Damocles, so tells us an ancient legend (reported here) was a favorite of President Dionysios II. of Syrakus in Sicily, who lived during the first half of the 4th century BC. His story was succinctly told by none other than Marcus Tullius Cicero in his tusculanae disputationes 5, 61–62. Hoping that Cicero will forgive me, I will tell it again here yet in a slightly modernized version.

According to the legend, Damocles was pandering to Dionysius, exclaiming that the President was truly fortunate as a great man of power and authority without peer, surrounded by magnificence. In response, Dionysius offered to switch places with Damocles for one day so that Damocles could taste that very fortune firsthand. Damocles quickly and eagerly accepted the king’s proposal. Damocles sat on the king’s throne, surrounded by countless luxuries. There were beautifully embroidered rugs, fragrant perfumes and the most select of foods, piles of silver and gold, and the service of attendants unparalleled in their beauty, surrounding Damocles with riches and excess.

But some evil parties hostile to the President and his organisation had arranged that a sword should hang above the throne, held at the pommel only by a single hair of a horse’s tail to evoke the sense of what it is like to be king: though having much fortune, always having to watch in fear and anxiety against dangers that might try to overtake him. Namely, had the sword fallen down, it might at least have severely wounded the President’s organisation and/or have forced one of its most important members to withdraw therefrom entirely.

Damocles sits on a throne, looking apprehensively at a sword suspended above him. Dionysius is standing next to him and gestures at the sword. The two men are surrounded by servants, courtiers, and guards.
By Richard Westall, Ackland Museum, Chapel Hill, North Carolina, United States of America, Public Domain, Link

Damocles finally begged the king that he be allowed to depart because he no longer wanted to be so fortunate, realizing that with great power comes great responsibility. And so it happened and the President entered the throne again.

But the story did of course not end there. It turned out that the President also was not too happy with the sword hanging over the throne, so he asked his Guardians of Justice to remove it. And he made it palatable for them to comply with his wish by conceding a few changes to the judiciary, which some viewed as a rectification of alleged deficiencies in the separation of powers (a concept the President never really believed in), whereas others viewed it as mostly camouflage.

The Guardians of Justice deliberated on the Sword and the President’s wish for a couple of centuries (according to the legend, of course; in reality it was much faster, in fact only 12 years). But today the festive day finally came and the sword was safely stowed away. The Justice mainly responsible for the decision received the great cross of merit with star and shoulder ribbon and was gladly allowed to retire.

And Dionysius the President happily leaned back on his throne and continued to benignly rule over his island realm as he did in the past, at least according to the opinion of his Council of Electors. And they all lived happily ever after.

Großes Verdienstkreuz mit Stern und Schulterband
Großes Verdienstkreuz mit Stern und Schulterband, source: commons.wikimedia.org

For a more serious reading on a completely unrelated subject, please turn to today‘s press release of the German Federal Constitutional Court, which is available both in German and in English. You may also wish to directly study the unanimous decision of the 2nd Senate of the Federal Constitutional Court dismissing the various appeals challenging the court-like character of the EPO’s Boards of Appeal and several of its decisions. Particularly parties not domiciled in Germany may possibly be surprised that Germany’s fundamental rights are not applicable to them. I am no constitutional lawyer, just a humble patent attorney, but I query whether it is really right that fundamental substantive and procedural rights only apply to Germans, not to foreign parties who seek justice before a German (constitutional) court. To be perhaps a bit blunt, I find this a bit appalling for a modern democratic country. Germans in turn may be somewhat surprised that the right to one’s lawful judge and the right to be heard can only be violated by German courts, not by the EPO as such. In regard to the EPO and other international organisations to which Germany has acceeded, only a „minimum standard of effective legal protection“ is required by the Basic Law. And this minimum standard seems to have been met by the EPO, at least after the 2016 reform of the Boards of Appeal. My simple take on this is that Germany has acceeded the EPO and the UPCA with the requisite 2/3 majority of MPs, now we are stuck to it. Later complaints to the Bundesverfassungsgericht are more or less undesired „buyer’s remorse“.

