Ahead of their meeting late June, a petition calling for a conference of ministers of contracting states under Article 4a EPC has been sent to the members of the Administrative Council of the EPO.
The petition is an initiative of the EPO’s trade union SUEPO, which has invited all staff members to sign it.
According to the petition: ‘the development of the European Patent Organization (…) has increasingly departed from the structure and its mission as foreseen under the EPC and it appears that no appropriate countermeasures will be taken.
Therefore, we consider an external review of the EPO’s situation by a Conference of Ministers of the Contracting States under Article 4a EPC to be expedient; such a Conference is anyway long overdue in view of Article 4a EPC.
We call on you to have anew a close look:
- at the development and administration of the organization’s resources, in particular the alarming reduction of staffing levels in the core tasks;
- at the development of EPO employment law, at the (absence of) internal dialogue with social partners; and
- at hidden attempts to de-centralize the EPO towards National Patent Offices and weaken the roles and competencies of the various organs defined under the EPC
We also call you to reflect on whether the strategic governance of the EPO is compatible with the long-term continuity of the Organization’s existence and with the future fulfillment of its mission, also in the context of its role in the Unitary Patent system.
We ask you to transmit this petition to your Ministries in order to convene such Conference without delay.’
A document with more detailed information accompanying the petition (available here) reads:
‘It appears that the EPO is being more and more transformed into a profit center, which is – in our view – inappropriate for a public service with quasi-judicial bodies responsible for granting monopoly rights by sovereign acts, which have a wide impact on their owners, their competitors and on the public. (…)
Backlogs in examination and search are increasing and it appears that for tackling the problems the current line management is tempted to return to outdated management approaches like “challenging people” measures and management “by fear”, which are unworthy of a modern organization like the EPO with highly qualified personnel. At the same time the EPO plans to reduce the staffing level in core tasks even further. This adds to current plans squaring with a large-scale decentralization of EPO tasks, including transfer of tasks to NPOs. Such significant amendments of the Organization’s structure fall outside the prerogatives of the President or the Administrative Council as defined in Articles 10 and 33 EPC. Furthermore, such a decentralization of EPO tasks would also affect the legal certainties of the validity of the patents granted by the EPO.
Apart from that, virtually all reforms of employment law since 2013 have been legally challenged, a number of which were already considered as null and void by the ILOAT (see e.g. Judgments 4430 to 4435 or 4482) or even in breach of fundamental rights; no significant investments have been made for reviewing the other reforms at stake. The EPO has obviously been unable to develop and apply new policies in line with legal constraints as defined by the ILOAT, so that further embarrassing judgments are to be expected. (…)
The non-exhaustive list of signs of derailment of the EPO includes:
Management of core business and Quality:
- Staffing level in core business has been reduced significantly during the past years and the office plans to continue the reduction of staffing level in core tasks by 25% of examiners and by 50% of formalities officers;
- Since the beginning of 2021 until the end of April 2022 an increase of the examination backlog by about 12% and search backlog by 5% is visible;
- Rather than adapting the recruitment plans in core business to the actual situation the Office continues to focus on prioritizing and re-shuffling examiners tasks in examination and search;
- The latest figures of the internal quality audit disclose a decreasing trend of quality of grant decisions from an already low compliance rate of 80% in April 2021 down to less than 75% at the end of March 2022.
Decentralisation initiatives:
- The EPO has proposed a new „mobility” program which includes secondment of patent examiners between the EPO and NPOs without limitations; it further focuses on harmonization of IT structures between NPOs and the EPO rather than primarily investing in the tools to support the core work;
- By the reorganization of 1 April 2022, EPO examining divisions and EPO formality officers were artificially separated geographically to different sites, without any added value for the EPO work procedures;
- The Office has departed from long-term and permanent employment towards high rotation short-term contract jobs for the members of the Divisions defined pursuant to Articles 15, 18 and 19 EPC. (…)’
Every five years?
