A reminder of the good old days, when many things were still normal…
I. Nemo Iudex
Once upon a time, the “nemo iudex” principle was a fundamental cornerstone of EPO Board Appeal proceedings, even though EPO management did not always appreciate it (do you still remember R 19/12?). The principle reads in full:
Nemo Iudex in Sua Causa
This Latin phrase means literally, that no-one should be judge in his own cause. According to wikipedia, It is a principle of natural justice that no person can judge a case in which they have an interest. In many jurisdictions the rule is very strictly applied to any appearance of a possible bias, even if there is actually none: “Justice must not only be done, but must be seen to be done”.
Wikipedia credits this phrase to Sir Edward Coke who lived in the seventeenth century, but concedes that this phrase is actually attested as early as 1544. I can easily top this: Even the ancient Romans knew the very same principle at least since the Codex Iustitianus of 528 AD. When the present times are depressing, a deeper dive into history can be both enlightening and refreshing. So let’s go ad fontes and look up what DOMINI NOSTRI SACRATISSIMI PRINCIPIS IUSTINIANI CODEX had to say about this matter. We find it here as admonition no. 3.5.0
Ne quis in sua causa iudicet vel sibi ius dicat.
Translated literally, this means that “nobody should judge in his own case or speak right about himself”.
With this in mind, let us turn to Art. 15a RPBA and G 1/21. The history of this new Article has been summarized in part on the EPO’s website thus:
Article 15a RPBA was approved by the Administrative Council of the European Patent Organisation at its 166th meeting on 23 March 2021. It had previously been adopted by the Boards of Appeal Committee (BOAC) on 11 December 2020. The BOAC, which is composed of three members of the delegations of the contracting states and three serving or former judges of national courts of the contracting states (see Article 2(1) CA/D 7/16), consulted users before adopting the new provision, and plans to consult them again in due course to assess their experience with it.
I will not further bore readers with my views on the seriousness of this “user consultation” and turn straight to the question how the BOAC came to adopt Art. 15a RPBA in the first place. This can be taken from document BOAC 16/20, the summary of which reads as follows:
The President of the Boards of Appeal proposes that the Boards of Appeal Committee adopts the amendment to the Rules of Procedure of the Boards of Appeal set out in Part II of this document. The amendment involves inserting in the Rules of Procedure of the Boards of Appeal (RPBA 2020) new Article 15a, which clarifies that the Boards of Appeal may hold oral proceedings pursuant to Article 116 EPC by videoconference.
Thus, the President of the Boards of Appeal, Mr. Josefsson, proposed the introduction of Art. 15a RPBA to the Board of Appeals Committee, which adopted it and proposed it to the Administrative Council who in turn approved it. The Enlarged Board in G 1/21 is now being called upon to judge the legality of Art. 15a RPBA to the extent that oral proceedings are scheduled without the consent of the parties to the proceedings. Now I have two simple questions:
(1) Who would be the last person that the Codex Iustitianus would like to see on the bench to adjudge this question? (2) Which (disciplinary) authority should the majority of the members of the Enlarged Board of Appeal better not be subjected to when it comes to their re-appointment after their 5 year term?
Once you have answered these questions, you may start getting a bit concerned about the EPO’s apparent “New Normal”. Always remember that justice must not only be done, but seen to be done.
II. Rights of Parties are Sacrosanct
The EPO’s old normal, at least as far as I can remember, was to respect the fact that the EPO is exclusively financed by user fees. Users’ rights and needs have therefore always had a high priority in EPO’s management decisions. I cannot remember a single case where the EPO tried to push through an amendment that was both explicitly designed to limit a user’s right and was severely objected by a large majority of both applicants from industry and supranational organizations of representatives. Some companies are very vocal about it, and I think for very good reasons. You can read a good summary in this interview with Dr. Jörg Thomaier, Head of IP of Bayer. If you have not yet seen it, I recommend reading it in full. Here is just a teaser:
Bayer is being very vocal against the compulsory part of it, because we don’t see there being any power from the authorities to force everyone into video conferencing. We have the right to be heard, according to the European Patent Convention, and the right to be heard does not mean just calling in. Of course, on one level video conferencing is more than just being on the phone. But it’s still not the same as having a live discussion.