Two main consequences arise from today’s decision. Firstly, and this is certainly satisfactory and relieving to the EPO itself and its many customers (including my own firm), there will be no disruption of the existing system, and the EPO may continue to examine and grant patents as in the past. Secondly, any improvements in the structure, democratic and judicial oversight, and/or separation of powers within the EPO can only be achieved politically, if at all.


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13 comments

  1. There is a certain irony regarding the FCC’s decision on the complaints filed in 2010 and 2013. That is, if the FCC had acted in a timely manner (within about 5 or 6 years from filing of the first complaint), then the decision would have been handed down before BOTH Brexit AND the 2016 “reforms” of the EPC.

    As I understand it, the FCC’s decision would have looked VERY different in such circumstances, with only formal grounds (wrong basis for the legal complaints) potentially preventing the complaints from succeeding. Thus, by demonstrating an alarming lack of urgency, the FCC has greatly simplified the task of dismissing the complaints. The irony here is that the excessive delays provide reason to doubt the FCC’s impartiality … and hence whether the FCC itself meets the standards that are discussed at length in its decision.

  2. Thorsten, an excellent article, as usual.

    I share your concerns about the FCC’s decision having the effect of narrowing the possibilities for meaningful (positive) reforms of the EPC. I also worry about precisely how bad things have to get before the set-up and/or running of an international organisation breaches the “minimum standard of effective legal protection” that it is expected to provide.

    The ECtHR is an international court, and all EPC Member States are also signatories to the ECHR. I would therefore have thought that a suitable “minimum standard of effective legal protection” ought to be that established in the case law of the ECtHR. I therefore find it curious that the FCC does not reach this obvious conclusion, instead seemingly preferring to leave us all guessing precisely which principles (of judicial impartiality, etc.) established in the case law of the ECtHR might apply to international organisations.

    Looking, for example, at principles elaborated in para 143 of the FCC’s decision, it seems to me that there are serious reasons to doubt whether the set-up at the EPO meets the standards set in ECtHR case law. For example, the prohibition against judges having even an ADVISORY function in the “legislature” or “executive” would seem to present particular problems for the EPO. As revealed by G 1/21, the current set-up at the EPO makes it possible for a judge who has written, or directed the creation of, “legislation” not only to participate in a case relating to that legislation (including by appointing the members of the EBA) but also to stay in post unless and until excluded pursuant to a partiality objection raised by a party to the proceedings. Also, looking at R 12/22, it seems that the EBA has failed to learn from the exclusion debacle in G 1/21.

    As you will recall, I have previously expressed concerns regarding weaknesses in the set-up at the EPO that could, at least in theory, enable the AC to exert an improper influence over (members of) the Boards of Appeal. (https://patentblog.kluweriplaw.com/2020/11/03/a-few-thoughts-on-trust-and-judicial-independence/) In this respect, it is a shame that the FCC did not elaborate on why the independence of the Boards of Appeal (from the AC) is nevertheless guaranteed, at least to a “minimum standard”.

    Perhaps most disappointing of all, however, is the FCC’s assumption that, despite an obvious conflict with the plain meaning of Article 11(3) EPC, Rules 12a and 12d provide the dominant (i.e. binding) provisions of the EPC with regard to appointment of members of the Boards of Appeal. Whilst it is theoretically possible that the FCC’s view on this point is correct, that view relies upon two potentially questionable assumptions.

    Firstly, it assumes that either:
    – despite appearances, Rules 12a and 12d are in fact consistent with the correct interpretation of Art 11(3) EPC; or
    – Rules 12a and 12d modify the meaning of Art 11(3) EPC (by way of a “dynamic” interpretation).

    Secondly, it assumes that the President of the EPO cannot revoke the delegation of certain of his duties to the President of the Boards of Appeal.

