Introduction

The structural reform of the BoA is very important to the status of the European patent system as a whole. In our view, it deserves wider debate and consultation than it has received so far, especially amongst users and practitioners.

Moreover, the questions in the five categories of the Office’s online consultation focused mainly on efficiency and procedure, but not the structural setting of the BoA or the users’ views on the effect of the structure on the perceived independence of the BoA, which was the decisive point in decision R 19/12 and the trigger for the proposal in CA/16/15 to reform the BoA within the limits of the EPC.

We therefore hope that any interested parties will participate in this interactive online questionnaire that explores the effects of the reforms on independence and accountability. It is designed to complement the Presidium/AMBA proposal, which is our response to the Office's proposal CA/16/15. In a position paper, the epi has also responded with its own proposal.

The proposals contain quite a lot of data and information, but more may be needed to really understand all the issues involved. This is not readily available to the public in one place, so we have tried to provide it in sections beside the questions. Each aspect is in a dropdown box, which can be made visible by clicking on the relevant line.

In the questionnaire, we preserve the categories used in the Office’s online consultation document (A – Independence, B – Efficiency, C – Procedure, D – BoAC, E – Petitions for Review). 

You will need to register for the AMBA website in order to submit the questionnaire.

Questions - General



Background information on reform of the Boards of Appeal
Recent History of the Reform

In decision R 19/12, the Enlarged Board decided that the Vice President of DG3 was to be recused from a petition for review case on suspicion of partiality because of his continuing connection with the EPO management via participation in various advisory boards and management committees.

In addition to stopping further participation in these bodies, the Office proposed a structural reform of the Boards of Appeal (BoA) in document CA/16/15. This proposal was designed to increase the organisational and managerial autonomy of the Boards of Appeal, the perception of their independence and also their efficiency within the framework of the current EPC. It was also intended to take account of national, European and international developments aiming at enhancing the autonomy of the Judiciary and/or the efficiency.

In order to implement the aims set out in CA/16/15 and to prepare the relevant concrete provisions, the EPO launched an on-line user consultation (no longer active) to get input from the user community. Questions in five categories were asked.

AMBA set out reasons why it did not consider that the questions adequately explored the effect of the proposed reform on independence.

The Key Issue in a Nutshell

The issue boils down to deciding who should (and legally can) be responsible for the key judicial tasks of the BoA. One can imagine a mapping of each task to a body that is responsible for it.

Our position is straightforward – the mapping should follow the recommendations in the international standards for the judiciary. These essentially specify that a body with a majority of members of the judiciary concerned should be responsible. Furthermore, this corresponds to the current situation where the BoA itself is already responsible for the tasks. Finally, it acknowledges the wish of the AC to be more informed, and, where possible, more involved. This forms part of the accountability of the BoA to the “outside world”, which, in a modern judiciary, is the counterpart of independence. This is essentially a compromise compared with previous proposals for reform of the BoA (which proposed that the Presidium – consisting entirely of BoA members – take on this role), in that it requires only a majority of members from the BoA. As will be apparent, the inclusion of other interested circles gives it the desired authority and accountability.

Given these arguments, we consider that the burden of proof lies with the proponents of any proposal where the mapping of the tasks does not meet the recommendations.

In particular, in our view, the situation proposed in CA/16/15 where the mapping is to a body that is part of the AC that does not have any members of the BoA is diametrically opposed to the current situation and the recommendations. No justification has been given for it, let alone one that meets the required burden of proof.

Summary of CA/16/15

CA/16/15 is based on the following main features:

  • The setting up of a new advisory committee of the AC (the BoAC), i.e. a body within the AC, with advisory functions towards the AC and with inter alia the following monitoring and controlling functions towards the management of the BoA
    • Issuing directions, objectives and guidance to the BoA to manage their work (points 17, 25, 26, 27)
    • Proposing a code of conduct and internal instructions for the BoA (point 26)
    • Proposing amendments to the Rules of Procedure (point 27)
    • Proposing criteria for selection and appointment (point 29)
    • Proposing criteria for re-appointment based on “quality and efficiency” (point 29)
  • The creation of a new position of President of the BoA
  • The delegation of the competencies of the President of the EPO regarding appointment and management of the BoA to the President of the BoA
  • The provision of a separate budget under the control of the President of the BoA, within the budget of the EPO.
Summary of Presidium/AMBA proposal

In our view (see our proposal section 4), all of these tasks foreseen for the BoAC in CA/16/15 are problematic in view of:

  • The separation of powers between the President of the Office and the AC foreseen by the EPC
  • A deterioration as compared with the present arrangement which is largely uncodified and based on convention
  • Internationally recognised principles of judicial independence as set out in various standards.

We propose the alternative that most the tasks which CA/16/15 ascribes to the BoAC are instead attributed to a new body within the BoA and, thus, within the Office.

This body, tentatively named the Senate for the BoA, is essentially the existing Presidium, but with an extended composition including members nominated by the AC and the President of the EPO, as well as external observers, e.g. associations of users.

The Senate is comparable to a national Council for the Judiciary (CJ), wherein all the three powers are normally represented so as to insulate the functions of appointment, promotion, and discipline of judges from undue interference from the other powers while ensuring an acceptable level of accountability.

This mixed composition:

  • Requires minimal change to existing structures and procedures
    • Maintains the AC’s roles as defined in the EPC
  • Requires no re-distribution of tasks between the AC and the President of the Office, which might conflict with the EPC
    • Instead, the Senate’s decisions/suggestions/ proposals have an authority that the decision makers in the Legislative and the Executive organs designated by the EPC, e.g. for appointment and re-appointment of members, would be expected to follow in practice (except for very good reasons to be given)
  • Conforms to internationally recognised recommendations
  • Balances, according to modern thinking, independence with the understandable desire for accountability to the AC and other interested circles, by allowing all powers of the Organisation to be involved in discussions on judicial governance.

We also propose codifying in the Implementing Regulations the existing conventions on re-appointment of BoA members to safeguard and render more apparent security of tenure.

The proposal maintains and strengthens the existing tradition of keeping key judicial tasks, relating to appointment, re-appointment, promotion, security of tenure and training, within the BoA. This tradition has contributed to safeguarding the BoA’s actual and perceived independence for more than 40 years.