According to the European Patent Convention, meetings under Article 4a are due to be held ‘at least every five years’ but since 2000, when the article was introduced, such conference has never been held.
The AC meeting of 29 and 30 June 2022 is especially interesting as a decision will be made about the re-appointment of president António Campinos, who started in office in 2018, for a second five-year term.
The petition and developments at the EPO over the past period have shown that Campinos has clearly failed to achieve one important goal. Although agreements were reached with several people who had been fired or punished unlawfully by Campinos’ predecessor Benoit Battistelli, hope he would restore social peace at the EPO has vanished.
The relation between management en staff is tense. Since February industrial actions have been held, there was a day of strike and late April the Central Staff Committee reported about an outburst of anger of Campinos during a meeting described as ‘abysmal’, in which the EPO president ‘used foul language throughout (…) and insulted most of the speakers.’ The EPO declined to comment.
It remains to be seen what the AC’s reaction will be to the petition, which is a sign of the troubled relations at the EPO as well. Kluwer IP Law contacted several members of the Administrative Council about the performance of Antonio Campinos during his first term, but non of them wanted to comment.
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It is certainly an interesting move to request a Conference of Ministers in charge of PI according to Art 4a EPC.
It is not by coincidence that such a conference never took place. EPC 2000 came into force on 13.12.2007. We should now be in the preparation of the third conference of this kind. The predecessor of the present tenant of the 10th floor was certainly not interested in such a conference. The same appears to apply to the present tenant of the 10th floor.
On the other hand, who will brief the ministers in charge of IP if not the members of the AC? The interest of such a conference appears thus quite reduced. One could rather consider such a conference as pretty useless under such auspices.
As long as the tail will be wagging the dog, and it seems that we will not see an end to this for quite a while, not much can result from such a conference.
Whatever the members of the AC may think, the past and present heads of the EPO are on the opinion that the EPC can be amended by secondary legislation. And they not have hesitated to do so. On top of it, full support has been given by the AC which has given up its duty of control of the office.
Starting from this postulate, the present head of the office is indeed doing everything to bring the EPO to become a mere cash cow for the contracting states. Rule of law does not seem its preoccupation and that of all the minions sitting around him. “Yes Me President” is not any longer a fiction, but sad reality.
What can be said is that documents emanating from the 10th floor are full of bloomy management buzzwords which let reality seem wonderful. The contrary is true.
One prime example is the document on Professional Mobility, CA 32/22. The document contains enough to blow up the EPO as we know it.
The envisaged program “Pan-European Seal Young Professionals” has the aim to recruit cheap workforce, paid appallingly, for one year with the possibility to extend the contract further two full years. Training in IP would be given, but to what avail? It looks like a very convenient way to recruit cheaply and to sieve out all candidates not to the liking of the office and its managers. From a 100 the first year, 30 might be kept for the second year! It is not even known whether they will be offered a five years contract after those three years at the office.
The second aspect, much more problematic, is the possible secondment of either EPO staff members to private industry or to national offices and the secondment of staff members of national offices to the EPO. There should not be any conflicts of interest is a bare minimum. Anything else is left open and this means that the head of the office can decide at his whim the precise position and benefits/obligations of those people.
Secondment from national offices is based to a large extent on the model of the European Commission and of the EUIPO (what a coincidence). They will remain on the payroll of their national office, as well as of their national health system and will get on top 60% of the daily allowance valid at the place at which they are seconded. Families and children of seconded staff members will benefit from some advantages like access to the European school in Munich or The Hague.
The announcement that participants to the program “Pan-European Seal Young Professionals” and people seconded to the EPO from national offices should not take part in duties according to Art 15 is not worth the paper it is written on. The decisions will be signed by EPO staff but the actual contribution of those people to the decision will remain hidden.