    The latter assumption is perhaps even shakier than the former. This is because it raises the question of what legal remedy, if any, the EPC might provide in the circumstances where the President revoked the current delegation of authority. Indeed, Art 4 of the Act of Delegation specifically provides for its revocation (in “exceptional circumstances”, which are of course not defined). Moreover, the current Act of Delegation is nothing more than a Decision of the President (that can presumably be overridden by a later, contrary Decision), and only delegates authority to the current President of the Boards of Appeal (and so will not apply to the next incumbent of that position). If the EPC does not contain a mechanism for ENFORCING the continued delegation of authority pursuant to Rules 12a and 12d, then how is it that those Rules provide any kind of GUARANTEE (of judicial impartiality)?

  3. Thanks to Thorsten for putting the finger where it hurts in a very pleasant but nevertheless clear way.

    On the other hand, the present decision does not really come as a surprise.

    From the moment it was known that the rapporteur was going to retire, something had to be done in order to get read of those complaints. The result goes in the same direction as that of the Dutch Supreme court which considered that the ILO-AT was sufficient to insure that the rights of staff were correctly apprehended and protected. We all know that this is not the case and the ILO-AT only checks that the procedures have been correctly applied. It is only in case of a gross abuse of power that it acts.

    The decision taken by the GFCC is a political decision and not a decision in which legal standards have been respected. I would claim that the GFCC has not acted according to Art 6(1) ECHR which provides that a fair trial should be taking place at a public hearing within a reasonable time. I might be wrong, but there has not been any public hearing. When one sees that the first complaint was filed in 2010 the latest in 2018, that it took between 4 and 12 years to come to a decision, it is difficult to claim that the decision has been taken within a reasonable time.

    We all know that the reform of the boards in 2016 was not carried out in order to increase the independence of the boards but only to increase the perception of their independence. The reform looks fine on paper but we all know what the reality is strong doubts are permitted. I will just allow myself to mention the pantomime with G 3/19 and worse G 1/21 with Art 15a RPBA20.

    When one sees how the tail is wagging the dog, independence of the boards is an illusion. In view of all what has happened in the last years, it appears more than doubtful that the change of the status of the boards decided by amendment of the Implementing Rules is in accordance with the spirit and even the letter of the EPC. The EPO proposed a reform of the boards in 2005. It was refused by the AC. Now we pay the price for this non-decision.

    As long as the budget of the boards is not sent directly to the AC but can only be presented by the president of the EPO, independence of the boards remains an illusion. The standards of performance which has to be achieved by a member in order to be reappointed are still not public. When it comes to German judges the GFCC has made clear that temporary judges cannot be re-appointed. Why does it not apply the same standard to the members of the boards?

    It seems a very convenient way, often used by the GFCC to dismiss complaints by alleging “that the complainants that were entitled to lodge constitutional complaints did not sufficiently substantiate their claim”. Four out of the five complainants have filed their complaints before the reform of 2016. Claiming that they did not sufficiently substantiate their claims, also with respect of the reform of 2016, is ludicrous and at best a bad excuse.

    I do not support the way the political authorities in Hungary or Poland are dealing with the judiciary, but I am allowing myself to raise the question whether the mode of designation of the judges at the GFCC is so much better.

    The designation is purely political and it is well known that party wishes are dominant in the designation process. When a former MP, acting next to his duty as MP as lawyer, goes directly from the Parliament to the GFCC, or when a former Minister-President of a German “Land”, goes also from his post as political leader to the GFCC, it is difficult to dismiss the very political nature of the designation process.

    When even a constitutional court does not really abide by the rule of law, doubts are permitted about the direction our societies are going. The next scandal is the UPCA and its “dynamic interpretation” by its proponents.

    1. I agree that it is a political decision. But let us be honest: The decision clearly spells out that it is actually the responsibility of the German government and parliament to monitor what is going on at the EPO and to act if something is going in the wrong direction.

      As we all know, there is simply no political will in Germany to improve the situation currently. In the end that is the result of the fact that the German public does not really care as it is an area that barely touches the life of everyday people.