At the same time it allows a substantial contribution of the legislature and of the executive in a form that does not worsen the perception of independence of the BoA, but nevertheless raises the level of accountability of the BoA towards the rest of the European Patent Organisation and the public.

Summary of epi Proposal

In its position paper, the epi considers that the issues of independence and efficiency should not be dealt with together, but the focus should be on the structural changes.

They consider that the present safeguards of independence of the BoA should not only be kept, but rather substantially improved, so as to test a new institutional arrangement to be then formalised by a change of the EPC.

The epi proposes creating an independent Judiciary Committee (JC) for the BoA with a minority of BoA members and the rest from judicial appointment bodies in national or European courts. There should also be external observers. The JC should be responsible primarily for appointments.

Epi propose that the Presidium should retain the existing tasks and take on the remaining key judicial tasks, including responsibility for the management for the BoA. There should be external input into the Presidium, by means of two or three of the external members of the Enlarged Board of Appeal and external observers.

Comparison Table of Proposals

Scenario

Name of Body

Composition

Functions

a. Present Situation

Presidium

VP3
6 Chairmen
6 Members
(R.12(1))

Rules of Procedure (R.12(3))
Code of Conduct for external activities (R.12(3)
Business distribution (in extended composition – R.12(4))
Advising VP3 on all remaining functions (R.12(3))

b. CA/16/15

Presidium is not mentioned

BoAC (a new Committee within the AC)

3 AC
4 AC nominated judges
(31)

Issuing directions, objectives and guidance to the BoA (directly or via their President) to manage their work (17, 25, 26, 27)
Proposing a code of conduct and internal instructions for the BoA (26)
Proposing amendments to the Rules of Procedure (27)
Proposing criteria for selection and appointment (29)
Proposing criteria for re-appointment based on “quality and efficiency” (29)

c. Presidium / AMBA

Senate (a new body within the BoA, mimicking a Council for Judiciary)

3 Chairmen
3 Members
2 AC nominated
2 Office nominated
2 Ext. Observers
(5.2.1)

All the functions attributed to the BoAC under scenario b. (5.3) except those given to the Presidium, below

Presidium

President of BoA
3 Chairmen
3 Members
(5.5)

As in a. +
Proposing a system for evaluating the efficiency of the BoA (5.3)
Establishing an evaluation system for the members (5.3)

BoAC

As in b.

Advisory functions to AC

d. epi

Judiciary Committee (JC)

4 BoA
5 AC appointed members of judicial appointment bodies
(6.2)
Ext. observers
(6.10)

Providing nominations for appointment and re-appointment (6.3)
Proposing amendments to the criteria for conflicts of interest (6.5)

Presidium

President BoA
5 Chairmen
5 Members
2/3 Ext. Members EBoA
Ext. observers
(6.9/6.10)

(6.7)
Management of BoA
Propose re-appointment
Selection panels for members
Rules for the organisation of work and enhancing independence
Code of conduct
Internal instructions
Principles for establishing performance criteria and general criteria for case distribution
Checking for conflicts of interest
Provide opinion on changes to Rules of Procedure (7)

BoAC

As in b.

Review management of BoA (6.7)
Possibility to initiate change to Rules of Procedure (7.2)
Conflicts of interest (8.1)

Questions - Specific

Question A: Position of the Boards of Appeal – Independence

- Conflicts of interest

Background information on conflict of interest
Office Questions

“The independence of the Boards of Appeal is enshrined in Article 23 of the EPC. In the past users have sometimes expressed concerns about possible conflicts of interest or about the appointment procedures for members of the Boards of Appeal which could affect the perception of the independence. At many national and international Courts there are specific rules aiming at preventing actual or perceived conflicts of interest of members of the judiciary.”

“If specific rules were introduced for members of the Boards of Appeal what type of scenarios should they cover?”

Our Comments on CA/16/15 and the Questions

Clearly, there is much more to independence than just these two disparate aspects of conflicts of interest and appointments (see the Question D on the BoAC, below).
Moreover, there is no exposition of the concerns expressed, of who expressed them, or when they were expressed. The reader is left to try to imagine some conflicts.
Nevertheless we deal with these two issues here and additional issues in Question D on the BoAC, below.

Principles

The Burgh House principles state that:

“Judges shall not engage in any extra-judicial activity that is incompatible with their judicial function or the efficient and timely functioning of the court of which they are members, or that may affect or may reasonably appear to affect their independence or impartiality.” (point 8.1)

“Each court should establish an appropriate mechanism to give guidance to judges in relation to extra-judicial activities, and to ensure that appropriate means exist for parties to proceedings to raise any concerns.” (point 8.2).

The Magna Carta of Judges states that:

“Deontological principles, distinguished from disciplinary rules, shall guide the actions of judges. They shall be drafted by the judges themselves and be included in their training.” (point 18)

CA/16/15 mentions some regulations of the CJEU and the UPC that incorporate these principles (point 41). Thus, judges:

  • May not hold political office (Art. 4 CJEU)
  • May not engage in any occupation without an exemption from the court (Art. 4 CJEU)
  • Must give a solemn undertaking to behave with integrity (Art. 4 CJEU)
  • Shall not be bound by any instructions (Art. 17 UPC)
  • May not engage in any occupation without an exemption apart from national judicial functions or, for technical judges, where there is no conflict of interest (Art. 17 UPC)
  • Shall not sit on cases where there is a conflict of interest as set out in the Statute (Art. 17 UPC)
Present Situation

The BoA presently already has a number of regulations and codes on conflicts of interest:

  • A statement of independence and that we are not bound by any instructions (Art. 23 EPC)
  • A bar on sitting on cases where there is a personal interest (Art. 24 EPC), in particular there is an obligation on members to inform the Board of any reason for not taking part in any appeal (Art. 24(2) EPC)
  • General obligations on conduct during (Art. 14 ServRegs) and after the end of (Art. 19 ServRegs) service, and incompatible activities (Art. 16 ServRegs)
  • Special obligations to give a solemn undertaking and comply with general matters of judicial conduct (Art. 15 ServRegs)
  • A Code of Conduct concerning outside activities adopted by the Presidium (annex to Circular 135 – CA/105/95)
  • Decision G 2/94 of the Enlarged Board of Appeal, which gives a period of three years before ex-members of the BoA should make oral submissions as an accompanying person at oral proceedings.

