EPO: The fight for independence

A way from the strike action, demonstrations, and the continuing dispute between the European Patent Office’s (EPO) staff and management, it is easy to forget that the office actually has a job to do.

During much of the last year or so accusations were levelled against both EPO president Benoît Battistelli and his senior management.

Leaked documents apparently showing changes to staff guidelines, notices of strikes, public condemnation of the office’s management by its staff union, and murmurings of suspensions have punctuated what should have been an exciting few months for the EPO as it prepares for the arrival of the unitary patent.

But there are also calls for a much more drastic change: a restructuring of the European Patent Convention (EPC), the treaty that set up the office, in order to protect the independence of the office’s appeal boards, which hear disputes over the grant and invalidation of patents.

Calls for greater independence were brought to the public’s attention after Battistelli allegedly placed a ‘house ban’ on a member of the office’s Enlarged Board of Appeal, one of more than 20 appeal boards at the office.

The Staff Union of the EPO (SUEPO) argued that Battistelli did not have the power to do so because the boards, according to the EPC, are supposed to be independent.

In the following months, the UK’s Chartered Institute of Patent Attorneys (CIPA) weighed in on the issue of independence, as did the European Patent Lawyers Association (EPLAW), although EPLAW did not directly reference the suspension.

CIPA, in a letter from the chair of its patents committee James Boff, said there should be a stronger “separation of powers” between an oversight body—in this case the Administrative Council (AC)—an executive body, namely the EPO and its president, and a judiciary, ie, the boards of appeal.

The letter said: “CIPA is of the view that amendment to the EPC is necessary to give a secure guarantee of independence to the boards of appeal.”

EPLAW put forward similar views. In response to an EPO-led consultation on the future of the appeal boards, which ended in June, EPLAW said it was concerned by the EPO’s proposals to increase the autonomy, independence and efficiency of the boards without reforming the EPC.

“The larger task of a treaty revision should not detract from the benefits the proposed reforms could bring in the interim,” it added in the letter.

The need for change

Speaking to WIPR, Chris Mercer, a consultant at patent and trademark attorneys firm Carpmaels & Ransford in London, says that in theory the EPC should be amended and that the convention is “somewhat conflicting”.

“One article says the boards are independent but another article says that the president of the office has responsibility for all of the staff,” Mercer explains.

“In theory all human resources matters are eventually dealt with by the president. But that makes it difficult to say boards of appeal are independent from those granting the patents.”

Wouter Pors, partner at law firm Bird & Bird in The Hague, agrees.

“Independence for the boards of appeal needs to be guaranteed right now. But at the moment there is a problem within the EPC,” he says, also referring to the seemingly contradictory parts of the framework.

“Article 23 says the boards of appeal are independent but article 15 says they are part of the EPO.”

Pors says that Battistelli has tried to increase the independence of the boards without actually amending the EPC itself, but that his efforts were “not satisfactory”.

“Increasing the board’s independence without amending the EPC depends on Battistelli delegating the powers he has to the boards of appeal, but how permanent would that delegation be?

“If he can take the decision to delegate powers he can also undo it, so it is not the best guarantee.”

Mercer adds that, with the EPC in its current form, there is an argument that the EPO is not compliant with the TRIPS Agreement.

“TRIPS says that you need to have two instances of appeal. But if the boards of appeal at the EPO are merely an administrative function run by the president you could say there is in fact no level of appeal at all.

“If they are independent then you can say you definitely have a valid appeal option and that would be good as far as TRIPS is concerned.”

Mercer also says that the disciplinary matters, which occurred last year, raise the question of how to separate responsibilities.

“If you read article 11, 12 or 13 of the EPC it says the AC has disciplinary power over the boards of appeal, which would imply that the president doesn’t. But then there is this other article which says that says the president has power over all his staff.

“Nobody wants people to say that the EPO is not compliant with TRIPS and doesn’t have an independent appeal process. If people start to really think the boards of appeal are not independent there may be legal ramifications.”

In its own consultation on reform of the appeal boards, the EPO said it was proposing to implement a separate president of the boards of appeal and that he or she and Battistelli would be subordinate to the AC.

Pors adds: “Currently the EPO will never interfere with an appeal board decision regarding a patent but if you take the EPC as it currently stands there is an argument that they technically could.

“It’s not a problem of what actually happens but what could happen; they need to be seen to be independent.”

What is the likelihood of Battistelli sticking to his plans?

Mercer and Pors are in agreement that Battistelli would want to see that the boards are independent.

But despite both the AC and Battistelli being willing to implement change, altering the convention will not be a simple matter of sitting down and amending it overnight.

Mercer explains that to implement “true reform” of the EPC requires calling a diplomatic council between all of the EPO’s contracting member states, and that due to the difficulties of organising it there “would not be much appetite” for it.

He adds: “There may also be other issues bubbling under the surface that people would not want to come to the fore which may well do if a diplomatic conference was held.

“Unless the EPO is handed an opinion which says ‘the boards of appeal will never be independent until we change the EPC’ there is unlikely to be anything that would trigger a diplomatic conference.”

In a statement sent to WIPR, the EPO said: “It is a clear choice of the AC to conduct reform within the existing legal context.

“A lot can be achieved within the EPC to achieve an improved perception of independence of the boards of appeal. It should also be noted that the independence as such has never been questioned,” the office added.

Troubled times

Those who have been following events at the EPO over the last few months will need little introduction to some of the other problems that have beset the office.

The disputes between the office’s management and certain staff members are still seemingly, despite attempts at reconciliation in the form of “social dialogue”, showing little sign of thawing.

Disagreements range from alleged amendments to staff sick leave regulations to a curb on union-related activity.

Mercer says this situation is unlikely to change as a result of any potential EPC reform.

“Only 400 or so employees have anything to do with the boards of appeals. Most of the other issues are between Battistelli, the office’s management and examiners.”

Pors adds that not all tensions will disappear even in the hypothetical situation of a reform to the EPC.

He says that the disagreements are problematic and that while some of the statements coming out of SUEPO may have an element of bias, Battistelli has “at times acted in a way that doesn’t help the situation”.

“However, at least an effort has been made to discuss issues,” he adds, referencing the recent discussions between the AC, Battistelli and SUEPO.

He says in the immediate future there is a need for short-term reform to resolve issues in the best way “within the current framework”.

“In the long term we need to properly amend the EPC but we can’t wait for that as it will take too long.”

It seems that although the desire to reform the boards of appeal is there, the practicality of doing so is not.

The AC has outlined its plans for amendments and is currently assessing responses to its consultation.

But the consensus seems to be that without true reform of the EPC, which might be a long and arduous process, the changes may not be significant enough. Small amendments may come, but widespread changes are unlikely to occur any time soon.