      So, unless the German industry complains about the patent quality at the EPO, there will be no incentive for the government to push for improvements. But at least there are now a few indications that at least some voices in the German industry start complaining publicly (e.g., Beat Weibel from Siemens with his Industry Patent Quality Charter work). But it is clearly not enough yet.

      1. Let us be honest about the chances of the AC delegates (or their political masters) doing anything about the situation at the EPO. That is, even if industry decided to complain long and loud about the situation, the chances of any meaningful (and positive) changes being made are close to zero.

        The reason that the dreadful situation at the EPO persists, and indeed continues to deteriorate, is that those having the power to make any (positive) changes have too much of a vested interest in keeping things as they are. Frankly, the EPO has become a cash cow for all of the key players, and none of them wants to (or can afford to) risk even slightly slowing the flow of cash. Against this background, only clear evidence of a large percentage of applicants avoiding the EPO (and switching to national filings) could persuade those key players to change their approach.

        No matter how much bad press might be generated by complaints from industry, the highest priority for the key players connected to the EPO will always be maintaining the flow of cash.

  4. The situation of the boards of appeal and their mixing with the granting authority was similar at the German Patent Office. It led to the creation of the totally separate German Federal Patent Court (BPatg) with as revision instance the German Federal Court (BGH).

    For the same token, decisions of the French Patent Office (INPI) can be queried at the Cour d’Appel de Paris, a judicial body totally independent of the INPI. There again there is a revision instance, the Cour de Cassation.

    At the EPO there is nothing of this kind and ordinary members of the boards can at the same time be members of the Enlarged Board of Appeal. The confusion between the two judicial bodies could not be more pronounced. Only a truly independent Enlarged Board with different judges should exercise such a function.

    By the way, the same confusion will occur at the UPC. A decision to refer under R 238A UPC is comparable to a referral to EBA under Art 112 EPC. Here as well, the referral will be decided by the members of the Court of Appeal.
    It is actually worse at the UPC as a decision to refer is only defined in the Rules of Procedure which can be amended by the Administrative Committee! The procedure for rehearing which corresponds to Petitions for Review under Art 112a EPC is at least enshrined in the UPCA itself, cf. Art 81 UPCA.
    According to Art 10 of the statute, a member of the Court can be dismissed by a decision of the Presidium, but a dismissed judge will have no means of redress. Is this a guarantee of independence?

    It is amazing to see that the GFCC took pretext of the pseudo reform of 2016 to dismiss all complaints. Why what is valid in Germany and France should not be valid at the EPO?

    The decision of the GFCC will have a further deleterious effects, the breadth of which cannot be foreseen at the moment.

    One thing is however clear. The decision of the GFCC is simply the ticket for a free ride with the EPC and the EPO’s staff by the EPO’s upper management, helped in this endeavour by the AC.

    The upper management can decide whatever its thinks fit as it is assured that the AC will rubber stamp any of its wishes. Whether it corresponds to the letter or spirit of the EPC as its fathers conceived it, has become totally irrelevant. The hamster wheel has to continue turning, churning out patents and bringing in fees. As long the timeliness is OK, the quality is excellent.

    When looking at the behaviour of the chair of the boards, the collusion with the upper management is more than obvious. The best examples were given in G 3/19 and G 1/21! I take bets that the chair of the boards still wonders why he has been removed from the panel in G 1/21. Independence of the judicial body is a concept which has no value at the EPO!

    It is symptomatic that no conference according to Art 4a has ever been envisaged. Not that it might bring a lot, but it shows the disdain of the organisation and its controlling body towards the EPC.

    In spite of numerous and repeated denials, the quality of the work at the EPO is going down. The number of patents revoked or severely limited after an opposition is skyrocketing. It is only in a very small proportion that state of the art not available in the EPO’s search files leads to revocation or limitation. In the vast majority of the cases, it is state of the art which has been missed during the original search.

