The EPO and the Rule of Law

Written by: Friedrich Scheele

Like other large towns in the world, Munich is surrounded by a number of smaller cities or villages, known as the Munich Area, offering living in the beautiful countryside of Oberbayern and working in the urban area of Munich or vice versa. One of the nicest locations is the municipality of Haar, which borders on the Munich city area in the east and is part of the “Landkreis München”, which is similar to a county with the county seat in Munich.

In 2017, to signal a structural, organizational and clear separation between the European Patent Office (EPO) and its several Boards of Appeal (BoA), the latter were moved to Haar. A motive for the move might be seen in case R 19/12 dated 25 April 2014, where the Enlarged Board of Appeal (EBA) held that the incorporation of the Boards of Appeal into the EPO constituted a structural deficiency. This was because the Boards, being an entity of the patent granting authority, were not organized like a court. The fact that the German Federal Constitutional Court (FCC) later instituted three constitutional complaints has caused some to consider this an indication that the court also had at least some doubt as to the judicial independence of the members of the EPO Boards of Appeal.

Now, in a referral to the Enlarged Board, one of the BoA raises the question of whether a hearing in Haar infringes the parties’ right to be heard if the party requests a hearing in Munich. The right to be heard comprises the right to be able to present arguments in the right venue.

According to Article 6 of the European Patent Convention, “The European Patent Office shall be located in Munich. It shall have a branch at The Hague.” A summons to a Board’s seat in Munich or the Hague is therefore in line with the Convention. But what about summons to Haar?

EP case-law recognizes that a summons may be made to a place other than the official residence of the institution inviting the person concerned. But such exception might not apply for all work of the Boards of Appeal on a regular basis.

Beside the question of where the seat of the Boards of Appeal may reside, the decision emphasizes that only a party to a proceeding is entitled to appeal a decision, which is not the case for someone having filed a third party submission.

Nevertheless, if the EBA does not find a satisfactory answer to the question of whether the seat in Haar is authorized in the European Patent Convention, an amendment of Article 6 might be necessary – to make Haar the official seat of the Boards of Appeal.

In the meantime, appellants filing an admissible appeal may be able to delay proceedings if summoned. However, this time period may be short as the EBA summoned the parties to oral proceedings already on 16 July 2019. The EBA invited the public to write amicus curie briefs to the Board – which only the President of the EPO did.

The judicial independence was subject of another recent decision T 1473/13. In an ex parte Appeal against a decision of an Examining Division, the applicant inter alia requested to stay proceedings until the German FCC has decided about the alleged insufficient judicial relief at the European Patent Office against a decision of the Boards of Appeal. One of the Boards discussed pros and cons of a stay in view of EPC and case law and considered how to balance the danger of delivering a decision without being entitled or not to deliver a decision by stay of the proceedings and, additionally, what consequences would these decisions have in view of the unknown future decision of the FCC.

The Board found a similar situation in the history of the German Patent Office in the 1960s. At that time, decisions of the examining sections were solely subject to re-examination by Boards of Appeal which were part of the Patent Office. The Federal Administrative Court ruled that the German Patent Office was not a court within the meaning of the law; the decisions of its Boards of Appeal were administrative acts which could be contested before the Administrative Court. In order to have technical expertise in the court bodies, the Federal Patent Court was founded. In the written decision, the EPO Board balanced some obvious possibilities of how to proceed if the FCC found the decisions of the EPO Boards of Appeal to be administrative rulings. Then these rulings would, in principle, be subject to review by a court – either an existing one or one to be set up. Alternatively, it may be that a patent application refused by a Board of Appeal could be converted into a (here: German) patent application.

A further similar situation can be found at the European Union Intellectual Property Office (EUIPO). Decisions of Boards of Appeal are subject to review by the General Court and under certain conditions in addition by the Court of Justice of the European Union.

The Board, however, further found that the appellant had unfortunately not shown that a non-stay would disadvantage him, so that “in absence of an established disadvantage for the appellant, the respective adverse consequences of staying or not staying the proceedings cannot be balanced. Consequently, the request for a stay must be refused”.