The stricter end of service provisions in the Burgh House Principles for any other international court normally leaves the possibility for the former member to continue working (e.g. as lawyer or judge) before other national or international courts. In the case of the BoA, in which many members are exclusively European patent attorneys, such a strict prohibition would mean that e.g. retired BoA members or members that for any other reason decide the leave the BoA, are prohibited to perform the work that they are best qualified to do (see also below the point of reappointment). This would be highly detrimental in particular to the recruitment of members externally from the Office with the requisite professional qualifications and experience.

Our Answers to Office Questions
  • The existing provisions about conflicts of interest seem adequate, but they are not all officially published and thus not widely known
  • A general statement about independence and conflicts of interest similar to those in other courts and those already existing in the Service Regulations should be put into the Implementing Regulations
  • A body in the BoA should incorporate any additional aspects of conduct into the existing Code of Conduct concerning outside activities
  • To align with the Burgh House Principles, an explicit provision for slightly stricter end of service limitations might be of some advantage, but this must be offset by stronger guarantees of reappointment/compensation
  • The proposal in CA/16/15 that the BoAC enhances independence, e.g. via a code of conduct (point 26) goes against the principles of autonomy and independence of judiciary.

- Appointments

Background information on appointments
Office Questions

“The independence of the Boards of Appeal is enshrined in Article 23 of the EPC. In the past users have sometimes expressed concerns about possible conflicts of interest or about the appointment procedures for members of the Boards of Appeal which could affect the perception of the independence. At many national and international Courts there are specific rules aiming at preventing actual or perceived conflicts of interest of members of the judiciary.”

“How could the appointment and re-appointment procedures for the members of the Boards of Appeal be improved and in particular how could more external candidates be attracted?”

Our Comments on CA/16/15 and the Questions

Again, there is no exposition of the concerns expressed, of who expressed them, or when they were expressed. The reader is left to try to imagine some conflicts.

Principles

The Burgh House principles state (point 2) that:

  • Judges shall have the appropriate character, qualifications and experience
  • Procedures for the nomination, election and appointment of judges should be transparent and be safeguarded against improper considerations
  • Information about the procedures should be made public
  • The same applies to re-appointment

The Magna Carta of Judges (point 5) states that “decisions on selection, nomination and career shall be based on objective criteria and taken by the body in charge of guaranteeing independence.”

Recommendation No. R(94) 12, annexed to the Sedimund-Treiber report (CA/103/03 Add. 2) contains similar statements and was considered in the final report of the working party on possible institutional reforms with the EPC as it stood (CA/84/97). This led to the proposal that the Presidium should inter alia choose the members of the selection boards for appointments (point 58).

Recommendation No. R(94) 12 was amended in CM/Rec(2010)12 to take into account aspects of efficiency and accountability of the judiciary. The modern thinking is that the body in charge of guaranteeing independence is a body with a majority from the judiciary concerned, namely a council for the judiciary. 

Present Situation

Members are appointed by the Administrative Council on a proposal from the President of the European Patent Office (Art. 11(3) EPC).

The legal basis and procedure for appointments was set out in CA/81/08 as follows:

I. APPOINTMENT OF MEMBERS OF THE BOARDS OF APPEAL

A. LEGAL BASIS

Under Article 11(3) EPC, members including chairmen of the EPO's boards of appeal and Enlarged Board of Appeal are "appointed by the Administrative Council on a proposal from the President of the European Patent Office". So the President submits a proposal nominating specific individuals for appointment, and the Council can then accept or reject that proposal; the EPC makes no provision for it to appoint a candidate not put forward by the President 1 or to choose from a number of nominees.

This appointment procedure – like the internal DG 3 selection procedure which precedes it – is designed with a view to ensuring the judicial independence of board members (Article 23(3) EPC): firstly in respect of the President who manages the Office (Article 10 EPC) and should not be appointing board members who, in reviewing Office decisions, are not bound by any instructions and must comply only with the Convention; secondly, as is clear from the travaux préparatoires to the EPC, to ensure that appointments are not subject to purely political criteria. Thus, a proposal from the Netherlands delegation that board members be appointed only after consulting the President (rather than on his proposal) was turned down, one reason being that otherwise problems with the members' independence vis-à-vis the Council might arise. 2

Reference is also made to Article 41 of the TRIPS Agreement which provides as follows: "Parties to a proceeding shall have an opportunity for review by a judicial authority of final administrative decisions."

The 1997 "Sedemund-Treiber report" duly emphasises that when selecting board members the main criterion should be ability, that is the ability on the part of the candidate to perform judicial tasks. 3 It also states that DG 3's own selection boards should be retained to this end as an organ of judicial self-governance. 4

The situation at the Office for Harmonization in the Internal Market (OHIM) is very different:

  • Here, the members of the boards of appeal are appointed by OHIM's Administrative Board 5 , and the President of the Boards and the chairmen of individual boards are appointed by the Council of the European Union from a list of at most three candidates prepared by the Administrative Board. 6 OHIM's President has no right of proposal at all.
  • OHIM's boards of appeal are an administrative authority established by EU Council Regulation, and their decisions can be challenged at the European Court of Justice. 7 Therefore, unlike the EPO's boards, they are not a judicial authority handing down final-instance decisions against which there is no further appeal.

B. APPOINTMENT PROCEDURE

As a first step, the vacant post is advertised, internally and (except for chairmen) externally. This is done by publishing the vacancy notice on the EPO's website, intranet, Official Journal and where appropriate other print media, and drawing it to the attention of the delegations on the Administrative Council.

After the closing date for applications, the selection board is convened. It is chaired by the Vice-President DG 3 and has at least four other members (usually board chairmen), including a chairman nominated by the Staff Committee. Its precise composition depends on the technical or legal expertise required for the post in question.

In the light of the application documents (and, in the case of internal candidates, their personal files and other information available) and (except for chairmen) in depth interviews of shortlisted candidates, the selection board decides which ones to recommend to the President in the order of preference.

To help the President in exercising her right of proposal, she is provided with the following documents: a statement of the reasons why the candidate should be appointed, the reports of the selection board, and a draft CA document including the proposed appointee's CV.

If the President sees no reason why the board's recommendation should not be followed, she duly makes a formal proposal for appointment – which to date the Council has always followed.

