In these days and times, we are constantly reminded how important and how endangered seemingly simple concepts are such as truth, facts, science and trust. Hannah Arendt, the famous Jewish German-born American political philosopher, wrote about seventy years ago in her first major work “The Origins of Totalitarism

The ideal subject of totalitarian rule is not the convinced Nazi or the convinced Communist, but people for whom the distinction between fact and fiction (i.e., the reality of experience) and the distinction between true and false (i.e., the standards of thought) no longer exist.

This is why lies from political leaders matter so much: constant lying tends to blur the boundaries between true and false. This is also why accountability based on the principles of an impersonal and impartial justice is so important.

Timothy Snyder, Professor of history at Yale University, and perhaps one of the most insightful and important political thinkers of our times, has neatly summarized it here:

Without trust, we can’t have the rule of law.

Thus, trust in our institutions and in particular trust in an independent judiciary is so fundamental. If we lose this trust, we are literally sawing off the branch all of us are sitting on.

Readers paying attention to the news around the globe will find it easy to think of manyfold examples confirming this simple truth, but as this blog is a patent blog, let us turn back our attention to a popular subject on this blog, the independence of the EPO’s Boards of Appeal, or the lack thereof as some critics claim.

While I have written about this subject a couple of times myself, I would today like to direct our readers’ esteemed attention to two papers of my UK colleague Mike Snodin that were recently published in the CIPA journal (I hope that this link works, just scroll down the page and click to see a full-screen version of the latest edition). Mike’s first article is titled: “G 3/19: A need to improve the perception of independence of the EPO Boards of Appeal?”, and the second “G 3/19: Do flaws in the EBA’s reasoning amplify concerns regarding the perception of independence of the EPO Boards of Appeal?”

So, Mike Snodin has reviewed decision G 3/19 and its background in considerable detail. He is fairly critical about the Enlarged Board’s reasoning on the whole, but the main point he makes is this: Fundamentally, G 3/19 was about the new Rule 28 EPC by which the Administrative Council (AC) “interpreted” Art 53b EPC in a particular way that essentially overturned the Enlarged Board’s opinion in G 2/12 and G 2/13. The referring Board 3.3.04 in T 1063/18 thought that the terms of Art 53b EPC, as understood by the Enlarged Board in its earlier decisions, prevail over any terms of the Implementing Regulations as amended by the AC. The EPO President and the Administrative Council, however, thought that this result cannot stand, and the EPO President offered a President’s referral of the case to the Enlarged Board. As Mike Snodin reports, “this proposal received broad and overwhelming support from almost all Contracting States.” The referral was therefore made, and resulted in the Enlarged Board essentially overturning its earlier decisions.

Before this background, Mike Snodin wonders whether the members of the Enlarged Board of Appeal were really free to come to any different decision than the one they arrived at. Concerns about the perception of independence of the Enlarged Board were raised based on two undeniable facts: (i) the Administrative Council has disciplinary authority over the members of the Enlarged Board to the extent that they are EPO employees, which most of them are. (ii) EBA members are appointed by the Administrative Council, but only for a five year period, and their re-appointment again depends on the AC’s consent and goodwill.

All of this is a consequence of the unfortunate construction of the European Patent Organization, which has been modeled as an supranational authority with diplomatic immunity, yet with a strong emphasis on its executive function and very tenuous checks and balances. In particular, the quasi-judicial function of the Boards of Appeal in patent disputes has received only little attention. Mike Snodin makes some suggestions at the end of his first paper how to improve the current situation, such as revisiting key proposals from 2004 (see AUTONOMY_BOA_CA_46_04_EN), which almost made it into the EPC but were then delayed and later shelved in the hope of a Community Patent Court soon to come. It will not surprise readers that I wholeheartedly support these proposals. Trust in our institutions and in particular in the independence of the judiciary, of which the EPO Boards of Appeal strive to be a part, is an essential cornerstone of our patent system.

With that, let us return to the bigger picture. As is well known, trust can be quickly destroyed but needs a long time and much effort to be built up. This is why attacks on the independence of the judiciary driven by an “us versus them” mentality or “enemies of the people” ideology are so misplaced and so dangerous. We should act against such ideologies with a firm and optimistic mind, e.g. by voting for politicians that help to build trust in institutions of civility, or – if you are a politician in power – by taking these elementary principles to heart and implement reforms that ascertain both judicial independence itself and the perception thereof. The European Patent Organisation is not the only institution where this would be highly desirable.