Bayer (and many others of the 47 amici curiae in G 1/21) are not against video proceedings in general and would agree to hybrid proceedings in case that one party does not want to travel to Munich (or the Hague), but they are of the firm view that Art. 15a in its present interpretation would deprive them from an important right, i.e. personal participation in oral proceedings.
Even if the Enlarged Board were to find video proceedings without the consent of the parties compliant with Art 116 EPC, I seriously wonder whether the EPO would be well-advised to actually make such proceedings the ‘new normal’ after the current pandemic. The Boards and Opposition/Examining Divisions do not have to arrange for video proceedings, they still have the authority to go for classic oral proceedings in person. In my opinion, an emergency situation such as the present pandemic should never be (ab)used to enact provisions enabling the state or a state-like organization such as the EPO to take away people’s rights, once the emergency has ended. Maybe I, as a German, am (and better should be) particularly sensitive if I feel that such attempts are being made.
III. Act with Prudence
The EPO has always changed over the years and it will continue changing in the future. There is nothing wrong with this in principle. Yet, I get the distinct feeling that the ‘new normal’ currently advocated by the EPO management (though in very cloudy, ambiguous terms) runs the risk of turning the EPO completely inside out. I think we should all be very wary of this risk and reject changes that are introduced too hastily and without a proper and prudent look at the consequences. As this contribution is a little Latin-heavy anyway, let me add that this is of course not a new idea; I borrowed it from the medieval Gesta Romanorum:
Quidquid agis, prudenter agas et respice finem.
Whatever you do, act prudently and mind the end. This wisdom goes back even to Aesop and Pythagorean philosophy.
With this mindset, I stumbled about an interesting contribution by two previous EPO Vice Presidents, Jacques Michel and Willy Minnoye, here. This blogpost contained many thoughts that I found worthy of careful deliberation. As the original is in French, I am happy to provide an English translation under the following link:
Contribution J Michel & W Minnoye New Normal EPO English translation
I particularly liked the authors’ emphasis on quality by cooperation and discussion among examiners, both during their education period and thereafter. It seems plausible to me that thorough discussion of a case by the three examiners of an examination or opposition division is one of the best means to secure and enhance what I understand to be “quality”. Clearly, such discussions take time, but I would think this is time well spent. And I am quite skeptical that the EPO will be able to secure the same quality once such discussions are supposed to mostly take place by videoconference. I hope that this will not become the “New Normal” of the EPO without prior careful investigation and thorough testing.
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Thanks Thorsten for once again putting the finger where it hurts.
OP by ViCo are not under dispute as such. What is not acceptable is that they are summoned without the consent of the parties and that it should stay like this after the pandemic. And that in fine the BA are de-localised contrary to what was said in G 2/19, cf. the last § before the order.
The whole attitude of the chair of the BA in G 1/21 is unnecessarily provocative.
For a start, Art 15a has been introduced and came into force in order to give a legal basis to a practice which was manifestly lacking one. See Point 20 of the document BOAC/16/20 presented by the chair of the BA: “Article 15a RPBA clarifies the practice of the Boards of Appeal since May 2020 of conducting oral proceedings by videoconference. Therefore, the Boards of Appeal may adapt their practice before the date of entry into force…….”
Then by rushing the OP on case G 1/21 by barely respecting the two months’ notice and summoning to OP by ViCo without the consent of the parties, all in the absence of a corresponding legal basis in the RPEBA, the chair of the BA showed again its disdain for legal mechanisms he should the first be in charge of requiring their respect.
One aspect at stake here is the concept of party disposition, and it is highly surprising that a former national judge has simply thrown this concept over board. For the chair of a board it is a bit much! Sorry for the pun.
One wonders why the chair of the BA behaves as he does. By behaving as he does chair of the BA gives full support to the adventures the present president of the EPO wants to introduce at the EPO.