There will also be a change for EPO staff members wanting to take unpaid leave. On the one hand, the possible period is extended up to 10 years, each year being renewable. At the same time those staff members will lose their right to return after 6 months or 12 months if seconded to an international organisation. The aim is clear: “to break away from the model of lifelong careers, as it exists within the EPO”.
The EPO has also realised that it has difficulties in recruiting and intends to lower the linguistic requirements when seeking a job at the EPO. The contract extension, probably for the second period of five years, will depend on the success of the linguistic training.
What the EPO does not realise or does not want to realise is that it is not any longer an interesting employer. Who wants to come to the EPO for 5 years with a wife working in the country of origin and with children who will have to leave the school system of their country of origin? And on top of it severing all ties with the national health and pension system. I do not know many.
All those nice ideas have a cost. The “Pan-European Seal Young Professionals” is estimated to cost 10,5 Mio €, 7,4 Mio € more as up to now. The secondment scheme for members of national offices will also cost 10 Mio €. It simply shows how the tail is wagging the dog.
No wonder that the salaries of EPO staff and pensioners had to be curtailed on the basis of a very dodgy financial study.
And we have not spoken about the new working scheme in place since 01.06.2022.
All those projects are designated as a “pilot” Everybody knowing the EPO is well aware that when the word “pilot” is uttered, it means the decision is taken.
Such deep changes in the working methods of the EPO and the staff regulations would have warranted a Diplomatic Conference pursuant Art 4a, but why bother if the same result is achieved by simply waving banknotes in front of the AC and clad in wonderful sounding management buzzwords.
If your information on CA 32/22 is accurate, it would reflect an alarming short-sightedness of the EPO management. The metaphor of a cash cow is delusive, it relies on the belief of a steady flow of applications to the EPO . But this is as (un)reliable as sales projections based on past activity for commercial companies. If it becomes the fact that the EPO is an inattractive employer and struggles to recruit good candidates, and on-the-job training is a low priority, applicants will take notice.
They will no longer be confident about the quality of the EPO products, primarily search reports (critical to designating the EPO as ISA in PCT applications), and the filing volumes could plummet. For AC members, this would shift the present cash cow situation to the fable of killing the goose that lays the golden eggs. A nightmare for everybody.
Reading the first two comments it occurs to me that the advent of the UPC allows all those attracted to the idea of “EPO as cash cow” free rein to indulge their cravings. After all, civil disputes are a matter for the courts, aren’t they, and not a mere administrative body.
Bulk filers at the EPO are becoming ever more used to l iving with grant certificates with a lower presumption of validity. It doesn’t matter to them. Soon, the EPO (with lots of willing help from Google) will get an AI to do the searching and issuing of EESR’s. Examination on the “merits” will become ever more obsessed with formalities and successful arguments for patentability under the problem-solution approach will become ever more spurious. I don’t buy the notion that filing numbers by the bulk filers will decline. I expect exactly the reverse.The important thing is that the AC members will enjoy ever-increasing dividend payments. It is all a bit Orwellian. The UPC, we were all told, is there to help SME’s. Did anybody except the politicians ever believe that line?. In reality, it is there to enable and empower i) the EPO to downgrade to a merely administrative certificate-issuing authority to help the AC members squeeze ever greater pay-outs out of the EPO and ii) the bulk filers to squeeze the SME’s out of the market..
Why no protest from the EPI? Perhaps its members can also squeeze more profits out of the new regime?
one should not forget why Art. 4a has been inserted into the EPC.
With the upcoming start of the Patent with Unitary Effect, a closer look at the necessary amendments to the EPC are necessary, management has started to spread the instructions, although the current EPC foresees no such “prior national rights”, which are solely a concern for national law, but not for the EPC.
How can management expect staff to comply with the “law”, when they themselves are in so obvious breach of it?
It’s a growing frustration on the workfloor, that our immunity is used to make the law only to apply to those who do not have the power, but the rest can ignore it with impunity.
Is the compliance with the EPC not part of the working contract of the President and the VPs?
Because for examiners and formalities it is. And management regularly reminds us so.