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9 comments

  1. Thank you, Thorsten. You quote Snyder: Without trust, we can’t have the Rule of Law. For we patent attorneys, the Rule of Law is precious, and we should fight for it. So how do we preserve trust?

    For we patent attorneys, trust in “science” is fundamental to our profession. From time to time, corporate interests try to erode trust in science. In our age of human-induced climate change, this is itself a disaster which has to be resisted. One way to resist is to flag up the work of Harvard Professor Naomi Oreskes (link below) and her current book “Why Trust Science”, to anybody willing to listen. Impressive, in the book, is how she solicits views from other academics and then replies to them. Judge for yourself how convincingly she sees off her academic rivals.

    Perhaps the name Oreskes seems familiar? That would be because of her earlier book from 10 years ago “Merchants of Doubt” about how self-professed “scientists” promulgated corporate views, that there is no connection between smoking and cancer.

    It is fashionable to deplore the USA. But Oreskes is at Harvard. I salute those who support her research there and wonder whether there is anybody outside the USA who is doing as much to nurture the idea that, at least in science and the law, fact should trump fiction, and that being selective with the facts, making economies with the truth (never mind promulgating an “alternative truth” debases us all and so is something deeply to be deplored.

    https://en.wikipedia.org/wiki/Naomi_Oreskes

  2. Thorsten – thank you for drawing attention to this issue.

    Ever since digesting the reasoning of the opinion in G 3/19, my thought has been: how will the EPO’s Administrative Council utilise the power handed to them to essentially force a “dynamic” reinterpretation of pretty much ANY Article of the EPC?

    G 3/19 makes it clear that the restrictions imposed upon the AC’s legislative powers under Article 33(1)(b) EPC do NOT constrain the AC’s powers to interpret a provision of the EPC. This leaves two important questions unanswered.

    Firstly, what are the precise conditions that need to be satisfied in order for a new Implementing Regulation to demonstrate a “new legislative intent” that is capable of overriding even a ruling of the Enlarged Board? The opinion in G 3/19 is very woolly on this point, and so I fear that the bar for the AC could well be quite low.

    Secondly, which Articles of the EPC might the AC decide to “interpret” by way of new Implementing Regulations? Clearly, the provisions governing exclusions from patentability are on the table. But what about other patentability provisions? Or the right to be heard under Article 113 EPC?

    I hope that I am wrong to worry, but G 3/19 certainly lays the groundwork for all of this to happen.

  3. Thanks to Thorsten and Max Drei for two excellent contributions.

    When reading the contributions, it reminded me of a joke from a representative I meet at a CEIPI conference a long time ago. What is the difference between a scientist and a lawyer? For a scientist the current flows or it does not flow. For a lawyer the current might flow or might not flow depending on the outcome you wish.

    That this is perfectly acceptable for a lawyer representing a party, it has deleterious effects when such a stance is adopted by a judge or even a panel of judges. That is exactly what happened in G 3/19!

    That scientists can also fake results is an acquired fact. Just think of Lomonossov under Stalin. How many people died as consequence of a “scientific” study which was anything but faked to please the dictator in place?

    If judges are selected in view of their support for some specific views on some societal topic, it is a denial of the independence of the judiciary. It might even pay out in the non-distant future in the US, but it is a clear attack under what is called democracy and separation of powers.

    The decision G 3/19 is, to put it mildly, a disgrace. When you see how the rapporteur twists and turns to arrive at the decision wished by the AC and the President of the EPO you can but be disgusted. The idea of the “dynamic interpretation” is really flabbergasting.

    The EBA had in the past a different attitude when it simply did not want to rubber stamp the President’s decision about the effective dismissal of a member of the boards having allegedly misbehaved and who was fired under disregard of the separation of powers.

    If the EBA would have had the guts of his predecessor he should simply have declared the referral as not admissible. This was what the vast majority of people involved in EPO matters expected.

    The cynical comment about “increasing the perception of independence of the boards” should have brought about an outcry in the profession. What did one hear from epi: an astounding silence!

