“We have a challenge with the case backlog at the Boards of Appeal”

JUVE Patent: What have been the biggest areas of improvement in quality at the Boards of Appeal and what still requires improvement?

Carl Josefsson: We must meet expectations from society on the highest quality of our decisions. As we have a huge backlog of cases, we are focusing a lot on increasing efficiency. In order to ensure that efficiency gains are made at no cost to the quality of our decisions, I have launched an initiative on quality. We are currently preparing a document which outlines the most important elements that can contribute to the quality of our decisions. In autumn this year, this document will be discussed with user associations and the Boards of Appeal Committee. Eventually, it will be made available to the general public.

What efforts are being made to alleviate the backlog of cases and increase efficiency?

I have formulated an overall five-year objective, which was supported by the Boards of Appeal Committee. The objective is that by 2023 we will settle 90% of our cases within 30 months, and that the 9000 pending cases will be reduced to below 7000. At the moment, we settle 90% of our cases within about 60 months, and the average pendency time is three years.

“We have improved the planning of oral proceedings”

Achieving this requires an increase in the productivity of the Boards of Appeal by some 30%, as well as the allocation of additional resources for a limited period of time. We have already increased productivity by more than 20% and are well on track to reach the five-year objective. My request for additional technical member capacity also received support from the president of the EPO and was decided by the Administrative Council.

How many members are there currently at the Boards of Appeal? How many would you like?

At the moment there are 29 chairpersons and 142 members of the Boards of Appeal. The vast majority of these are technically qualified. For 2019, I requested and received 23 additional technical member posts, most of which will be filled by the end of the year. For 2020, I requested another 16 additional member posts.

How do you sustain an effective workforce at the Boards of Appeal?

The commitment of the members and staff of the Boards of Appeal is the main reason for our high performance. Another important reason is better planning. We have oral proceedings in most cases and we have improved the advance planning of these. To make the work of the Boards more transparent and predictable for the users and the public we will, for the first time in October 2019, publish a list of cases which are likely to be settled in the next year. Each technical board is preparing that list based on advanced planning.

I have also set annual quantitative objectives for each technical board and have regular meetings with the chair of each board. There is an ongoing dialogue. As of 1 January 2020, the revised Rules of Procedure of the Boards of Appeal will contribute to further increasing the efficiency of the Boards of Appeal.

What has changed in your approach to case planning?

We have developed a planning model. There are differences between the various technical fields, so the planning is adapted to the particular situation in each field and board. What has changed in practice is that concrete objectives are set, and that work is planned longer in advance.

Are there efforts towards a digital transformation for the Boards of Appeal?

We need to improve our case management system. We also need to be able to rely on electronic filing, and to work on a digital rather than on a paper basis. However, in all these aspects the Boards of Appeal are dependent on the general developments in the Office. The EPO president has made the improvement of the IT systems a priority.

Last week, Opinion G 1/18 of the Enlarged Board was published. What do you think will be its impact?

In Opinion G 1/18, on the distinction between an appeal deemed not to have been filed and an inadmissible appeal, the Enlarged Board of Appeal endorsed the prevailing view in the Boards’ case law. The consequence of not observing the two-month time limit under Article 108 EPC is that the appeal is deemed not to have been filed, and that the appeal fee will be reimbursed. The impact of Opinion G 1/18 is enhanced in that it also applies to similar situations in the Office, for instance in opposition proceedings.

Carl Josefsson ©Eva Kubinska

Had prolonged filing delays impacted the quality of the patent granting?

An important aim of the revised Rules of Procedure of the Boards of Appeal is to increase efficiency, by reducing the number of issues that need to be dealt with on appeal. There are more limited possibilities for parties to amend cases on appeal.

This allows us to focus on the core issues. Most judiciaries are reforming their appeal procedure –an appeal shouldn’t be about another case, but rather a review. Parties must decide on their strategies earlier on, and it will become more difficult to pursue delaying tactics. It also means that the appeal proceedings become more predictable for the parties, with fewer surprises. All this contributes to quality.

Is the speed of the G 2/19 decision an example of a more efficient process?

G 2/19 concerns the question of whether holding oral proceedings at the premises of the Boards of Appeal in Haar violates the rights under Articles 113 and 116 EPC. Due to the high significance of this question for the daily work of the Boards, it was important to deal with in a prioritised manner.

Many people hope that the Enlarged Board of Appeal will soon decide on the EPO president’s referral on the patentability of plants. When will you decide?

I cannot comment on a pending case. I can only say that the average time from registration to settlement by the Enlarged Board of Appeal is about 14 months.

There has been discussion around presidential referrals to the Enlarged Board of Appeal. What is the general purpose behind this?

This is regulated in the European Patent Convention. Under Article 112(1)(b) EPC, the president of the European Patent Office may refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question.

How often does a referral take place?

There were no referrals in 2017, one in 2018, and three in 2019 so far. Referrals to the Enlarged Board of Appeal can be made either by a Board of Appeal or by the President of the Office.

One aspect of the highly political discussion about the independence of the Boards of Appeal was the move to Haar. What has changed since the move?

In 2016, when deciding on the structural reform, the Administrative Council confirmed the status of the Boards of Appeal as an independent judiciary, which has also been recognised by national courts. That is the most important starting point.

Another element of the structural reform was the physical separation from the Office, so that we have our own premises. Moreover, the function of president of the Boards of Appeal was created, as well as the Boards of Appeal Committee. This is a subsidiary body of the Administrative Council, tasked with supervising the Boards of Appeal and advising me.

“I certainly hope that the UPC will come into force”

An essential aim of the reform is to enhance our organisational autonomy. That is being achieved by a delegation of powers and functions from the President of the Office to the President of the Boards of Appeal. I am solely responsible to the Administrative Council and do not stand in any hierarchical relationship to the President of the Office.

I have recently concluded a Memorandum of Understanding with the President of the Office. It supports the board’s functions and powers by dealing with practical issues that have arisen since the structural reform. It strengthens the organisational autonomy of the Boards of Appeal and ensures efficient co-operation between the Boards and the Office.

What is your responsibility as President of the Boards of Appeal?

My responsibility is to foster judicial culture. We have a challenging task, with the huge backlog, and what I experience is a very strong commitment by everybody to deal with this task as efficiently as we can. In doing this we have to understand what it means to be a modern judiciary. Independence and accountability go together.

What are your hopes for the UPC?

I certainly hope that the UPC will come into force. I think that it has always been longed for that there should be a fully-fledged patent court at the European level, including for infringement proceedings. Furthermore, I think that the UPC would be an important improvement in the European patent system.

Where would you like to see the Boards of Appeal in five years?

I would like to see us in a situation where we have successfully reduced pendency times and continue delivering decisions of the highest quality.

This interview was conducted by Amy Sandys and Christina Schulze.