The information on CA 32/22 are correct.
As far as the quality is concerned, it is going down. No doubt about it. Claiming that it is still better than that of the USPTO might be nice and convenient, but not an answer to the problem.
Even the official results of the internal audit show a decrease to around 75% of files without deficiencies at grant. This figure was in the past around 85% and does not seem to get better for the last few years.
The figure is public as it was contained in the quality report published by the EPO.
It is a bit difficult to find among a deluge of flowery management buzzwords.
In the past, the EPO published the results of oppositions. For a few years it has stopped. It take bets that the proportion of oppositions rejected has been gradually dwindling. It is sure that the opponent puts a lot of efforts in a search, but when an Art 54(3) is not found when it is the same inventor/applicant, something is really going wrong.
Whether you call it the golden goose or sawing the branch they are sitting on, it boils down to the same.
Reliance on the quality of what is granted by the EPO is something of the past.
Dear Max Drei,
One of the biggest lies with the UPC was to tell that it has been established to help SME’s. The SME’s were no more than the fig leaf behind which the big industry and internationally acting lawyer firms were hiding.
As the number of patents held by proprietors residing in a UPC contracting state is barely a third of all granted patents, the UPC is a single door opened to foreign patent holders to attack European industry and SME’s. This has never been made clear to the various parliaments when ratifying the UPCA.
With an average of 3-5 validations per European bundle patent, SME’s could hope to be left in peace when they kept to their domestic market. This peace will go with the UPC.
SME’s risk to be hit very hard and will quickly realise what happens to them. Procedure before the UPC should be very quick, which means that a quick reaction will be needed when attacked for infringement. This means that costs will increase independently of the fact that the costs for representation will be higher in any case. When on top the basic fee for a counter claim for invalidity is double than that for infringement, the picture is rather bleak. This discrepancy between the two basic fees is anything but pure coincidence. The message is clear: the patent holder is bluntly advantaged.
The situation becomes worse when one realises that “intervention” can be forced on a party. Some explanations:
The judge-rapporteur or the presiding judge may, invite any person concerned by the outcome of the dispute to inform the Court, within a period to be specified, whether it wishes to intervene in the proceedings, cf. R 316(1) UPCA. If the person invited to intervene pursuant to R 316(1) UPCA does not intervene, but wishes to contend that he should not be bound by the decision in the action, he shall lodge a statement to that effect. If the person invited to intervene fails to present such an application (=request) he shall be bound by the decision in the action within the one month period referred to in Rule 316(2), cf. R 316(2)A UPCA.
If no statement is lodged within the time specified he shall be bound by the decision in the action as between himself and any other party to the action and shall not be entitled to argue that the decision in the action was wrong or that the inviting party did not conduct the proceedings leading to the decision in the action properly.
As those provisions are hidden in the implementing rules of the UPC, they were never brought to the attention of the various parliaments when ratifying the UPCA. I have strong doubts about the constitutionality of a measure which boils down to be bound by a judgement without having ever taken part to the procedure or to be forced to join a procedure.
As far as bulk filings are concerned, I feel you are right. This trend has been developing for many years. One hidden agenda could be as follows: let patents be granted in mass, the BA plays a bit around and serious matters start at the UPC. This is what is going on at the EUIPO. Whatever happens at the EUIPO, there are examining and opposition divisions, with some internal appeal boards, but at the end of the day matters end at the CJEU. The difference with patents is that it will not end at the CJEU but at the UPC, which is not necessarily a good thing.
In such a scenario it actually does not matter where the deciding body in first instance or in appeal actually sits, or whether the decision is taken directly and unambiguously by EPO staff as it can be “helped” by staff seconded to the EPO from national patent offices.
What is going on at the moment in the patent world in Europe is disturbing to say the least.
