The European Patent Office has invited its users and stakeholders to take position on the first draft of its „Towards a new normal“ orientation document.

My experience with such public consultations in the recent past has not been particularly encouraging. It seems to me that outside views are simply collected and then moved into a more or less inaccessible folder somewhere in the EPO’s infamous „complex IT systems with its ‚spaghetti structure‘“ consisting inter alia of an „outdated and unreliable data centre in The Hague“ and a PHOENIX Image Archive mainframe that apparently recently „died“. RIP. Perhaps you may think this must clearly be an exaggeration by this blogger. However, as it happens, reality beats fantasy: Just listen to the very same Senior EPO Insiders one more time, who recently summarized the state of their IT system in the following words:

“The shock came when we started to look inside the machinery. It is scary when the technology you have in front of you is from a time when you were still in school, and the people who can help you have long since retired.”

There we are. So when it comes to public consultations, there is apparently bigger fish to fry than the processing of outside opinions on Rules of Procedure of the Boards of Appeal, Oral Proceedings by Videoconference and other stuff. The results of such consultations usually never see the light of the day again, and their impact, if any, is negligible at best. So, for what it’s worth, I will summarize a few thoughts on the EPO’s New Normal in the following, rather than sending them to the EPO via the official one-way-street channel. Of course, the EPO’s consultation officials are very much welcome to read and consider the following together with any comments that other readers of this blog will hopefully add.

What will the EPO’s “New Normal” look like?

If only I knew. In my humble opinion, the EPO’s draft leaves more questions open than it answers. The language used throughout this document is woolly at best, occasionally suspiciously close to the language used in the infamous communications of the Ministry of Truth in Orwell’s 1984. If communication is meant to be “the act of developing meaning among entities or groups through the use of sufficiently mutually understood signs, symbols, and semiotic conventions” (Wikipedia), I would give this document a 2 of 10 max. But perhaps the development of “meaning” was not in the first place what was intended. Having said that, there are at least a few trends that deserve closer consideration.

Extended Teleworking Scheme

The EPO’s planned “New Normal” seems to provide a (much?) extended teleworking scheme. It was presented as a reflection of the results of a staff consultation wherein many allegedly expressed a preference for teleworking, at least to some extent. However, without knowing the precise questions put to staff it is of course difficult to draw sound conclusions from the results of such a consultation. For example, were the questions just limited to “are you in favour of more/less teleworking in general?”, or was a price tag attached to it, e.g. “would you accept a lower salary when teleworking from your home country where the costs of living are lower than in Munich/The Hague?” – I may be wrong, but I would not be surprised if the answers were considerably different when staff are confronted with the full consequences of an extended teleworking scheme, at least if this extended scheme is supposed to have a significant impact on the EPO’s future building policy and if this policy is to be based – as it seems to be the case – on “the fact that an estimated 50% of staff on average may be on site on any given day.” Only 50%? And is this a “fact” or just an “estimate”, “assumption” or even “target”? In any case, if this will be the new normal, many staff will probably have to say farewell to their own office space and will have to live with open plan offices.

I am also a bit worried about the consequences of a much extended teleworking scheme on the functioning of the examining and opposition divisions in the future. At least in my mind, which is probably a bit on the idealistic side, these divisions were originally supposed to sit together and thoroughly discuss the case before them until they have reached the best possible result. In view of the EPO’s declared top priority, i.e. quality, this would make a lot of sense to me but it requires that the members of these divisions have the necessary time and opportunity for a thorough discussion. If they are not sitting in the same location, there is a high likelihood that such discussions will be cut short, will be made even more subject to a strict time budget, and that any informal conversation about critical questions of a case will no longer take place, or will at least be reduced in frequency and intensity. I cannot imagine that extended teleworking will be good for the quality of the decision process of a panel. The ultimate outcome of the decision will depend even more than ever on the quality of the preparation of the case by the first examiner. Which raises the question why the EPO has “Examining Divisions” at all, rather than just individual examiners who grant patents or refuse applications. If the underlying rationale of an Examining Division is that three pairs of eyes see more than one, then the other two pairs of eyes should be given the necessary time for a thorough review of the case and the opportunity of an open and thorough discussion within the panel, which cannot always be organised in terms of the usual 0.5 or 1 hour intervals of a Video Conference. Mixing members of an ED or OD from different locations is no good idea and has never been one.