Our Answers to Office Questions
  • The current procedures are already highly objective and merit based and have worked up to now, but they are not all officially published and thus not widely known
  • In any case, a body within the BoA should lay down the procedure and composition of the selection committee for appointments in order to guarantee independence (and also transparency) – see AMBA/Presidium Proposal
  • With a suitable body in control of the procedure including representation from the Office, with the President of the EPO accepting the recommendations except under very exceptional circumstances that would need to be justified, it might be possible to avoid the possible problems of delegation of the President of the EPO's power in the present proposal, which might not be compatible with the EPC
  • If this is not done, then at the very least, the selection procedure needs to be codified in the regulations
  • In order to attract more external candidates, their security of tenure must be increased, in particular their status as permanent employees, end of service conditions and reappointment criteria should be decided and made transparent
  • The proposal in CA/16/15 that the BoAC set general criteria for selection, recruitment and appointment of BoA members goes against the principle of autonomy and independence of judiciary.

- Re-appointments

Background information on re-appointments
Office Questions

“The independence of the Boards of Appeal is enshrined in Article 23 of the EPC. In the past users have sometimes expressed concerns about possible conflicts of interest or about the appointment procedures for members of the Boards of Appeal which could affect the perception of the independence. At many national and international Courts there are specific rules aiming at preventing actual or perceived conflicts of interest of members of the judiciary.”

“How could the appointment and re-appointment procedures for the members of the Boards of Appeal be improved and in particular how could more external candidates be attracted?”

Our Comments on CA/16/15 and the Questions

Again, there is no exposition of the concerns expressed, of who expressed them, or when they were expressed. The reader is left to try to imagine some conflicts.

The proposal in CA/16/15 would allow the suspicion of extraneous factors affecting BoA decisions, which must be taken solely on the merits of the case. Moreover, security of tenure is a hallmark of independence, which the Burgh House Principles seek to guarantee. In our view, re-appointment should remain the norm except in severe and exceptional circumstances. This should be set out in the Implementing Regulations to the EPC.

In particular, as in any national judiciary, the content of the decisions themselves cannot be a reason for refusing re-nomination; in any case the decisions are taken and drafted in collegiate form, thus their number as well as their content cannot be attributed to one member only.

Disciplinary proceedings, or an appropriate procedure equivalent to that for removal, provide the appropriate route to sanctions if judges fail to carry out their duties in an efficient and proper manner. 1 Refusal of re-appointment should follow the same principles as removal of a BoA member during his or her term of office; it should not be used as a “simpler” solution with no proper means of redress.

We consider appointment models based on other international courts unsuitable owing to the fundamental differences in our situation and work, as set out in connection with the organisational autonomy project. Our situation must take account of the following:

  • The BoA are a judicial instance, in particular a final judicial instance
  • The boards are an expert court more comparable with national courts, which already demands considerable previous professional experience, thus restricting the actual duration of the appointment
  • There is no customary route back to a comparable office in our own countries, especially if we have left a national legal system or have never held judicial office
  • Potential non-reappointment after a brief term of five years and loss of status as judges leads to a suspicion of being under some sort of pressure to conform with an eye to re-appointment, which undermines the independence
  • Also the epi in its position paper (point 6.4) supports the idea of customary re-appointment of BoA members absent good reasons in order to safeguard independence.

Principles

The Burgh House principles state (point 2) that:

Re-appointment relates to security of tenure and irremovability which are fundamental aspects of independence of the judiciary should be enshrined at the highest level. A guarantee in law that can be changed by a simple majority offers weaker protection, whilst customary protection is even weaker.

Re-appointment is not dealt with extensively in the recommendations because it is a rather unusual situation, life appointments being normal in most judiciaries. CM/Rec(2010)12 (points 51, 44 and 46) does state that where recruitment is for a fixed term, decisions on re-appointment should be based on objective criteria, pre-established by law or by the competent authorities, and which, like selection itself, should be independent of the executive and legislative powers.

Present Situation

Board members including chairmen may be re-appointed at the end of their five-year term (Article 23(1) EPC) – again by the Administrative Council, but “after the President of the European Patent Office has been consulted” (Art. 11(3) EPC).

The legal basis and procedure for re-appointments was set out in CA/81/08 as follows:

II. RE-APPOINTMENT OF MEMBERS OF THE BOARDS OF APPEAL

A. LEGAL BASIS

Board members including chairmen may be reappointed at the end of their five-year terms (Article 23(1) EPC) – again by the Administrative Council, but "after the President of the European Patent Office has been consulted" (Article 11(3) EPC).

The fixed-term appointments of board members provided for in the EPC are rather unusual compared with national systems. The reason for them was that initially no one knew how the boards' workloads and manpower needs would develop, and non-reappointment would enable board members to be redeployed elsewhere in the Office if necessary. 8 It was assumed however that re-appointment would be the norm, and their five-year terms should not be used to make their situation more precarious than that of the general body of EPO staff. 9

As a matter of principle, the requirement to reappoint members after a specific period must not lead to any encroachment on their independence. Regular reappointment is also justified by the fact that board members, if they are to do that work efficiently, must have competence, experience and provide continuity. Where serious grounds exist and the Administrative Council takes a decision to this effect, a member of the boards of appeal can in any case be removed from office at any time completely independently from the re-appointment procedure (Article 23(1) EPC).

B. PRACTICE

Before the end of a member's five-year term, the Vice-President DG 3 takes suitable steps to satisfy himself that there is no obstacle to re-appointment and then, on behalf of the Council Chairman, draws up a CA document proposing reappointment and sends it via the President to the Council Secretariat.

There is no formal internal procedure beforehand, and the document which goes to the Council for decision does not give reasons for individual re-appointments.

The size of the boards is such that each member's performance, regardless of whether he is a technically or legally qualified member, is clearly apparent to the other members of his board, his chairman and the Vice-President. In these circumstances the Vice-President or, where appropriate, the relevant chairman, can and should react accordingly when anything out of the ordinary arises concerning an individual member of the boards of appeal, regardless of whether or not the member's re-appointment is due and well before it might become a ground for non-reappointment or removal from office. No such situation has yet arisen and this is also due to the rigorous selection procedure – based strictly on objective and task-related criteria – leading up to the initial appointment (see above).