Dear AO,
I agree with you but one thing: a counterclaim for revocation is never more expensive than the infringement action (“same fee as the infringement action subject to a fee limit of 20.000 €”)
Of course, 20.000 € plus attorney’s fees can be a LOT of money for SMEs.
ECHR has jurisprudence on what consists ‘excessive court fees’, the UPC court fees are way too high and inaccessible for small companies (not to mention 1 person companies):
https://www.echrcaselaw.com/en/echr-decisions/the-award-of-excessive-court-costs-against-a-defeated-environmental-ngo-violated-its-right-to-property/
Good thing the UPC does not fall in the jurisdiction of the ECHR…
The basic fee for infringement is 11000 €.
The basic fee for nullity or for a counter-claim for nullity is 20000€.
And the losing party pays the cost for the winning party, albeit with a ceiling, but simultaneous interpretation costs are not taken over by the UPC!
According to the last draft I have been able to find, the fixed fee for a counterclaim for revocation is the “same fee as the infringement action subject to a fee limit of 20.000 €”.
If the claimant pays 11000 euro for an infringment action, the defendant will pay 11000 euro for a counterclaim for revocation, not 20000 euro.
Furthermore, small enterprises and micro-enterprises (so not medium) may obtain a fee reduction of 40% under Rule 8 RFees.
Interpretation costs can be recovered by the winning party under Rule 150 RoP.
The basic fee for an action for revocation is 20 000€.
The fee for a counter-claim for revocation is up to a maximum of 20 000€.
It is thus not clear what it actually is and what are the criterion to apply for the basic fee for a counter claim for revocation will actually be.
I agree that it is a lot for a SME!
A question to all bloggers: what would you change in the EPC?
I would like to see the possibility of filing a request for continued examination, as per the US system, to allow claim amendments to be considered after the examination of the application has reached its end in order to avoid the need to file a divisional application.
Well…I think I have more ambitous dreams, e.g.:
– Art. 4: Boards of Appeal independent from the EPO
– Art. 14: English only
– Art. 86: no renewal fees for pending applications
– Art. 94: fixed time limits for issuing first (12 months) and further (6 months) EPO office actions
@ Light Blue
What you actually request is to have two searches and examinations fort the price of one.
You might a best get a refund of the search fee if you file a divisional application for which the search fee has been paid during the original search, e.g. in case of lack of unity.
If the subject-matter has not been searched due to a plurality of independent claims of the same category or for non-payment of claims fees (over 15 claims), the search fee will not be reimbursed.
This is a first reason why your wish will not be fulfilled.
Once the fate of an application has been decided either by refusal or by grant, the EPO loses any competence to decide on the further fate of this application. The procedure has ended and cannot be revived.
In case of refusal, the decision is final and the examination procedure has ended and cannot be revived.
If the decision is grant, the EPO can only regain competence in case of an opposition against the granted patent, but only for the granted patent. In the absence of an opposition, the grant ends the competence of the EPO.
The same applies when the application is deemed withdrawn and the withdrawal has become final. The procedure has been brought to an end.
During prosecution and in case of missing a time limit you can only request further processing (Art 121) or re-establishment (Art 122), but not on a set of claims with is different from that before missing the time limit.
This is a second reason why your wish will not be fulfilled and cannot be revived.
@ Patent robot
To your question to all bloggers: “what would you change in the EPC?” I have a counter-question: “what does this question has to do with the topic of the present blog which is a diplomatic conference pursuant Art 4a?”
From you side I have a guess: amend Art 84, so that the description will not any longer have to be adapted to the claims.
I fear that T 1989/18 and T 1444/20 will remain two isolated decisions which will never find their way in the Guidelines. Only decisions quoted expressis verbis in the Guidelines are binding for first instance divisions. All other decisions can be ignored by first instance divisions.
Because art 4a is needed to find out the issues to be solved by art. 172
The basic fee for an action for revocation is 20 000€.
The fee for a counter-claim for revocation is up to a maximum of 20 000€.