Conversely, I can see a case for more teleworking during the “quiet time” that examiners need in order to read documents, conduct a search and/or write a decision or communication. The challenge for the EPO management will be to find an intelligent mix of teleworking and working in the office that also takes the individual situations and preferences of staff into consideration. Not everybody has a quiet place at home from which high-quality teleworking is possible. I hope that staff representatives will be fully included and involved in this important discussion.

Another aspect of an extended teleworking scheme is its compatibility with Art. 6(2) EPC.

The European Patent Office shall be located in Munich. It shall have a branch at The Hague.

When the EPO is “virtualized” and physically emasculated to a degree of (more than?) 50%, will the residual EPO still be “located” in Munich/The Hague? Debatable, but at least one thing is clear: the EPO’s New Normal also has legal and political implications for the European Patent Organisation’s member states.

Looking at the EPO’s planned New Normal from a user’s perspective, a similar point arises. In my view, users of the European Patent Organisation’s services can legitimately expect that the European Patent Office’s departments will not perform acts at whatever other place they choose – the acts must be performed in Munich (including Haar), The Hague, Berlin or any other location where the EPO has an approved branch office. This follows from the principle of legitimate expectations. Just as an aside, this is not only my opinion. I have happily borrowed this sentence from the Enlarged Board of Appeal (G 2/19, last paragraph of the reasons). Delocalizing examining and opposition divisions and their decision processes does not seem to me to be in compliance of this EBA decision.

Oral Proceedings by ViCo

This blog is already long enough, so let me only make two brief points:

First, a point of procedure. Readers are of course welcome to submit their comments on the New Normal to the EPO by the deadline of 16 April 2021. However, it will probably more effective and impactful to voice your views on this particular subject by way of an Amicus Curiae brief to the Enlarged Board of Appeal in case G 1/21, where the following referral question will (hopefully) be discussed and answered:

Is the conduct of oral proceedings in the form of a videoconference compatible with the right to oral proceedings as enshrined in Article 116(1) EPC if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference?

The Enlarged Board of Appel will accept comments by April 27, 2021 according to this note.

Second, on the merits, I firmly oppose the conduct of oral proceedings by ViCo against the will of a party to the proceedings. Where all parties request or are at least happy with Oral Proceedings by Videoconference (and yes, there can be good arguments for that, e.g. efficiency, saving time and resources etc.), nothing speaks against using this option or even “hybrid” proceedings. Volenti non fit iniuria. However, I do not think that Oral Proceedings by ViCo should be the “New Normal”. They can be a further valuable option for the parties of the proceedings, if so requested, but parties should not be forced to use this option in the absence of absolutely compelling reasons (such as a pandemic). The default and “new normal” when the pandemic is over, should be he good old normal, i.e. classic oral proceedings in person. In my opinion, parties to the proceedings have a fundamental procedural right to appear in person in public oral proceedings before the deciding body, if they so wish.

If you were to share this opinion, you would find yourself in excellent company. VESPA, the Federation of European and Swiss Patent Attorneys, have already filed their Amicus brief, available here and I have heard that Siemens AG and epi are about to file at least one as well. Have your say!

Conclusion

So it seems the EPO are planning a significant overhaul of the old normal and whilst I welcome change if fair and well implemented, it appears this will not be the case in many of the New Normal plans. Another example of this in the EPO’s move towards a more digital world is the recent e-EQE. Yes, some candidates in the pre-pandemic era had requested that the EQE be conducted on computer, but I do not believe it was their wish that the EQE be conducted through a program on the brink of collapse and where the exam papers (seemingly) had not been adapted at all to the new format. When EQE candidates have to spend a considerable part of their scarce exam time for scrolling up and down documents because the EQE program does not allow for a split screen but neither were they allowed to print out most of the exam materials, such an exam does not make candidates “fit for practice”, but at best nervous and at worst desperate. Fortunately, as reported on IPKat, it seems that at least epi has understood that the current exam format has its deficiencies. This is a good start, but as always, care must be taken for the detail when implementing changes to a running system. On the whole, when drawing up plans for a New Normal, perhaps the EPO should carefully consider the impact of such changes and if the totality of such changes are really what people have asked for.