  5. The GFCC has given its blessing to the structural reform of the Boards of Appeal. It appears that the Court has given the expressly intended better “perception of independence” more weight than independence in the real world. In fact, the personal independence of Board members has not been improved but weakened by the structural reform.
    This was effected by introducing a reporting system for board members and coupling it with the existing system of re-appointment after five years. This means that a board member not properly functioning in the opinion of the reporting officer, i.e. the President of the Boards of Appeal has to face that he may not be re-appointed.
    Properly functioning of a board member from the perspective of the reporting authority has a substantive aspect concerning the result of a decision which may be liked or disliked by the President of the EPO, the Administrative Council or the President of the Boards, see e.g. the decisions G 1/21 (Videoconference), G 3/19 (Pepper), G 2301/15, G 2302/15, G 2301/16 (Removal of a Board member from office), R 19/12 (Suspicion of partiality of the Chairman of the EBA), T 831/17 resulting in G 2/19 (Haar), T 1242/06 (Tomato II) resulting in G 2/12, to name only a few popular examples.
    Properly functioning also has a quantitative aspect, i.e. implied targets for board members. The structural reform was followed by creating mammoth boards with up to eight technically qualified members. From 2016 to 2021 the number of technically qualified members increased by more than 45%, whereas the number of the boards remained the same which leaves the Chair with the choice to lose track of the case law of its own board or to hold oral proceedings up to three times a week. In the same period, the number of legally qualified members increased by only less than 15%. They have to participate in a comparable number of cases, i.e. preparation of the case including examining admissibility of the appeal and checking the draft communication, oral proceedings and cooperating in drafting the decision. A thorough preparation and a full participation of the Chair and the legally qualified member requires its time and under the situation as described, this appears not to be always available.
    The previous President has shown in the C. case, well documented in the Internet, that a removal of a board member from its office is possible and that the available means of redress for the member concerned are ineffective, in particular in the absence of any interim relief. Even though the member concerned won his case at the ILO Tribunal in Geneva after many years, his health was ruined and re-appointment was refused. This removal may be understood as a warning example for all others who might be tempted to risk a conflict with those deciding on their re-appointment. In this respect, the key person is the President of the Boards of Appeal who, in turn, is dependent on the President of the Office responsible to propose him for re-appointment as President of the Boards of Appeal to the Council. In addition, it may be doubted whether the Administrative Council re-appoints a member to whom the President of the Office objects in the Boards of Appeal Committee in accordance with Rule 12c (1) 3rd sent. EPC.
    The GFCC has rendered a very long decision. However, the essential facts affecting personal independence have not been touched.

    1. The GFCC made clear that it is not the police that is surveilling the EPO. Instead, that is the responsibility of the German government and parliament and the court only works with the facts presented to it. Of course, when asked by the GFCC, neither German government nor parliament saw a problem. Even the EPO was asked to comment.

      When I read the decision, it is my perception that it blames the complainants for not addressing your alleged problems even after the 2016 reforms (I even read a desperate call for arguments between the lines, which would explain why it took so long to conclude the case). From the facts that were obvious to the court, it was not able to come up with your conclusions. And there was simply not enough material on the table for the court to challenge the responses of government, parliament, and EPO.

      1. Denis, I very much doubt that the complaints failed because the complainants did not file enough material to address the situation after the 2016 reforms.

        I am aware that at least one party filed material pointing to reasons why, even after the 2016 reforms, the Boards lack independence. The GFCC did not comment upon the arguments raised in the material in question. It therefore stands to reason that there are likely many other points that the complainants addressed but that the GFCC airbrushed out of its decision.

        Absence of evidence does not equate to evidence of absence. Remember that the public is unable to access all of the material that was submitted to the GFCC (or to determine which material the GFCC took into account before issuing its decision).

  6. One wonders whether those lobbying on behalf of international corporate interests have succeeded, first with the legislative branch, next the executive branch, and now the judicature, in persuading all those amateurs who govern the patent law of Europe to butt out and leave the management of the patent law business to the bulk users of the system, the volume filers, the entities that pay all those Patent Office fees, namely the world’s itinerant “global players”. As the saying goes, as it always was, as it always will be, he who pays the piper calls the tune.

