Boards of Appeal releases annual report 2018

A structural reform of the Boards of Appeal entered into force in January 2017, following strong criticism that it was no longer independent of EPO influence. This resulted in the Boards of Appeal being largely separated from the EPO, both physically and managerially.

The headquarters were moved to premises in the Munich district of Haar and independent president, Carl Josefsson, was elected. However, the Administrative Council of the EPO, including incumbent EPO president António Campinos, retains control of the budget of the Boards of Appeal.

In five years’ time

Responding to criticism over a perceived dip in quality of Boards of Appeal proceedings, Josefsson compiled a five-year plan. The annual report directly acknowledges the Boards of Appeal’s renewed commitment to quality. This refers less to the technical aspects of patent cases, and more to the focus on communications, documentation drafting and methodology.

Levels of communication both in and from the Boards of Appeal have often been criticised. As such, the report represents a drive by Josefsson to increase the quality in decisions being made. It also suggests an acknowledgement that a more effective workforce relies on more effective internal communications.

According to the report, which is found on the Boards of Appeal website, a working group of chairmen and Boards of Appeal members will deliver the results of this initiative in mid-2019.

Natalie Kirchhofer

The five-year plan also aims to combat the current backlog of 7000 cases pending. An increase in the number of technically-qualified staff sees this backlog beginning to be addressed, an impetus well-received by the European patent attorney community.

Natalie Kirchhofer, patent attorney at Munich firm Cohausz & Florack, notes the change in approach from the era of previous president Benoît Battistelli. “We welcome the strong efforts of Carl Josefsson to speed up the average length of appeal proceedings and get rid of the huge backlog of cases caused by the many positions that were left vacant under the Battistelli administration.”

However, Alex Robinson, patent attorney at Mathys & Squire, thinks it is important for the EPO to consider why the number of appeals filed each year is continuing to rise. “In particular, it’s important that, in the efforts to increase the speed of examination and opposition proceedings, the quality of decision-making at first instance should not suffer. Erroneous decisions made in haste will contribute further to a growing backlog of appeals.”

On a technicality

Furthermore, the Administrative Council of the EPO has approved 23 additional technically-qualified member posts for the 2019 budget. A request has also been issued for another 16 posts in the Boards of Appeal budget for 2020. If all goes ahead, the Boards of Appeal could see a 33% increase in technical member capacity from 2019 to 2020.

The recruitment of technically-qualified Boards of Appeal members is intrinsic to addressing quality levels. Kirchhofer says, “If the highest level of quality is to be maintained, increasing the number of technically and legally qualified board members is the only way to go. It is clear from the report that the required additional capacity has been, and is further going to be, staffed in the next two years.”

The statement from Cohausz & Florack also notes that positive results are already being noted in the attorney firm’s daily practice, with an increase in the issuing of summons to oral proceedings.

Gottfried Schüll

However, the report caveats its commitment to a reduction in a backlog of proceedings with the acknowledgement that, “due to a large increase in incoming cases, backlog and pendency will nevertheless continue to grow in the short term”. Yet for some attorneys, the continued acknowledgement of an ongoing problem puts the Boards of Appeal in a positive light.

“Backlog and pendency will continue to grow in the short term,” says Gottfried Schüll, patent attorney at Cohausz & Florack. “This is somehow the best news as it seems to confirm that reasonable self-criticism is back.”

“Substantial further measures will have to follow but we believe the blatant tasks are accepted and first logical steps have been taken.”

More boards, less people

Kirchhofer also points out what the report does not mention. “Whereas the number of technically-qualified members increases dramatically, the number of boards will not. Thus, in the future, a single chairperson will be responsible for many more technically-qualified members and will need to handle many more oral hearings, likely several per week.”

This increases the likelihood that a chairperson is less knowledgeable about the contents of the files and documents in cases. Less technical in-depth understanding would particularly negatively impact complex technical and pharmaceutical cases – perhaps detrimental to the Boards of Appeal’s attempt to heighten quality.

“The opinion and understanding of the responsible rapporteur will likely become more important. Parties should not simply presume that all board members know the file equally well, or in all details at all,” says Kirchhofer.

Too early to tell

Levels of productivity, which have long been of concern to those using the Boards of Appeal, are being addressed. In 2018, according to the annual report, 3032 technical appeal cases were received. This is 8.4% more than in 2017.

Furthermore, 2733 technical appeal cases were settled, marking a 19.7% increase compared with the same period in 2017. This is a combined production increase of 22.6% in 2017 and 2018. “The increase in productivity is due to a concerted effort by all members of the Boards of Appeal and their support staff,” claims the report

Alex Robinson

This bodes well for the bolstering of internal harmony at the Boards of Appeal. But onlookers must remain wary, warn some in the European patent law market. “The headline figure of a 22.6% increase in the number of cases settled is, on the face of it, impressive,” says Alex Robinson. “However, it’s too early to draw real conclusions from this.”

“If we look at the absolute numbers for the period 2014-2018, we see that from 2014-2017 the number of cases settled each year fluctuated around 2200 to 2300. While it’s encouraging to see a marked increase in 2018, to 2733 cases settled, this could just be a spike. It will be a few years yet before we can say whether or not this marks the start of a new trend.”

Short-term solution

According to section 4.2 of the annual report, a “comprehensive revision of the Rules of Procedure of the Boards of Appeal is underway”. The report states that the Board’s aim is to increase efficiency by reducing the number of issues to be treated, increasing predictability for the parties and improving harmonisation.

For Robinson, the proposed revisions are likely to constrain the ability of parties to introduce new claims or new documents during the appeal procedure. Robinson says, “This could well lead to an increased workload for the departments of first instance. This is particularly true of the Opposition Divisions. Cautious patentees could be ‘front-loading’ every conceivable request as a precaution against a finding of inadmissibility in any eventual appeal proceedings.”

Mathias Karlhuber

Mathias Karlhuber, patent attorney and Patents Rapporteur of the IP Commission of the International Chamber of Commerce (ICC), believes the revised rules are likely only to relieve the Boards of Appeal in the very short term. As it stands, they are not a sustainable long-term option.

Karlhuber says, “Rather they will not serve the users of the system on a global scale. The proposed new Rules of Procedure impose considerable further limits on the flexibility of the parties in appeal, especially of patentees defending their patent. They will likely lead to overloading the first instance proceedings with all conceivable lines of defence (hence auxiliary requests) in order to have those on file.”

“So, while eventually there may be short-term relief for the Boards of Appeal, at least in opposition, the game will likely substantially change for the first instance before the Opposition Division.”

Location, location

At the end of 2017, the Boards of Appeal and its employees moved to Haar from the EPO main building in Munich. In many public statements, including interviews with JUVE Patent, employees of the Boards of Appeal described the move as a form of disciplinary action by Battistelli.

The move to Haar is now being challenged within the terms of the European Patent Convention. It follows an intervention by European patent attorney Hans-Dieter Jostarndt in the course of the proceedings against non-practising entity IPCom. Jostarndt requested that an oral hearing scheduled for 25 January be moved to the seat of the EPO in Munich because, he claims, “Haar is obviously not intended in the EPC as a place for acts and negotiations.”

Perhaps clarification on the validity of location for the Boards of Appeal will be the theme of the annual report 2019.