Boards of Appeal of the EPO.

    Dr. Stjerna’s constitutional complaint comes after the cases relating to the EPO.

    All those cases are pending before the 2d Chamber of the BVerfG, and have the same rapporteur.

    A UP is a patent granted by the EPO, which validity can be the subject of opposition proceedings before the EPO, all decisions of Examining or Opposition Divisions being appealable before the Boards of Appeal of the EPO.

    It appears thus logical that the complaints against the independence of the Boards are dealt with before the one relating to the UPC. Should the Boards be considered not independent, then a decision can be taken upon the UPC, but the entry in force of the UPC would be delayed until the problems of the Boards are correctly dealt with.

    This is a worst case scenario, and nobody knows whether it will become real or not, but it might be better to be prepared for it.

    The whole topic has a big political implication, and the judges might be frightened to blow up the EPO as well as the UPC.

    What complicates the matter is that the 2d Chamber BVerfG has decided in March 2018 (2 BvR 780/16) that judges can be designated for a given length of time, under two conditions. Firstly they have to be civil servants for life. Secondly, they cannot be reappointed.

    When one realises that the members of the Boards and the judges at the UPC are appointed for a given period and may be reappointed, one can imagine further problems. The question was raised within the German judicial system, but the criterion applicable in order to guarantee the independence of judges apply as well at international level.

    Judges of the CJEU are all national judges and hence the problem of their independence seems a priori guaranteed, even if they are appointed for a term of 6 years which can be renewed.

    Not all judges at the Boards of Appeal nor at the UPC are national judges detached to a supranational court, and here lies a good part of the problem.

    This is the more so, since the members of the Boards may presently only be reappointed if they show an acceptable performance during their term. Nobody knows what performance is required and how it is measured. Do you call this independence? I do not.

    A UPC judge can be removed from Office by decision of the Presidium of the UPC, but I have not yet seen any way of redress offered to such a demoted judge. Same question: do you call this independence? I do not.

    The question of the appointment and renewal of it are thus very critical when it comes to the independence of the courts, and it is to be hoped that the BVerG will have a serious look at this matter.

    A stay of procedure is not a priori necessary if all Oral Proceedings before the Boards are held in the Isar building until a decision is taken by the Enlarged Board.

    I like Cees Mulder’s suggestion, but I fear the AC will never have the guts for even calling a diplomatic conference on this point.

    Techrights: FINGERS OFF!! Directly or indirectly

  7. Not only the OP rooms in the Isar building are empty but also half of the Part 7 of the Pschorrhöfe.
    Thus, it would make sense to move the boards back to Munich.

    However, Haar has been chosen on purpose to remind the board members that they would pay the consequences of unwelcome decisions. So I expect the reminder to work and the members of the Enlarged Board to take the right (for the management decision) , confirming the lawfulness of the relocation to Haar.

  8. Once upon a time
    When there still was something like truth
    And facts that were to be respected
    An objective onlooker would have seen
    What a stupid move it was
    To bring the boards to Haar.

    But that time is long gone.
    What counts today
    Is who calls the shots
    And how we can spin whatever we decide.
    Who cares about facts
    And what would have been right?

  9. Let us not forget that non-compliance with the EPC may not be limited to (the location of) the Boards of Appeal. This is because the legacy of the immediate past-President includes the baffling decision to adopt the COOs proposed in CA/65/17.

    The decision to appoint the COOs is baffling because it arguably contravenes the organisational structure mandated by Article 11 EPC, which stipulates that those in charge of search and examination Directorates must by appointed by the AC (Article 11(2), together with Rule 9(2)) and must be answerable for disciplinary matters only to the AC (Article 11(4)).

    Thus, transfer to the COOs of management responsibilities previously allocated to VP1 or VP2 has at least partially eliminated an element of organisational independence mandated by Article 11 EPC.

    Does this mean that we can, in due course, expect parties to fist instance proceedings before the EPO to allege that an ED or OD decision is null and void because it was taken by a body not constituted in accordance with the EPC?

  10. Let’s all keep reasonable. We should not try to contest everything, and try not to make life more difficult as it already is.

    Concerned Observer is right, the appointment of the COOs is ultra vires. When the EPO was created, there were 5 VPs. The post of VP3 was transformed in the post of President of the Boards of Appeal, but the independence of the Boards has not progressed one iota. The post of VP2 has been simply suppressed by decision of mufti. How could the AC accept this? The AC did not have the guts to say no. But now it will have to deal with the problems.

    Thanks to the Convention Watchdog for explaining the situation which led to the creation of the BPatG. The project about the separation of the BA from the EPO was also mentioned in the famous conference of Dr Bross at the MPI, The former member of DG5 who brought it up regretted that an occasion was missed.

    It interesting to note that no official representative did appear at this meeting, in spite of having been invited to do so. It is not by ignoring facts that the situation improves or the problems are resolved in a positive way. We can see this nearly ever day across the Atlantic!

    The legacy of the former president is a poisonous one, and all but his minions, will agree on this. Some of his minions have already.been pushed aside, but as long as the new president will leave in place the famous head of HR, he will never gain the confidence of staff! What is he waiting for?

    It will take ages, if at all possible, to get read of this poisonous legacy. In spite of the self-glorification showed at the end of his term, the quality is going down the drain. No wonder, when examiners are simply transformed in production machines and are required to churn out as much files as possible.

    Techrights: FINGERS OFF!! Directly or indirectly

    1. The status of the Boards of Appeal, is a politically sensitive topic. It was just logical for Thorsten to focus his comments on this subject and for readers to follow suit.
      But question 2 also deserves attention. II relates to the standing of a third party having filed observations under Article 115 EPC to appeal a decision of the Examining Division not to take account of the observations. The answer seems obvious : a third party having filed observations under Article 115 EPC is not a party to proceedings and should have no standing to appeal. However, the issue is relevant to the balance between applicants and third parties and is thus significant from a policy standpoint for the EPO and for users in a third party position confronted with the choice between Article 115 observations and opposition.

  11. @Friend

    I agree that one should not contest everything … at least in the sense that it is important to focus on what really matters. However, there is an important point underlying my comments about the appointment of COOs in contravention of the EPC. This point is perhaps best expressed by the Manic Street Preachers: “If you tolerate this then your children will be next”. In other words, if one does not challenge an ultra vires action of the EPO’s executive that removes an (important) element of independence mandated by the EPC, then what is to stop an emboldened executive from breaching the EPC in ever more intolerable ways?

    For reasons that are hard for outsiders to understand, the AC appears to have largely abdicated its responsibility for ensuring that the EPO’s executive does not take (or is forced to rescind) unlawful actions. I believe that this kind of situation is generally described as “regulatory capture”. Unless this situation is nipped in the bud (eg by applicants and the Boards of Appeal stepping in to remind the AC and the executive that breaches of the EPC come with consequences), this does not bode well for anyone outside of the circle of those having access to / control of the not insignificant funds at the EPO’s disposal.

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