For the half-year to 30 June 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Suleman Ali, Tom Ohta and Valentina Torelli.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Monday, 2 March 2015

Never too late: if you missed the IPKat last week ...

Welcome to the IPKat's first "Never Too Late" feature of the month.  We say goodbye to February with some sadness, since it has been this weblog's busiest month for site visits since its launch in 2003.  February brought in 147,988 "hits", despite having just 28 days.  Thanks, all of you, for your support. And now, in case any of last week's Katposts passed you by, here's the 35th weekly "Never Too Late" summary of last week's posts, recorded once again by our friend and highly valued colleague Alberto Bellan, who writes as follows:
SUEPO called off its proposed march on the British consulate in Munich last Wednesday in the face of potential liability for breaches of obligations under the European Patent Convention and Service Regulations -- but the union has called for a fresh demonstration on Tuesday 25 March, says Merpel.

Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch) is another blockbuster judgment from Mr Justice Arnold in the High Court, Chancery Division, England and Wales. It is about a business that got a bunch of trade marks covering the somewhat unregistrable word "supreme", and then decided to bring proceedings against a defendant who wasn't using the word as a trade mark and whose use of it went back 20 years, recounts Jeremy.

Merpel re-sinks her paws in the hot story of the decision that Hague Court of Appeal issued in the sadly famous proceedings in SUEPO v EPO [on which see her earlier post here]. This time, the floor goes to nothing less than EPO's Emperor President Monsieur Benoît Battistelli.

Jeremy has just received a communication from a spokesman for the UK Intellectual Property Office (IPO). It is nothing less than the first public response of any national office to the current EPO unrest.

After his earlier note on Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd, Jeremy hosts this post of guest contributor Tim Behean (Sipara, Oxford), which focuses on just one aspect of this multifaceted ruling: burden of proof in so-called "double identity" actions in which the mark used by the defendant is identical to that of the claimant and the goods or services of the respective parties are exactly the same too.

Jeremy reports on the joint BLACA-IPKat event on sensory copyright [on which see earlier Katpost here].

Busy week of IP events for Jeremy, who this time recounts another tasty seminar entitled "Geographical Indications: FAGE, Feta, Fontina, and the battle for world markets".

Here Jeremy hosts the third in the series of posts from London-based law firm Bristows (where guest Kat Tom works) on its real-time experiment in litigating before the proposed Unified Patent Court (UPC). The first two reports are "A test-drive for the Unified Patent Court" (June 2014, here) and "A test-drive for the Unified Patent Court: Part II" (October 2014, here). This one too is masterminded by Alan Johnson and Alexandria Palamountain.

The European Patent Office publishes some patent data on which Katfriends at the Chartered Institute of Patent Attorneys have already pounced. Note the headline assertion that British business is failing to protect innovation, then read on, says Jeremy.

Following to the last events of the battle over the European Patent Office's governance, the Dutch Minister of Justice intervened with regard to the EPO's immunity from execution of court orders under international law, Merpel recounts.

The Court of Justice of the European Union (CJEU) issued its decision in Case C-41/14 Christie's France, a reference for a preliminary ruling from France seeking clarification as regards that peculiar creature of EU copyright known as artist's resale right, or droit de suite within Directive 2001/84 (the Resale Right Directive), and Eleonora is here to explain what that is about.

After the Patents Court ruling of Mr Justice Arnold in Warner-Lambert Company, LLC v Actavis Group Ptc EHF & Others, which Darren reported here, Jeremy has got some news to break on that painful patent war.

Valentina reports on a fresh trade mark dispute that the General Court has just decided, Pangyrus Ltd v OHIM, RSVP Design Ltd, Case T-257/11.

ZTE Corporation is ramping up to take advantage of the new legal environment that has resulted from the settlement between Qualcomm and the Chinese National Development and Reform Commission (NDRC) over claims that the company’s licensing practices had violated the country’s Anti-Monopoly Law, recounts Neil.

The UK Government will improve protection to make sure businesses are not exposed to unnecessary and baseless accusations ... in response to the Law Commission’s Report, reports Jeremy. That's cool!, says Hogan Lovells' Katfriend Alastair Shaw.

Birgit is back with one of her favourite topics: the interface between the naming of polar bear cubs and intellectual property rights.

Valentine’s Day makes Suleman think about relationships: the cruelty, the complexity and the cuddles. It is all about patent law and how subject matter ‘relates’ to other subject matter, he explains.