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12 comments

  1. The move to the EPO’s preferred “New Normal” would have profound budgetary implications. In particular, the EPO would make significant savings on at least building costs.

    But will such savings lead to a cessation of the EPO’s attempts to plead (future) poverty based upon questionable budgetary forecasts, or even to passing on of at least some of the savings to the EPO’s staff and/or users? Or will those savings instead be distributed to senior management and the member states (at the same time as imagined, future shortfalls are used as an excuse to further drive down staff benefits and to pursue yet more “efficiency” savings)?

    If history is any guide, then I think that we can all guess which option will be selected by EPO management and the AC.

  2. Since Haar is not Munich and Rijswijk is not The Hague, Art. 6(2) EPC seems to be rather free of interpretation

  3. “I welcome change if fair and well implemented” makes me wonder: when was ever change fair and well implemented by EPO management?
    Rethorical questions aside, some interesting points here, Thorsten.
    Being an ex-examiner, I was trained years ago by old-school examiners. Most of whom I still hold in rather high regards. The strength of the training both then and later-on was the possibility to discuss. Endlessly. Being sent from one experienced colleague to the next, with your latest case to collect different opinions. Somehow, I’m sceptical that this happens in a fully digital setting. So I think that the fear for the fuctioning of the Examining Divisions can easily be extended to the fear for the type of training that is offered to new examiners.

    1. There are many reasons to be worried about a shift from face to face case discussions to Zoom meetings between the 3 members of an ED or an OD or a TBA. Suppose one is facing a jail sentence in a trial by jury. If the jury members were each a hundred miles from each other, out of sight of each other, and communicating with each other only by ViCo, as and when they please, would you have confidence in the jury’s deliberations?

      Then there’s the training aspect. One can read books in preparation to pass a written examination but it is my experience that one is more likely to pass if one’s training includes face to face discussions with trainers, and the “tutorials” that are the foundation stone of Oxford and Cambridge undergraduate teaching, and of the UK Chartered Patent Attorney training system.

      Then there is the academic theory of Kahneman’s “Thinking Fast, Thinking Slow” and Haidt’s “Righteous Mind” which informs us that the dangers of a rogue decision are best avoided by flanking the case manager mind with two other minds equally engaged with the case, who can nudge the decision maker back on to a rational and reasonable path of analysis of the facts and the law.

      The EPO seems to be squandering its high reputation for professional competence, with the determination of its management to do “whatever it takes” to drive down overhead costs, year on year, regardless. I regret it and so would the public if it could understand what is going on.

      1. The EPO […], with the determination of its management to do “whatever it takes” to drive down overhead costs,

        Weird, I always thought production costs are not “overhead”, but management and other company costs are.
        In that regard, costs are pushed up and up with the hiring of more and more “managers” and external consultants.

  4. “Outside views are simply collected and then moved into a more or less inaccessible folder somewhere in the EPO’s infamous „complex IT systems with its ‚spaghetti structure‘“ consisting inter alia of an „outdated and unreliable data centre in The Hague“ and a PHOENIX Image Archive mainframe that apparently recently „died“.”

    This reminds me of something…

    “But Mr Dent, the plans have been available in the local planning office for the last nine months.”
    “Oh yes, well as soon as I heard I went straight round to see them, yesterday afternoon. You hadn’t exactly gone out of your way to call attention to them, had you? I mean, like actually telling anybody or anything.”
    “But the plans were on display …”
    “On display? I eventually had to go down to the cellar to find them.”
    “That’s the display department.”
    “With a flashlight.”
    “Ah, well the lights had probably gone.”
    “So had the stairs.”
    “But look, you found the notice didn’t you?”
    “Yes,” said Arthur, “yes I did. It was on display in the bottom of a locked filing cabinet stuck in a disused lavatory with a sign on the door saying ‘Beware of the Leopard’.”

  5. There is one thing which has to be acknowledged with the present EPO management: a dep sense of opportunity.

    One wonders what would have been possible at the EPO in matters of “New Normal” without the pandemic. Probably open space offices for examiners and some stupidities of the same kind. The pandemic allows even to get read of open space offices!