    It is abundantly clear that the boards of appeal at the EPO are by no means independent. The Chairman of the BA can only exercise the powers transferred to him by the president of the EPO. On top of this he might propose a budget, but that budget will be presented to the AC within the overall budget of the EPO, and only the president has the power to present a budget to the AC. Art 12a refers directly to Art 10(2) and Art 46, so there is not even the perception of true independence. Under independence I understand something different.

    The idea of reappointment, but only if the member has shown a required performance, is just the cherry on the cake. And the criteria for reappointment are not even public! R 12d should be scrapped at once.

    One does not have been studying at university to realise that the Board are under direct influence of the executive. The situation will not be different at the UPC. And this is not good as exemplified by G 3/19.

    The only way to force the EPO to provide the boards of appeal the necessary independence can only come from outside. For instance from the German Federal Constitutional Court before which there are no less than four complaints about the lack of independence of the boards of appeal of the EPO.

    Should something like the UP and the UPC come to light, another push could come from Luxembourg. After all, an opposition before the EPO against a UP is an action touching an asset valid in the EU, and it would be surprising that the CJEU would not have an opinion on the matter.

    Hope dies last, but all the problems touched upon in the blog should be tackled in a pro-active way. And it does not seem to go that way. Ever heard of Art 4a EPC?

  4. This issue can obviously be resolved by letting the CJEU decide on these matters of legal interpretation. By making the EUIPO competent to grant EU patents.

  5. While the judiciary should be independent, I do not think that an appointment for life is the only or best option. Everyone who holds a public office of some importance should at least indirectly be answerable to the people. We do not accept presidents or chanclers for life for good reasons and we should also not accept judges for life – the difference between the offices is gradual only after all. An election by the admistrative council for 5 years terms and a guaranteed fallback to examiner status at the EPO for board members who do not get reelected could be a compromise.

  6. The problem of the 5 years contracts is not a problem typical for the boards of appeal of the EPO, but is valid nowadays for the whole EPO.

    In the past, an appointment to director or principal director was for a lifetime. Only members of the boards of appeal were appointed for renewable 5-year periods.

    I do not know where this different treatment came from, but it would be interesting to dig into the “Travaux Préparatoires” of the EPC 1973. Up to the penultimate president of the EPO, a member of the boards was always reappointed without any problem.

    In order to “increase the perception of independence” of the boards, the penultimate president pushed the AC to introduce R 12d making the reappointment of a member subject to a performance assessment, in other words subject to the quantity of files dealt with by a member. The deleterious atmosphere of DG1 has now found its way into the boards of appeal.

    It goes however further. The EPO management used the pretext of appointing board members for only five years as an excuse to first apply this rule to principal directors (PD): they are thus only appointed for five years.

    It made it possible to put PDs under heavy pressure, and one could observe these people being on tender hooks from 3 ½ years onwards.

    The rule of only 5 years appointments was then passed down to the director level. And then mega-directorates were created by the penultimate VP1. Whilst the Interim Committee preceding the opening of the EPO decided on 12 examiners/director, they are now responsible for several tens of examiners and “Team Leaders” were introduced, and the 5-years policy went a step further down. Team leaders do the job of a director, but they stay examiners.

    The 5 year rule presently applies also to examiners. A newly recruited examiner only gets a renewable 5 years year contract to start with. A lifetime appointment as examiner is only possible after the successful achievement of a second 5 years period. But any step further up in the hierarchy is only available with renewable 5 years contracts.

    Senior management has thus managed to put pressure on the entire workforce of the EPO. Anyone who doesn’t keep up with the allotted objectives or becomes unruly in the view of the management will be fired, unless he belongs to the illustrious circle of favourites and mignons, but those people are always excellent performers……

    The problem of true independence is therefore not just a problem of the boards of appeal but one that permeates the whole EPO.

    And this has deleterious consequences. These are of course worst and most obvious in the boards, but the problem also applies to the rest of the EPO.

    As far as the examiners are concerned, it is very simple: if you don’t achieve the allotted target, you are incompetent and will be fired. In the past, you could only be fired after a disciplinary procedure.

    Under the penultimate president Staff Regulations were amended so that in the event of “professional incompetence”, no disciplinary procedure is necessary to be fired. This has also significantly reduced the possibility to complain internally or to the Administrative Tribunal of the ILO. Being a discretionary decision, the power of revision of the ILO tribunal is very limited and the latter will only intervene when there has been a blatant abuse of power.