*****

PREVIOUSLY, ON NEVER TOO LATE

Never too late 34 [week ending Sunday 22 February] Bill Gates goes to China | Ms Swift's issue with trade marks | TMs and jurisdiction for on-line infringement cases | UK's Chartered Institute of Patent Attorneys and the EPO | Divani & Divani | UK first in global IP enforcement | SUEPO v EPO | Enterprise v Europcar [2015] EWHC 300 | Again on Cartier International AG and Others v British Sky Broadcasting Ltd and Others | Googling inventor clients | Code of ISPs' practice in Australia | Specialised IP Courts in China.

Never too late 33 [week ending Sunday 15 February] –- Evoking Audrey Hepburn’s image is not OK in Italy | Reasonable royalty and moral prejudice: new reference to the CJEU | CoA for England and Wales on parallel importations in Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd & Madaus GmbH | The Logic of Innovation: Intellectual Property, and What the User Found There and Tritton on Intellectual Property in Europe reviewed | Italian baked goods’ trade marks in foreign megastores | Belmora LLC v Bayer Consumer Care AG and Bayer Healthcare LLC, Article 6-bis in Northern Viriginia | EU TM judges get together in CET-J | Chancery division on Dude’s copyright in Fresh Trading Limited v Deepend Fresh Recovery Limited and Andrew Thomas Robert Chappel | Sound-alike litigation in the music industry | Informal AC’s get together at EPO! | To Kill a Mockingbird reloaded | Personalised medicine.

Never too late 32 [week ending Sunday 8 February] –- Brazilian PTO’s delays | The Research Handbook on International Intellectual Property reviewed | Laura Smith-Hewitt | IP, women and leadership: the poll responses | Decline of West’s trust in innovation | Wikipedia public domain photos |CJEU in Case C-383/12 P Environmental Manufacturing LLP v OHIM | The Nordic IP Forum | The future of EPO’s BoA | Warner-Lambert v Actavis Mark 2 | Dragons' Den: where entertainment meets mis-advice? | Hospira v Genetech Mark 1, the Appeal | Litigation-Proof Patents: Avoiding the Most Common Patent Mistakes and Patent Portfolios: Quality, Creation, and Cost reviewed | Italy and San Marino’s friendship on IP is over| Problems and imperfections in biotech patenting: realities on the ground and trying to fix the system.


Never too late 31 [week ending Sunday 1 February] -- Women in IP, a MIP’s perspective | Another linking reference to the CJEU | Catarina Holtz on Disciplinary authority over the EPO BoA | EPO pays to say that patent examiners’ life is truly cool | You can’t name your daughter ‘Nutella’ | CJEU in Arne Forsgren v Österreichisches Patentamt | Blocking injunctions in Greece | IPEC and bondage in Haiss v Ball | Present and future of patent profession | Belgium asks CJEU: does the Enforcement Directive allow cost-capping in IP litigation? | Dutch diverge with English as Novartis prevails on Zoledronic Acid in Netherlands | Slogan and TMs | The coffee capsule wars | Declining public trust in innovation | IPEC’s ruling in Global Flood Defence Systems& Another v Van den Noort Innovations BV & Others | Again on CJEU ruling in Case C-419/13 Art & Allposters | Biotech financing: the risk components, ‘going long’ and patents as knowledge currency. 

Monday miscellany

Finding Stockholm wasn't so hard but, try as
she might, Gina couldn't locate that Brewery ...
Forthcoming events. Some readers don't take the trouble to check out the IPKat's Forthcoming Events page since they assume that, with so many of the Kats being based in England, it's only English events that are on the list.  This is not so!  The list contains plenty of non-UK events.  For example, C5's Pharma & Biotech Patent Litigation Forum (here) takes place in Amsterdam's Hotel Okura on 19 and 20 March. Less than a week later the Nordic IP Forum assembles in The Brewery, Stockholm, on 25 and 26 March 2015: details here. Later in the year the Office for Harmonisation in the Internal Market (OHIM) is holding an IP Mediation Open Day in Alicante on Monday 15 June 2015. If you are interested, you can find all the details here.  The first two of these events offer handsome registration fee discounts to IPKat readers; the third is free.



On the subject of forthcoming events, let's not forget the Queen Mary Journal of Intellectual Property monthly list of events for March, which you can peruse here.  If nothing else, this shows that the number of IP events coming up seems to be very much on the increase.


Better late than never. It seems that the Court of Justice of the European Union's Translation Unit has finally managed to catch up with itself. This Kat learns that the English language versions of Advocate General Bot’s Opinions in Cases C-146/13 Kingdom of Spain European Parliament, Council of the European Union and C-147/13 Kingdom of Spain Council of the European Union were finally made publicly available last Thursday. These Opinions, delivered on 18 November of last year, deal with such sensitive topics as the use of the enhanced cooperation mechanism for the establishment of a unitary patent system, the question of effective control of a non-EU institution, non-discrimination and judicial review. For a summary of the issues raised and the Advocate General's take on them, see this earlier Katpost here.