It is thus not clear what it actually is and what are the criterion to apply for the basic fee for a counter claim for revocation will actually be.
I agree that it is a lot for a SME!
@ Patent robot
On the level of fees:
Infringement action [R. 15] 11.000 €
1. The claimant shall pay the fixed fee for the infringement action in accordance with Part 6.
2. The Statement of claim shall not be deemed to have been lodged until the fixed fee for the infringement action has been paid, unless otherwise provided.
Revocation action [R. 47] 20.000 €
The claimant shall pay the fee for the revocation action in accordance with Rule 59.2 and Part 6. Rule 15.2 shall apply mutatis mutandis.
R 59.2. Where the value of the revocation action exceeds [EUR***] the claimant shall pay a value-based fee for the revocation action in accordance with Part 6 [Rules 370.2(b) and 371.4].
Counterclaim for revocation [R. 26] same fee as the infringement action subject to a fee limit of 20.000 €
Rule 26 – Fee for the Counterclaim for revocation
1. The claimant shall pay the fixed fee for the infringement action in accordance with Part 6.Rule 15.2 shall apply mutatis mutandis.
The conditions for which the fee for a counter claim for revocation is limited to 11000 € are not apparent.
It remains that the fixed fee for revocation is nearly double than that of the fee for infringement.
Why?
Appeal pursuant to Rule 220.1 (a) and (b) [R 228] 16.000 €
One thing is clear, all those fees are extortionate when SME’s want to act or are forced to act before the UPC!
Dear OA,
from you answer it seems to me that you do not know the existence of the Rules relating to court fees:
https://www.unified-patent-court.org/sites/default/files/agreed_and_final_r370_subject_to_legal_scrubbing_to_secretariat.pdf
I fail to see how these fees could be considered “extortionate”. Since the courts should be self-financing, the salaries of the administrative officials and the highly trained judges need to be paid out of the fees. I daresay that a law firm filing an infringement or revocation action will be billing substantially more than €20,000. Are such lawyer’s bills also “extortionate”? If so, perhaps you need to change law firms.
“It remains that the fixed fee for revocation is nearly double than that of the fee for infringement. Why?”
You will find some answer to that question is a document published by the European Commission in 2011 on a comparison between all the court fees for patent disputes in Europe.
Baiscally they say that if the fees are high for a revocation action, it’s a policy to protect granted patents, ie they don’t want people or companies to challenge existing patents.
Yet another imbalance of the court in favour of patent owners, as if the whole “reform” was not already a disaster for defendants.
@ Patent robot
On your more ambitious dreams, e.g.:
– Art. 4: Boards of Appeal independent from the EPO
There has been a proposal in 2004/2005 by the EPO to make the BA really independent from the EPO.
It was refused by the contracting states.
The amendments to the functioning of the BA in 2012 (R 12a-d) might have improved the perception of independence of the BA, but actually boil down to less independence.
The president still has his finger in the pie, at least indirectly.
At least the president of the BA should be able to give his budget requirements directly to the AC and not via the head of the EPO.
– Art. 14: English only
Political dream which might never materialise.
Why has the London Protocol be signed and ratified?
– Art. 86: no renewal fees for pending applications
Presently the search and examination procedure is much faster.
It would also give a further pretext for the president to further reduce the staff salaries .
The absence of national renewal fees for the next 30 years was one of the pretext to drastically amend the method of determining the staff salaries and reduce them, cf. the “fixed” Financial Study.
– Art. 94: fixed time limits for issuing first (12 months) and further (6 months) EPO office actions
The EPO policy has rendered the PACE program obsolete.
All applicants are not necessarily interested in a quick grant.
It is at grant that the costs become non-negligible.
For some applicants the bulk of the costs=validation should come as late as possible.
It is interesting that this mundane subject of adaptation of the description is such a favorite for you that you take any opportunity to pick it up, even when it is unrelated to the subject of the post. Hence my question : why do you consider it so important ? Is it a matter of principle ?