The present president of the EPO wants to impose OP by ViCo and de-localise the staff to wherever they want to be, so that he can save on salaries and buildings. He actually wants an EPO 2.0.
Deciding bodies of the EPO, be it divisions or the BA can be scattered all around the contracting states and even further away. Without the active support of the BA he is well aware that those ideas cannot be implemented as they are not possible under the EPC as it stands. One can turn the EPC around, but neither Art 6 or 7, Art 10(2,a) which goes on a par with Art 10(2,b) nor Art 116 support the fantasy of the present president of the EPO helped by some members of the BA.
It is only possible if the EBA delivers him a “dynamic interpretation” of the EPC as it was the case in G 3/19 He will then be the king of Eponia like his predecessor.
Being re-appointed after 5 years needs to show a given performance. The criteria for re-appointment are not known, but I suspect that an excellent flexibility of the spine is an asset. It is tragic to see that the management of the BA follows the same line with 5 years contracts for examiners.
It was actually the fact that members of the BA were only appointed for 5 years which led to the application of the same rule first to principal directors, than to directors and now to newly recruited examiners. When the rule was introduced for PDs, no member of the BA had never been re-appointed. This was not to the liking of “Napoleon 4th” which pushed the BA to adopt R 12a-d.
As far as Mr Michel and Mr Minnoye are concerned, I personally think that they have missed an opportunity to keep quiet. I think that someone else, I dare say someone more competent, held the hands of the two VPs.
I do not say that BEST is bad, but it was introduced to cover up the pharaonic IT expenses of Mr Michel. The statistics that were supposed to show to the AC the production gain achievable with BEST were, let’s say, improved, because the raw data were far from the huge gains announced. The examiners had to pay the bill, because they had to show, willingly or not, that the hypothetical gains announced to the AC were achieved. And there Willy Minnoye was in the game, first as IT manager (PD) and then later as VP.
Mr Minnoye now claims that the law should be respected, but at the height of the dispute between staff and management, when a Dutch court ruled that staff rights had to be respected, he claimed publicly on Dutch TV that the EPO will never abide by such a decision. EPO enjoys immunity (but not impunity). Thanks for him, a higher Dutch court ruled that everything is honky dory at the EPO.
Both have a lot to apologise for, but the document also shows that ingrained hatreds can lead people to take positions that are surprising, to say the least. Strictly speaking, however, they are on the right side.
What the current President wants is an EPO 2.0, but without wanting to use the necessary means. If he wants an EPO 2.0, why not, but then there are mechanisms to be followed.
To start with, is to convene a conference of ministers of the Contracting States responsible for patent matters, cf. Art 4a. This conference could be the beginning of a further revision of the EPC. After the Diplomatic Conference of 2000 there was a second basket to be looked at. It also concerned substantive patent law.
If at the end of the revision, the national parliaments ratify the amended EPC and create an EPO 2.0 according to the wishes of a president, which is actually just passing by, then the correct mechanisms will have been applied.
What is not acceptable is the underhand creation of an EPO 2.0 with the help of the BA.
I wonder what if pending complaints before the German BVerG will point to this case.
They already complain about a lack of independency, and this case shows that all the reforms of DG3 were never about “independency” of the “courts” and “judges”, but really only about “perception” thereof.
Thanks, Thorsten, for pulling the threads together. I’m asking myself, how can anybody who considers themselves to be a lawyer, an officer of the court and a guardian of the precious “Rule of Law” acquiesce in this shameful trashing and betrayal of what we all thought were fundamentals of the signature “separation of powers” which distinguishes a democracy from an autocracy or totalitarian State. I guess that for them there is no worry about any of this being “the thin end of the wedge” because business at the EPO is qualitatively different from justice at a court of law (and so remains untouched by any pious whingeing about a breakdown in the Rule of Law).