Fashion event in Soho. Katfriend Tania Phipps-Rufus writes to tell this Kat that she is hosting an event at Condé Nast College of Fashion, 16–17 Greek Street, Soho. Perhaps unsurprisingly the subject is "Fashion, Law & Business", and there is a particular focus on intellectual property as it affects the fashion sector. The event will be on 18 March at 6.30 - 8.30pm. Tickets for the event are available here. There are Super Early Bird and presumably ordinary Early Bird reductions for early registrants but, since the very most it can cost you even if you miss all the deadlines is only £20, it sounds agreeably affordable.



Burk's Law. Not to be confused with Burke's Law,  this year's three LSE Leverhulme Public Lectures are being delivered by Professor Dan Burk over the next two weeks (between Friday 6 and Friday 13 March) at the London School of Economics.  The topics?  The Gene Patent Controversy [nothing to do with Burke's Law star Gene Barry, notes the IPKat], The Software Patent Puzzle and Patenting Information Technologies. These are public events and no tickets are required. Just turn up and look intelligent. Click here for details.


Around the weblogs. Always full of surprises, Mark Anderson's IP Draughts explains why, if you are looking to register a company name, you can register "OMG F**K :–) Limited" straight off but need permission before you can register "Sheffield University Patent Licensing Institute".  IP Finance hosts a request to participate in a short survey on patent ownership being run by Aistemos. On SOLO IP, Barbara Cookson points out that the OHIM Board of Appeal decision in Canal Plus, designed to prevent unused marks being used to oppose later registrations, does not yet seem to part of UK law.  

Struggling to understand trade mark infringement issues? Here's my checklist

IPKat readers might remember that a few months ago I posted my Copyright Infringement Checklist, ie a list of the main aspects to consider when addressing potential infringement issues. 

I named it after myself not just because both cats and Kats are notoriously vain, but - importantly - because it was intended to be neither authoritative nor exhaustive.

Now that I have finished the trade mark part of my undergraduate intellectual property law course at the University of Southampton, I have prepared another checklist, this time for alleged trade mark infringement cases. 

Again, the aim is simply to help my students when thinking about potential infringement issues, considering that (again) I have not been able to find many useful summaries/tables.

Any feedback/suggestions on how to improve it are - as usual - very welcome.


ROSATI TRADE MARK Infringement Checklist*
Main aspects to consider when addressing potential infringement issues

Trade mark infringement is about 7 essential things

(1)  Use (NB: non-exhaustive list!)[1]
                            i.          Person affixes sign to goods or packaging thereof;
                          ii.          Person offers or exposes goods for sale, put them on the market or stocks them for those purposes under the sign[2] or offers or supplies services under the sign, or offers or supplies services under the sign;
                         iii.          Person imports or exports goods under the sign (NB: currently goods in mere transit do not fall under this category);
                         iv.          Person uses the sign on business papers or in advertising, including comparative advertising.[3]

(2)  Without consent[4]

(3)  In the course of trade (= “used in the course of a commercial activity with a view to gain and not as a private matter”)[5]

(4)  In the relevant territory
·        UK for UK trade marks, EU for Community trade marks;[6]
·       For online uses, Bently and Sherman hold the view that targeting required.

(5)  Of a sign
·        Same hyphoteses as in relative grounds for refusal of registration:
1)  Identical marks for identical goods/services[7];
2)  Identical marks for similar goods/services[8] + likelihood of confusion (including association)[9];
3)  Similar marks[10]  for identical/similar goods/services + likelihood of confusion (including association);
4)  Identical/similar marks for dissimilar goods/services + earlier trade mark has a reputation + use would take unfair advantage of/be detrimental to character/repute trade mark.[11]

(6)  Where such use affects one of the functions of the registered trade mark[12], eg:
·        Indication of origin;
·        Quality;
·        Advertising;
·        Investment.

(7)  And no defences are available to defendant (NB: for some defences additional “honest practices” requirement)
·        Trade mark should be removed from register;
1)  Because it is invalid = should have not been registered in the first place
                                                                    i.          Absolute grounds for refusal of registration, eg lack of distinctive character, descriptive, “forbidden” shape, public policy/morality, bad faith, etc;
                                                                  ii.          Relative grounds.[13]
2)  Because it should be revoked
                                                                    i.          Non-use
·        Within 5 years from registration;
·        Use suspended for uninterrupted period of 5 years.
                                                                  ii.          Trade mark has become generic;
                                                                 iii.          Trade mark used to deceive consumers.
·        Use of another trade mark (UK trade marks only);
·        Use of one’s own name/address;[14]
·        Descriptive use, including use to indicate intended purpose;
·        Comparative advertising[15];
·        Local use;
·        Exhaustion;
1) put on the market[16]
2)  “without consent[17]
3)  no “legitimate reasons
                                                                    i.          Alteration of goods
                                                                  ii.          Change of packaging
                                                                 iii.          Change of mark
                                                                 iv.          Advertising
·        Freedom of expression (NB: no codified defence as such).