Our Answers to Office Questions
  • As with the other tasks, the present system of customary re-appointment has worked well for more than thirty years and has been recognised as evidence of the judicial independence of the BoA. Nevertheless, it provides only the weakest and least acceptable safeguard of independence
  • It should be stated in the regulations that re-appointment is the norm unless there are exceptional circumstances, which should be set out
  • The exceptional circumstances should not be based on general performance criteria
  • A body within the BoA should deal with any proposal for not re-appointing a member on the basis of serious grounds (analogous to Article 23(1) EPC) – see Presidium/AMBA proposal
  • The proposal in CA/16/15 that re-appointment be dependent on the quality and efficiency of the members’ work goes against independence and security of tenure

Question B: Work of the Boards of Appeal - Efficiency

Background information on efficiency
Office Questions

“As is apparent from Annex 2 of Document CA16/15, over the years, the Boards of Appeal have accumulated a backlog of pending cases and the average length of proceedings has reached a duration of 34 months, while recently the number of appeals has decreased and the number of withdrawals of appeals increased.

“Do you have any suggestions on how the efficiency of the Boards of Appeal could be improved? What would in your opinion be the optimal length of the proceedings?

Our Comments on CA/16/15 and the Questions

CA/16/15 states (point 8), with no basis, that the average number of cases dealt with by each member of the BoA needs to be improved. As we stated in our paper on CA/16/15, we agree that efficiency plays a role in accountability and may always be questioned, but not to the extent implied by the proposal.

In this respect, the unclear presentation of statistics purporting to compare the efficiency of the BoA to other courts (Annex II of CA/16/15) does not establish that efficiency is a problem. They do not give a reasoned comparison between the courts mentioned and appear to be neither complete nor correct. For example, for the BoA, it is overlooked that about 40% of withdrawals incur significant prior work by the boards. The staff numbers for the CJEU do not include the Référendaires (three or four per judge) and the case numbers for the BPatG appear to include trade mark cases, which are dealt with by fewer judges. A correct appraisal of the statistics gives no indication of any lack of efficiency.

Moreover, the problem of timeliness mentioned in the proposal (point 10) is mainly the result of a number of factors outside the BoAs' control. We note that despite recent improvements from our side, timeliness is currently being made worse by the disruption to succession planning, which will have a drastic effect on the backlog (see section on Present Situation). 

Principles

Judicial independence and functioning indeed has a relationship with accountability, i.e. dealing with cases in an efficient and legally correct way, without undue delay.

CM/Rec(2010)12 (Explanatory memorandum, para. 37) states that efficiency is important, but is should never compromise independence.

Present Situation

Annex 2 of CA/16/15 correctly shows that the number of settled cases has increased in the period from 2011-2013 by 23% and the number of incoming cases has decreased by 13%. For the first time in 2014, the number of settled cases essentially equalled the number of incoming cases.

In this context, the apparent drop in new cases of about 10% over the last five years appears illusory and would not help justify a recruitment freeze. Over this period the following search and grant activity can be observed:

  • The number of searches has increased by about 15%
  • The number of direct grants has increased by 300%!
  • The sum of grants and withdrawals has remained roughly constant

Thus, it could be that the increase in output of the Office in recent years has been the result of a focus of activity on searching and direct granting and that there could be many cases awaiting refusal.

Annex 2 also states that the number of appeals settled per rapporteur is around 21 (14 not counting withdrawals). Firstly, it must be remembered that this figure is an average amongst substantially different technical fields. Members in Boards dealing with highly technical and/or complicated cases might only be able to manage one half of this. Also, about half of the mentioned withdrawals occur after an initial analysis of the case and a communication accompanying the summons to oral proceedings, and thus quite some work.

Concerning a figure of 20 cases per year we refer to the section below entitled, "Do you really want them to spend less time on your case?"

The alleged inefficiency is said to have led to the current backlog and length of proceedings. However, timeliness is the result of a number of factors. For a case as a whole, it involves examination and processing in DG1. For the appeal part, it could involve a remittal, which could be caused by a first instance decision on only some of the issues. The “length of proceedings” in the BoA referred to in the question is the sum of the effect of the backlog on the starting time of a case and the processing time of the case, the latter being generally only six to twelve months. Furthermore parties with a legitimate interest may ask the boards of appeal to accelerate processing of an appeal. If the appeal is accelerated, the length of proceedings becomes approximately equal to the processing time of the appeal, i.e. six to twelve months.

Any freed up capacity owing to withdrawals could be used to start tackling the backlog. However, this is currently being hampered by the freeze on nominations of members and chairmen (currently 22 vacancies). An analysis of this soon to be published on the AMBA website appears to show that if appointments were to be resumed on 1 January 2016, a total of over 400 cases will have been lost as a result of the block on appointments.

A first order calculation puts this in perspective: If the current backlog is about 8500 cases, this is about 280 cases per board and represents an average of a three-year delay per board, assuming a board output of 100 cases per year. If this were to be reduced to a two-year delay, which might be considered reasonable, this would mean reducing the backlog by about 2500 cases. The above-mentioned loss caused by blocked appointment represents about 15% of that work.

It is important the point out that the most promising areas for improving the "efficiency" of the procedure, such as limiting requests or late submissions, no remittal to the first instance, summary decisions etc., might come at a cost to the parties, albeit both proprietors and opponents equally.

Our Answers to Office Questions
  • Make independence the focus of the project, with efficiency as a secondary objective
  • Make a proper analysis of the problem of timeliness considering the role of actors external to the BoA, such as DG1 and the parties
  • Make a proper analysis of the problem of the rate of appeals and backlog, considering the possibility of increasing the workforce, permanently or temporarily
  • Continue with initiatives looking into best practices under the supervision of a new body in the BoA with input from informed users
Do You Really Want Them to Spend Less Time on Your Case?

Dealing with cases

Parties appear to be generally happy with the level to which the boards analyse and prepare the cases so that their arguments can be properly understood. This preparation requires time.

A smooth running Board at full capacity with no special technical difficulties might have the following characteristics:

About 100 cases settled per year.

Of these cases, 70 are dealt with by decision, meaning 30 appeals are withdrawn.