    What is actually proposed is a totally new EPO/EPC. What is also apparent is that the management and leading members of the boards of appeal are fully supporting the president’s move.

    I wonder what is more scandalous, the cheek of the president and its minions or the total lack of scruples of those meant to be the guardians of the EPC and interpreting it according its letter and spirit. In view of the recent “dynamic interpretation”, I rather see the culprits with the board’s management and leading members. If they would not give their blessing to the ideas of the EPO’s management, the “New Normal” would not have the slightest chance to come to light.

    I find it therefore more important to send amicus curiae briefs in G 1/21 than to comment on the “New Normal”. The whole “consultation” on the “New Normal” is simply farcical. By experience we know too well that any “consultation” of the users has merely an alibi function. Like for every preceding pilot, e.g. BEST, the decision is already taken and the “consultation” just a kind of Vaseline to make swallowing of the acquired decisions less painful.

    That modern communication and work techniques should make their entry in the EPO is not at stake, but the massive changes which are envisaged at the EPO and at the boards lacks even the perception of a legal basis. The changes envisaged are all based on very specious interpretations of the EPC and even in clear contradiction with it, for example the total dematerialisation of the office, as staff presence in Munich or in The Hague would become purely fictional.

    By completely disregarding the EPC and its protocol on staff complement the management of the EPO takes the risk of a brisk reaction from the member states hosting the EPO and its branches. Let’s hope they react in time.

    Neither the president, the management of the boards nor the administrative council have even an ounce of legitimacy to decide upon the changes they want to introduce. If such deep changes have to be introduced they have to be the result of a Diplomatic Conference and not left to pseudo-managers which seem to consider the EPO and its boards a mere playground for their desire for power. The Diplomatic conference should be preceded by a conference of the ministers in charge of IP as foreseen in Art 4a.

    It is good that now that the epi reacts and give its opinion. It should have been the case earlier, but it is better now than never.

    The paper on the “New Normal” also shows the divide between the old and the new president in IT matters. The old president claimed to have left an office with, inter alia, a good working IT system and the new one considers that it has to be completely relooked. This was also the opportunity to push IT people out and let lots of new people in. The odd thing is that they all come from the Iberian Peninsula or had relations with it. Whether the IT system should be on a cloud or in a mainframe is a managerial decision and a consultation is pointless. What the users inside and outside the EPO want, is a working system. This does not seem really guaranteed.

    There is one thing which both the old and new president have in common is the total disdain for staff. They know what it is good for staff and they have at best to shut up. “Divide et imperare” is at its height when the president and the board’s management want staff to be scattered around the member states and even outside.

    The whole considerations about staff well-being in the paper on the “New Normal” has to be taken for what it is. Management gobbledygook with no real content! The mere facts created by the president and its minions provide a scathing denial to all the woolly statements in the paper. Staff representatives are “consulted” after the decisions have been taken and are invited to shut up if they dare not give their blessing to all the measures concocted by the president and its minions.

    It is tragic to see what some people at the height of their incompetence want to do with a formerly well-functioning organisation. It is high time to resist to such destructive endeavours at the EPO and at its boards of appeal.

  6. Many thanks Thorsten, for sharing again your thoughts.

    Paperless work without physically meeting colleagues is demanding. The tools provided by the EPO are not adequate, the electronic workflows are bad, we need roughly 15% to 20% more time for the same work. Kind of surprising considering that the IT Roadmap expected an electronic end-to-end workflow already in 2018 (CA/56/18, paragraph 61).

    Video discussions are possible, or course. But you need to organize them. Fine for experienced colleagues who built up an informal network over the years, a hard time for younger colleagues. The chance encounter at the printer, the coffee machine, on the corridor or during lunch is completely gone. The flow of information has been reduced to “official channels”, not a good situation. And all this takes much more time and many, many clicks, compared to pushing a piece of paper over the table.

    Concerning salary, it is rumored that the expatriation allowance is under discussion. But the expatriation allowance should have been revisisted years ago anyway. Check the staff regulations of the Council of Europe, Appendix IV, and you will see comparatively strict provisions for staff hired after 2012. It is difficult to justify the EPO level of this allowance today, in the European Union.