    I mean, when the users take control of the patent office and patent courts and strip it away from all three of the separate powers of democratic society it is not as if anybody’s universal human rights are being infringed, is it?

  7. I can only agree with Convention Watchdog and Max Drei.

    The decision of the GFCC might be very long, but its content is rather poor. One question is: what would the GFCC have done without the pseudo-reform of 2016?

    In any case, the production/productivity quest from DG1 has been adopted at the boards. I would not be surprised that a similar point system has been introduced at the boards or at least in some of them. How can a judge be independent when he has to achieve some “target”?

    An idea of the “target” (to speak in DG1 terms) to be fulfilled by each board and hence by its members can be found in the list published at the beginning of the year of the cases in which a Board is likely to hold oral proceedings, issue a communication under R 100(2), or issue a decision in written proceedings in that year, cf. Art 1(2) RPBA20.

    In all his interventions or general statements, the Chair of the Boards always emphasises that the number of cases dealt with by the boards during each year is steadily increasing. Only production figures seem to be of interest for the Chair of the Boards.

    The Chair of the Boards does not seem to have grasped that the boards act in a haphazard manner when it comes to procedural aspects. Just look at the various decisions in matters of oral proceedings (ViCo or in person), deletion of claims or grouping of claims. In similar situations, the divergences in procedures are astounding. From a procedural point of view filing an appeal has become a lottery.

    On substantive matters, it is not yet the same level of lottery, but it is possible to notice that the boards become more and more a kind of islands in which one board decides in ignoring what other boards do in a similar situation. Just look at the decisions on adaptation of the description to amended claims. Some boards want apparently to distinguish themselves from other boards even on such matters. It has come to the situation that some boards do not consider themselves bound by their own case law! Where will all these discrepancies lead to?

    Max Drei is right in his assumptions. A few years ago a director even gave written instructions on how to deal with applications from a big filer. It was published on Techrights. I do not approve Techrights’ way of dealing with the EPO and software patents, but sometimes it publishes good and reliable information. Probably that by now instructions are just given verbally!

    The only thing which can be added is that what is happening at the EPO will continue, probably in a worse manner at the UPC. The UP/UPC system has clearly been established for the big players and certainly not for SMEs and the like.

  8. The following communiqué from the EPO says it all:

    12 January 2023 

    The German Federal Constitutional Court has published a decision today confirming that the EPO’s appeal system provides independent and effective judicial relief, as required by the German constitution for courts of international organisations. See https://www.epo.org/news-events/news/2023/20230112.html

    The boards of appeal also commented on “…. the improved institutional separation of administrative and judicial functions which was achieved by the structural reform of the Boards of Appeal in 2016…..”

    The whole text of the boards under the following link.

    https://www.epo.org/law-practice/case-law-appeals/communications/2023/20230112.html

    Reality surpasses the most incredible fiction!

  9. I agree that the BFCC’s decision contains reasoning of a very poor quality. However, it seems to me that this is a result of the reasoning being retro-fitted to a predetermined outcome.

    It is true that the President of the Boards of Appeal is responsible for running the Boards, and supposedly answers only to the AC. However, it cannot have escaped the attention of the BFCC that the President of the EPO retains the power (under Art 11(3) EPC) to propose appointments AND reappointments to the position of President of the Boards of Appeal. From this fact alone, it is clear that any President of the Boards who might wish to be reappointed will never be entirely independent of the President of the EPO.

    The above illustrates only one of several reasons to conclude that the EPO’s Boards are not adequately independent (of the President of the EPO, of the AC, and with respect to “internal” pressure from colleagues). And yet the BFCC feigned not to recognise obvious flaws in the 2016 reforms. In this respect, the BFCC’s decision reminds me very much of the decision of the Dutch Supreme Court on the EPO’s immunity from suit (regarding alleged violations of the right to collective bargaining). That is, one cannot help escape the impression that, to get the “correct” (ie predetermined) result, the court would even be prepared go as far as arguing that black is white – despite all evidence to the contrary.

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