The USPTO just issued its eleven millionth patent, its eleven millionth restraint of trade. Business at the EPO is confined to deciding whether to allow or cancel just another such restraint of trade, one of millions of the things. Many would see that as a mere administrative act, as opposed to anything to do with “justice”, the “Rule of Law” or the vital separation of powers. If one European patent or application goes down after a TBA ViCo, which might have survived had the patent owner been given in full their “right to be heard”, then so what? We are not talking here of any denial of universal human rights, are we?
If its perpetrators do not see it as the thin end of the wedge, perhaps that it is because their mission, of which this is a part, is to strip the EPO of any judicial function whatsoever. We European patent attorneys care about that, but does anybody else?
It matters, what lead the USA gives. That has suddenly changed. Until this year, the USA was hell-bent on trashing anything supra-national and multi-lateral, imposing in its place exclusively bilateral understandings. But under the lead of its new President, the USA has changed its lead, and that makes a big difference. Those here in Europe still seeking to blow away the EPO’s supra-national judicial function might indeed be yesterday’s men, but unfortunately they continue to sit in positions of power where they can continue to do great damage.
With just over two weeks to go before the oral proceedings in G 1/21, it is somewhat surprising to note the complete absence in the public record of any indications that the EBA has, or will soon be, initiating proceedings under Art 24(4) EPC.
Indeed, this is quite astounding for a number of reasons.
Firstly, a party to the proceedings has (more than two weeks ago) raised formal objections under Art 24(3) EPC. This means that, under Art 24(4) EPC, the EBA has no option but to take a decision on the objections without the participation of the members concerned. Such an important decision cannot be taken lightly, or without seeking comments from the members concerned. Sorting all of this out takes time … which, if oral proceedings are to go ahead as planned, is now running very short.
Secondly, it is difficult (though sadly not impossible) to conceive that the EBA will concoct a reason to dismiss the objections against its current Chairman. Thus, a change in the composition of the EBA is likely and needs to be announced to the parties in advance of the oral proceedings.
Thirdly, objections to members of the EBA were first formally raised in an amicus filed (by epi) precisely a month ago today. The EBA has therefore had plenty of time to consider how it should go about dealing with the points raised in that amicus brief.
Lastly, it is possible that wheels are in motion behind the scenes, and that a decision on objections to certain members will issue very soon. However, if the first that the public learns of the EBA’s deliberation on the objections is their final decision, then, unless the slate is wiped clean (i.e. if all decisions taken by the current Chair are rescinded and proceedings in G 1/21 are re-started with a new composition of the EBA determined by a new Chair), this would hardly be the kind of transparency that would help to ensure that justice is seen to be done … especially when there are so many objectively well-founded reasons to doubt the independence and impartiality of the EBA in its current composition.
If any members of the EBA are going to consider the objection of partiality, I would expect that the external members would be the most likely candidates to do so. The question then arises as to what information is being disseminated to them. Are the formalities officers being kept on a short leash and only forwarding submissions which do not raise this issue?
What is happening at the moment at the BA is tragic. And the same applies to the EPO in general.
The way things are going, not even the perception of independence of the BA is respected.
As far as partiality is at stake we can expect a kind of “dynamic interpretation”.
As the chair and its deputy and all the members of the presidium of the BA having participated to the elaboration of Art 15a would have to be replaced, the regular internal legal members are no sufficiently sure in their views to be appointed in case G 1/21, so it is best to keep the legal members as they have been chosen by the chair of the BA/EBA. The regular internal technical members might have participated in the elaboration of Art 15a, but they should not be replaced as they are regular members. Logic isn’t it?
On the other hand, since the EPO has explained on May 11th that Oral proceedings in examination are moving to Zoom, the president of the EPO must be certain of the result of G 1/21.
I take bets that the “pilot” in opposition will be extended after 15.09.2021. I am pretty sure to win this bet. This “pilot” would just be another “pilot” in the pure EPO tradition: the decision has been taken long time ago, but a fiction (like that of the independence of the BA) has been maintained.
The same applies to the “New Normal” in view of the news published on May 12th: “EPO member states discuss new normal, IP education and the EPO Observatory at 15th annual meeting”.
Who dares doubting that the “New Normal” as wished by Napoleon 4th successor will not occur?
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