    Paperless work and extended teleworking will remain, the allowance will be modified, regardless of pandemic or New Normal. I believe this not a bad thing as such, it allows new ways of working. The USPTO has a long history of teleworking (and they are still in business), and being able to offer work not only at fixed locations, but spread across Europe is a plus for the EPO.

    The downside is that I have very little faith in the EPO management and the Administratrive Council. Forcing parties into videoconferences ist not a good idea. Neither are fast and rapid rule changes which will remain after the pandemic. Open offices are of course a brain dead idea for an intellectual task. Considering the total surprise about “complex IT systems with its spaghetti structure”, I doubt we will see software tools and workflows adequate for paperless working any time soon. Not to mention new approaches to bring physically distant colleagues virtually together, new working methods, …. .

  7. Governance.

    Europe goes from one crisis to another. In the past decade first 2008, then Greece, then migrants, then Covid19 and in the meantime national elections in each country that bring other priorities than the stable oversight of the EPO by relevant national authorities.

    But what are the guardians of the temple that should be the among others EPI, Business Europe doing to ascertain that legal gathering foreseen be held?

    IP, that is said to be so strategic, is simply not monitored properly at EU and national level and it is not the EPO administrative council among which the vast majority of delegates has absolutely no idea of what is going on at EPO which will watch the appalling policies developed over.

    When was the last diplomatic conference that should normally take place at regular intervals? If not mistaking, under President Kober.

    Pompidou and Brimelow had only half a mandate each and did not call for it and Battistelli and his minions have been very careful not to convene it.

    Campinos does not even know about it exists and it is not the infernal duo who pull the strings in his back and spends its time granting themselves fancy titles and the emoluments that go with them, that will tell him what needs to be done. They may not be so interested that outsiders come and lift the thick carpets under which corpses are hidden for the past decade.

    The EPO is adrift.

  8. Aren’t we patent attorneys getting a little above ourselves. Is this debate getting “out of proportion”? I mean, in times when hundreds, thousands of journalists are getting thrown in prison for doing nothing more than reporting the facts, when judges are instructed how to decide criminal cases, not just in China but also in increasing numbers of European sovereign States, we worry instead about whether Hearings in future will be conducted online or traditionally, as they always have been up to now, with everybody involved closeted together in the same room.

    People here demand an Intergovernmental Conference to debate the issue. As if there are no more important intergovernmental issues at the moment.

    Patents have become a commodity. Big corporations generate huge stockpiles of them, to trade with each other. If one individual patent goes down, at the EPO, so what? What other harm can an EPO Board of Appeal do? It is not as if they have any power to punish people, such as by depriving them of their liberty.

    It is not as if the EPO is the “cutting edge” of the Rule of Law, is it, whereby lapses at the EPO must be resisted at all costs because they are “the thin end of the wedge”. I’m more troubled by lapses in the administration of the criminal law because if that is neglected, insurrection follows. Are argumentative patent attorneys, busy here practising their lawyerly skills, going to take their grievances to the streets? Are their worries that important? Seriously?

    Or, to put it another way, what can you say to the government representatives sitting on the EPO’s AC, what arguments can you deploy, powerful enough to seize their attention, take home, and precipitate actions by sovereign governments to resist the depradations of current EPO management.? There are no such arguments, are there?

  9. Dear Max Drei,

    Whilst I understand your stance and I agree with you that there might be more important things to deal with than what is going on at the EPO, you nevertheless failed to convince me.

    What is going on at the EPO is, in small, what happens, on a big scale, outside the EPO. Just think of all ways governments have managed to limit civil freedom after terrorist attacks or when it comes to help police forces to become even more intrusive. Simply saying if you have not committed any offence you have nothing to fear is not convincing either.

    Every legal regulation taken under the influence of very specific events has never been a good legal regulation. What is happening at the EPO is simply to use the pretext of the pandemic to introduce deep changes without an ounce legitimacy and proper control. And if nothing is done, we will end up to be at the whim of would be managers using the EPO as their private playground to exercise their will to dominate and tell the users of the EPO what is good for them. Do you really wish this? I do not!

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