However, of these 30 cases, about one-half are withdrawn only after analysis and a communication by the Board, thus making it only 15 cases being withdrawn without the board having done any work on the case. 1

In the 100 cases there are 60 oral proceedings. However, 20 more oral proceedings had been summoned, but could be cancelled for withdrawal of the appeal, or non-appearance of the (losing) party. 2

Normal working year

Of the 52 working weeks, there remain after subtracting holidays (6 weeks), public holidays (about 12 days), home leave (2 weeks per two years): 43 workable weeks.

If we take an overhead of 6% for general meetings with the Board or within the BoA, seminars/courses, sick leave, etc. that leaves 40 working weeks = 200 days.

Time implications per case for a technical member (rapporteur)

The board has 4 technical members who are the rapporteurs on the cases.

Thus the 85 cases in which the Board performs work (see above), the average rapporteur deals in total with 21 cases, of which 15 involve a written decision. With 60 oral proceedings, the average is 15 per rapporteur. This more or less corresponds to the Figures in Annex 2 of CA/16/15.

The maximum time available for accomplishing the required activities can roughly be estimated as follows:

Activity

Time

Days

The technical member (rapporteur) prepares the case in a written note for the other members (chair and legal member) and usually 3 proposes a communication (in most cases an annex to summons). This communication circulates with the other members of the board for comments/suggestions/ discussion, before it goes out

4 days/case
21 cases

84

When the oral proceedings approach, the rapporteur prepares himself, checks any further submissions, prepares an additional note for the chairman and the legal member

2 days/case
15 cases

30

The day before the oral proceedings the board meets to discuss the situation and to find common ground on the substantive as well as procedural issues

0.5 day/case
15 cases

7.5

Oral proceedings

1 day/case
15 cases

15

The decision is prepared by the rapporteur in written form, it circulates among the board, receives remarks/suggestions/ discussion of the other members and is finalised

4 days/case
15 cases

60

Total

 

196.5

The total for a rapporteur therefore amounts to 196.5 days, of the 200 available days (40 weeks times 5 days).

Time implications for the chairman and the legal members in a board

A board has one budget post for a legal member, which is normally filled by three such members being shared with two other boards.

The chairman and the legal member each deal with the 85 cases as mentioned above.

The time needed to accomplish the required activities can roughly be estimated as follows:

Activity

Time

Days

Preparation of communication/annex to summons

1 day/case
85 cases

85

Preparation for oral proceedings

1 day/case
60 cases

60

Oral proceedings

1 day/case
60 cases

60

Checking the decision

1 days/case
70 cases

70

Total

 

275!

On the above averages, the total for a chairman or a legal member would amount to 275 days in a working year of 200 days....

This shows that these members must be using any spare time created by oral proceedings not taking up a whole day, or a summons not requiring too much time, etc., to deal with the next case/preparation or decision.

The above also shows that very much depends on a proper preparation of the chairman and the legal member by the rapporteur, to make their working days fit in a normal working year.

The figures of about 21 cases per year for a rapporteur and four members per Board for a Chairman appear reasonable.

Question C. Work of the Boards of Appeal – Procedure

Background information on Rules of Procedure
Office Questions

“The Rules of Procedure of the Boards of Appeal are currently drawn up by the Presidium of the Boards of Appeal (Rule 11(3) of the Implementing Regulations of the European Patent Convention). In the past, users have sometimes expressed concerns about the functioning and the consistency of application of some of these Rules and the impact on the efficiency, transparency and predictability of proceedings, including the right of the parties to be heard.

“Do you have any suggestions of improvement of the procedures before the Boards of Appeal?

“Which changes to the procedures could contribute to increasing efficiency and/or predictability and transparency of proceedings?”

Principles

The ENCJ recommend (page 19) that the judiciary is responsible for proposing legislation concerning the courts and the judiciary.

The CJEU does this (Article 253 TFEU).

It should be pointed out that the Rules of Procedure (RPBA) relate primarily to procedural matters before the BoA and not as in some courts, e.g. the UPC, also to more substantive aspects, which are in the Implementing Regulations of the EPC. The argument that the legislative should be involved in the Rules of Procedure of the BoA is therefore weaker than for these courts.

Since the BoAC is an advisory committee to the AC (Art. 33(2)(e) EPC; Art. 14(1) RPAC), it cannot have more competences than the AC itself. The AC can only approve the RPBA (Art. 23(4) EPC), it does not have the right to propose changes to the RPBA. It is difficult to imagine that a BoAC could be adopting the RPBA as suggested in CA/16/15. Only by changing the EPC with a diplomatic conference can this setup be changed. Since that is not an option, this leaves only a body of the institution for which the RPBA are to be adopted anyway, i.e. the Presidium or something similar.

Present Situation

Art. 23(4) EPC makes clear that there is one body that adopts the RPBA and that a different body, the AC then approves (or disapproves) them. Currently, Rule 12 EPC states that the Presidium, as the autonomous body of the BOA, shall adopt the RPBA. This is a clear indication of the organisational autonomy of the BOA.

The RPBA clearly set out what is expected of the parties to appeal proceedings and what they can expect during the appeal proceedings, in reaction to certain actions of the other parties. In that respect there is an even distribution of advantages and disadvantages on the parties. One important goal is that the BoA can start on a case which is better prepared by the parties, so that the efficiency of its work is improved, i.e. the board can deal with more cases and would not need to be doing the work of the parties.

Our Answers to Office Questions
  • The competence for setting the RPBA is and should remain with the BoA itself
  • Interested circles (e.g. from the Office, AC or the users) could be involved in the process by having their representatives as observers/participants in a body within the BoA – see Presidium/AMBA proposal

Question D. Boards of Appeals Committee (BOAC)

The following table shows three scenarios for the body (bodies) having the key judicial functions in the BoA.