    The boards of appeal only represent the tip of the iceberg when it comes to independence, but the boards are by no means the only place where the independence of the EPO’s staff is in question. According to the penultimate president all those measures had a more than positive effect on quality! Who dares dispute this view? If you do, you get fired like in a well know US TV reality show.

    Senior management behaves like 19th century employers, and that is not acceptable in the 21th century. And on top of it senior management has no responsibility and systematically refers to its immunity. But immunity is not impunity. The AC has been gullible for all those changes and it continues on this path with the present president. The tail is indeed wagging the dog. One wonders why?

  7. Dear Attentive Observer,
    I agree with your concern that the appointment of BOA members should not be based on their supposed personal views on politically charged issues. I have comments though on the divide between technical and legal judges or BOA members. Court judges and BOA members are supposed to make decisions independently from the wishes of the executive (government or EPO management or AC), ie they must not be result-oriented in a political sense. At the same time, they should take into account the purpose of the rule in their interpretations, which is different. And also pay attention to other aspects of prime significance to all stakeholders : the consistency and predictability of the jurisprudence, the clarity of the reasoning and of the conclusions.
    As to technical judges or BOA members, I find the metaphor of the current flow simplistic. A cornerstone of the BOA jurisprudence and EPO doctrines is the reliance on the technical character. Following the current flow metaphor, it should be simple to decide whether something is technical or not. This could look simple indeed in the 70’s. However, this word has never been defined and the EBA has stated that it did not feel compelled to provide a specific definition, given the evolutions of technology and of their fields of application. As a matter of fact, a BOA decision acknowledged this was a grey area. The reliance on such a fuzzy notion leads to overly complex reasoning in CII cases grappling with the entanglement between supposedly technical and non-technical aspects, and the definition of a divided skilled person comprising a business person and a technical person, only creating unnecessary uncertainties.

  8. @ Reta

    In spite of its name, the EUIPO is mainly dealing with trademarks. Where the work force able to deal with patents should come within the EUIPO? That a UP is a patent granted by the EPO should not be forgotten.

    One of the reasons for creating the UPC is that its promoters wanted to keep the influence of the CJEU a small as possible. Completely doing without was not possible, so that the UPC foresees the possibility to file requests for preliminary rulings to the CJEU, Art 21 UPCA.

    @ Peter Parker

    If I am not mistaken, even in the USA the members of the judiciary, not the prosecutors, are appointed for life time. Could you please cite one country, beside autocratic regimes, in which appointments to the judiciary is not for life time?

    In an interesting decision of March 2018, the German Constitutional Court decided that judges might be appointed for a given length of time, but under two strict conditions:
    1) They have to be civil servants appointed for life time;
    2) The can only be appointed once.

    Even the members of the CJEU are originally judges in the various contracting states and are appointed lifetime, so when they period ends, they go back as national judges.

    That we do not accept chancellors or presidents for life time is for a different reason, as otherwise they would end up as dictators or autocrats. It is not to guarantee their independence, whereas the latter is a necessary condition for a judge. The difference between the offices is more than gradual, unless you confuse the issues and ignore what is called separation of powers.

    In democratic societies, judges are not free to do as they like, but they are controlled by their peers. And the system works, even if it not always perfect. In principle the executive cannot and should not interfere in those proceedings, be it only to respect the separation of powers.

    That quite few EPO examiners are technical members is correct, but there is (or was) also an input from the profession. Those people have applied for a job as member of the boards, and not for a job as examiner. A guaranteed fall-back to examiner status is thus not even possible.

    The member dismissed for alleged misconduct has been reintegrated as examiner and immediately transferred to The Hague “in the interest of the Office”. So any former examiner becoming member of the boards knows the sanction should he misbehave or not show the expected performance.

    The same applies to legal members of the boards. While some come from inside the EPO, and mainly from DG5, lots of them come from outside, being lawyers specialised in IP or even national judges. They have also not applied for a job as lawyer at the EPO. For those people a guaranteed fall-back to lawyer status at the EPO is thus not even possible.

    What you consider as a compromise is thus not even legally foreseen and only obfuscates the problem of lack of independence.

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