Scenario

Name of Body

Composition

Functions

a. Present Situation

Presidium

VP3
6 Chairmen
6 Members
(R.12(1))

Rules of Procedure (R.12(3))
Code of Conduct for external activities (R.12(3)
Business distribution (in extended composition – R.12(4))
Advising VP3 on all remaining functions (R.12(3))

b. CA/16/15

Presidium is not mentioned

BoAC (a new Committee within the AC)

3 AC
4 AC nominated judges
(31)

Issuing directions, objectives and guidance to the BoA (directly or via their President) to manage their work (17, 25, 26, 27)
Proposing a code of conduct and internal instructions for the BoA (26)
Proposing amendments to the Rules of Procedure (27)
Proposing criteria for selection and appointment (29)
Proposing criteria for re-appointment based on “quality and efficiency” (29)

c. Presidium / AMBA

Senate (a new body within the BoA, mimicking a Council for Judiciary)

3 Chairmen
3 Members
2 AC nominated
2 Office nominated
2 Ext. Observers
(5.2.1)

All the functions attributed to the BoAC under scenario b. (5.3) except those given to the Presidium, below

Presidium

President of BoA
3 Chairmen
3 Members
(5.5)

As in a. +
Proposing a system for evaluating the efficiency of the BoA (5.3)
Establishing an evaluation system for the members (5.3)

BoAC

As in b.

Advisory functions to AC

d. epi

Judiciary Committee (JC)

4 BoA
5 AC appointed members of judicial appointment bodies
(6.2)
Ext. observers
(6.10)

Providing nominations for appointment and re-appointment (6.3)
Proposing amendments to the criteria for conflicts of interest (6.5)

Presidium

President BoA
5 Chairmen
5 Members
2/3 Ext. Members EBoA
Ext. observers
(6.9/6.10)

(6.7)
Management of BoA
Propose re-appointment
Selection panels for members
Rules for the organisation of work and enhancing independence
Code of conduct
Internal instructions
Principles for establishing performance criteria and general criteria for case distribution
Checking for conflicts of interest
Provide opinion on changes to Rules of Procedure (7)

BoAC

As in b.

Review management of BoA (6.7)
Possibility to initiate change to Rules of Procedure (7.2)
Conflicts of interest (8.1)

Background information on the BoAC
Office Questions

“It is envisaged to create a special sub-Committee of the Administrative Council (BOAC) in order to monitor the general functioning of the BOA and to advise and make general proposals for improvements both to the Administrative Council and the future President of the Boards of Appeal (currently Vice-President of DG 3). Currently, a mixed composition of the BOAC consisting of members of the Administrative Council and external members to be chosen among senior judges is envisaged. However, considering the paramount importance of an optimal functioning of the Boards of Appeal for the European patent system and its users, a participation of (a) user representative(s) could also be envisaged as well as user consultations to be carried out by the BOAC concerning the general functioning of the Boards of Appeal and their Rules of Procedure.

“Do you think that the users should be given a seat in the BOAC?

“Would you be in favour of the BOAC carrying out surveys among users concerning the general functioning of the Boards of Appeal with a view to make general proposals for improvements?

“Would you in particular be in favour of the BOAC having the possibility to make proposals for changes to the Rules of procedure of the Boards of Appeal?”

Our Comments on CA/16/15 and the Questions

We suggest reading CA/16/15 in full after which it will become clear that the BoAC is intended to deal with much more than just the general functioning of the BOA, namely also performance appraisals, criteria for re-nomination, setting of targets, proposing changes to the RPBA, etc.

In our report, we argue why giving these tasks to the BoAC is problematic in view of:

  • The separation of powers foreseen by the EPC
  • A worsening of the perceived independence compared with the present arrangement which is largely uncodified and based on convention
  • The internationally recognised principles of judicial independence as set out in various standards (see below).
Principles

The AC gave its full endorsement of and support to the principle of independence of the members of the Boards of Appeal, as specifically set out in Article 23 EPC and embodied in internationally recognised principles of judicial independence.

CA/16/15 states that recommendations and reports of the European Network of Councils for the Judiciary (ENCJ) and the Burgh House Principles (drawn up by the International Law Association in 2004) have been duly considered (point 6).

However, in our view, these recommendations actually demonstrate that the tasks foreseen for the BoAC (Management, Appointment, Re-appointment and Code of conduct) go in the opposite direction from the internationally recognised principles of judicial independence.

Firstly, the direct presence of AC members (in combination with the absence of any appointee from the President of the Office) renders this body a committee all within the AC and even the presence therein of retired national or international Judges (i.e. not of the same Judiciary whose independence should be monitored) renders the BoAC totally incomparable with any existing organ (at least in Europe) expressly created to monitor the independency of a Judiciary.

Secondly, the tasks foreseen for the BoAC go against the fundamental principle of separation of powers that underlies all judicial systems. As the Burgh House Principles put it (point 1 - emphasis added):

“1. Independence and freedom from interference

1.1 ...

1.2 Where a court is established as an organ or under the auspices of an international organisation, the court and judges shall exercise their judicial functions free from interference from other organs or authorities of that organisation. This freedom shall apply both to the judicial process in pending cases, including the assignment of cases to particular judges, and to the operation of the court and its registry.

1.3 The court shall be free to determine the conditions for its internal administration, including staff recruitment policy, information systems and allocation of budgetary expenditure.”

These two sub-articles alone explicitly cover the Management and Appointment tasks foreseen for the BoAC. These and others covered in other, more extensive recommendations.

For example, the Council of Europe recommendation CM/Rec(2010)12 with its explanatory memorandum constitutes an important and informative document. It specifies precisely the recommended tasks of the judiciary. Thus, it mentions that the judiciary should be responsible for its management(point 26 and Explanatory memorandum, point 34), its appointments (point 46 and Explanatory memorandum, point 51) and its code of conduct (point 73), and should be involved in disciplinary (E.g. via the code of conduct, Ibid. Explanatory memorandum, point 71) and budgetary matters (point 40). It also mentions the need for efficiency, but states that the search for increased efficiency should never compromise independence (Explanatory memorandum, point 37).

The ENCJ report (p. 8 and Appendix B) discusses general principles of independence and accountability, surveying many documents relating to European and international standards in order to avoid, as it puts it, “re-inventing the wheel”. It gives similar recommendations. These were also mentioned in an AMBA position paper submitted to Board 28 earlier this year.

In order to minimise future criticism regarding independence, any reform should seek to achieve the greatest separation between the BoA on the one hand and the rest of the Office and the AC on the other, as exemplified in decision R 19/12 which speaks of the need for an “Abstandsgebot” (points 13.1, 13.2). In our view, this is best done by adhering to recommended standards, which have been drawn up with this object in mind. It is against these standards that the proposals in CA/16/15 will be judged.

With any principle, it is generally possible to find some European country that does not fully comply with it, or which is a (just acceptable) exception. As with the legal basis, the BoA would like to see the institutional setting and the guarantees of independence and autonomy of the BoA clearly complying with the above principles. It would be a mistake, and would justly attract criticism, to search for exceptions to principles, so as to arrive at a “bare minimum” solution which is not clearly wrong. The European patent system needs a judicial structure which is clearly right.

If the EPO is a contender for the best patent office in the world, why should the BoA not strive to be the European patent judiciary with the best guarantees of judicial independence and accountability that we can achieve under the constraints of the EPC?

Councils for the Judiciary

The BoA acknowledge and understand the wish of the AC to be more informed, and, where possible, more involved. This forms part of the accountability of the BoA to the “outside world”, which, in a modern judiciary, is the counterpart to independence (ENCJ Report 2013-2014, Appendix B, section 11.3, A). This has been addressed in other judicial systems and it has been satisfied by establishing councils for the judiciary.

Firstly, the Council of Europe in CM/Rec(2010)12 (chapter IV, point 26 and Explanatory memorandum, point 34) recommends councils for the judiciary as a safeguard of independence. The same document (chapter IV, Explanatory memorandum, point 6) also promotes the independence of judges, and the quality and efficiency of the judiciary, through the creation of the Consultative Council of European Judges (CCJE). The CCJE has, in turn, also recommended councils for the judiciary (section II) to achieve these aims.

Councils for the judiciary also provide transparency, accountability and reporting (ENCJ Report 2013-2014, Appendix B, section 11.1, B) This allows them to assume a wider range of tasks than the judiciary alone and this is reflected in the recommendations for the tasks of judiciaries which have a council.

One study into councils for the judiciary summed up their role as follows:

“Judicial councils are bodies that are designed to insulate the functions of appointment, promotion, and discipline of judges from the partisan political process while ensuring some level of accountability. Judicial councils lie somewhere in between the polar extremes of letting judges manage their own affairs and the alternative of complete political control of appointments, promotion, and discipline.”

The essential functions of a council for the judiciary are set out variously in many documents (see, e.g., ENCJ Report 2013-2014 , page 19, or Opinion CCJE 10(2007), section V), and tend to include the general core of:

  • Appointment and promotion of judges
  • Discipline and judicial ethics
  • Administration of the courts
  • Performance management of the judiciary
  • Drafting or proposing legislation concerning the judiciary and/or courts
  • Training
  • Finances

CA/16/15 acknowledges that many European states have councils for the judiciary, or similar institutions which monitor independence and efficiency (point 24). It further states that the BoAC is a committee with similar functions.

It is true that all the tasks foreseen for the BoAC are those that the CCJE recommends be performed by a council for the judiciary. Furthermore, the councils in many European countries do indeed carry out, or are recommended to carry out, these tasks (See, e.g., the current situation in the Council of Europe’s Member States, CCJE (2007) 3, 19 March 2007, and in particular the recommendations in section II).

The recommendations for the composition for a council for the judiciary are (Opinion CCJE 10(2007), section III), however:

  • At least 50% are members of the judiciary in question
  • Of which at least 50% should be chosen by their peers.

The BoAC does not include any members of the BoA and thus cannot be considered as a council for the judiciary.

Present Situation

We already have the Presidium as the autonomous body in the BoA. It is responsible for the Rules of Procedure (see above), advising the Vice-President and, when extended to include all Chairmen, for establishing the Business Distribution Scheme (allocating judges and cases).

Our Answers to Office Questions
  • Users could be given a seat on the BoAC, but the BoAC in its proposed composition should not have judicial functions
  • For an optimum balance between independence and accountability, a body consisting of a majority of members of the BoA as well as other interested circles, such as users, should be set up to have these functions
  • The BoAC might carry out user surveys, but it is for a judicial body to decide on what improvements to make as a result
  • The BoAC might make proposals for changes to the Rules of procedure of the Boards of Appeal, but it is for a judicial body to decide on what proposals to adopt (see above).

Question E. Proceedings of petitions for review

Congratulations - you have reached the end of the Questionnaire!



Background information on petitions for review
Office Questions

“The possibility for a party to file a petition for review of a decision of the Boards of Appeal to the Enlarged Board of Appeal has been introduced by the Revision of the European Patent Convention of 29.11.2000. While users have in general welcomed this new possibility, there are some concerns expressed relating to the composition of the Enlarged Board of Appeal in such proceedings which consists exclusively of internal members pursuant to Rule 109(2) of the Implementing Regulations to the European Patent Convention.

“Do you find the current composition of the Enlarged Board of Appeal in review proceedings, with exclusively internal members, adequate? What kind of alternative composition would be better?”

Principles

In principle, the composition of a Board is a matter for the BoA

Present Situation

The composition of the EBA in review cases is regulated in Rule 109 EPC.

The three-man composition is two legal members and one technical member (Rule 109(2)(a) EPC). This is presently only members of the BoA, namely the legally qualified Chairman of the EBA, or his deputy, as Chairman, one legally qualified member as rapporteur and a technically qualified chairman of a board as member (Art. 6, Business Distribution Scheme (BDS) of the EBA).

Substituting the legally qualified member by an external legally qualified member would mean that the latter would have to be the rapporteur, unless it is accepted that the technically qualified chairman would perform this function. Since it is foreseen that external members, if called upon, are selected case-by-case in the alphabetical order of the designation of their Contracting States (Art. 3(1) BDS EBA), this would mean that with about 20 cases a year and 22 external members, each external member would have one case a year. This is not necessarily conducive to acquire sufficient experience to perform the function as rapporteur. Adding an external member to the three-man composition would require an amendment of the Implementing Regulations.

The five-man composition is four legal members and one technical member (Rule 109(2)(b) EPC). It is currently already possible to have one external member in the EBA (Art. 7(3) BDS EBA). In that case, the above issues would not necessarily arise.

The incorporation of external members would increase the cost of the procedures. This is one reason why it was not considered when the number of cases before the three-man board was rather higher than it is now.

Our Answers to Office Questions
  • External members could easily be incorporated into the five-man composition
  • It is more problematic for the three-man composition and has a greater cost implication
  • A body in the BoA (e.g. the proposed Senate) would be the appropriate place for a detailed discussion of amendments to the implementing regulations that could allow participation of external members in the petition for review while keeping in balance expediency of procedure and costs.