* The addition of “Rosati” not only means that I am the author of the checklist, but also (and most importantly) that this is not (necessarily) authoritative. It is just something to consider when dealing with potential infringement issues.
[1] Key case on notion of “use” is Google France.
[2] Key case on notion of “under the sign” is Céline.
[3] Key case on comparative advertising is L’Oréal.
[4] Cf trade mark exhaustion sub (7).
[5] Key cases on notion of “use in the course of trade” are Arsenal and Céline.
[6] Use in one Member State alone can suffice: see DHL.
[7] Key case on notion of identity is Sadas.
[8] Key case on notion of similarity of goods/service is Canon.
[9] Key case on likelihood of confusion is Puma.
[10] Key case on notion of similarity of signs is Puma.
[11] Key cases on trade marks with a reputation are Yplon, Adidas-Salomon (use of a trade mark as embellishment) Intel (notion of “link”), L’Oréal, Interflora.
[12] Key case on functions of a trade mark is Interflora.
[13] See supra sub (5).
[14] Key case is Céline.
[15] Key case is L’Oréal.
[16] Key case is eBay.
[17] Might be problematic when a licence is in place: see Dior.

OHIM and the Midas Touch: how can a EU agency stop making too much money?

New OHIM logo?
"The more the wealth, the more the worry". It is strange but true but affluence can bring as many headaches as poverty, both for individuals and, within the context of intellectual property, for institutions that administer IP rights.  In this context Katfriend, former MARQUES chair and current trade mark guru Tove Graulund has some pertinent comments to make about the problems facing the Office for Harmonisation in the Internal Market (OHIM), a body which has never been able to shake off the Midas Touch.  This is what she has to say:
"As many readers of this weblog will know, OHIM has too much money. This is as much a blessing as a curse. OHIM is a self-financed EU agency and, according to the basic Regulation, its fees must be fixed at a level that ensures that the agency's budget is balanced. Consequently, even if this is not explicitly stated, any surplus or deficit should be avoided.

Community trade mark *CTM) fees have been reduced twice (in 2005 and 2009), but to no avail. The money just keeps coming in and the reductions have not been enough to deal with the accumulated surplus. In order achieve a balanced budget, the focus has essentially been to accelerate consumption of reserves by increasing spending.

The problem is, and has been, that the setting of the fees is a political hot potato. The CTM fees will inevitably have an influence on the attractiveness of filing national trade mark applications in the EU. At present the CTM and registered Community design (RCD) fees are determined via the "comitology" procedure that involves the Council and the European Commission, based on input and proposals from OHIM's Administrative Board and Budget Committee (ABBC). Typically, the Member State representatives at the ABBC come from the national offices [at this point, Merpel's ears prick up. Does this mean that they are the same folk who sit on the Administrative Council of the European Patent Office and who are, she imagines, far too preoccupied with patent matters to spare too much thought for an organisation such as OHIM, which gives every impression of running fairly smoothly as well as profitably?].

Never mind the closed doors,
what about the closed ears?
At the moment the CTM Regulation and the Directive on approximation of national trade mark laws are under reform, and the negotiations have reached their final stages. The reform was initiated as a result of inabilities to reduce the accumulated surplus, and the same issue is one of the stumbling blocks to finalising the negotiations. The question of how the fees are set and who can propose and decide on the fees is crucial to the future of IP offices in Europe, and it is very likely that there is a bit of a power struggle going on behind closed doors between the Commission, the Parliament and the Council represented by national offices [the IPKat does wish that these struggles were not taking place behind closed doors. All of these people, without exception and however much they earn, are public servants or elected representatives who are answerable to him and his fellow EU citizens. These closed-door discussions are hardly about vital issues of national security, when all is said and done].

One proposal on how to deal with the OHIM surplus is to put in place a distribution of funds to national offices and other national bodies that deal with trade marks and designs, i.e. the courts and customs authorities. The question is whether this is legal. As one example, access to justice is free of charge at EU level. If fees are kept at a level where a surplus is generated and this surplus is partially aimed at financing EU courts, this could be viewed as the introduction of an appeal fee, which would constitute a discriminatory measure only affecting holders of EU trade marks and design rights.

On the other side of the spectrum, the user organisations have not been able to agree on or present a joint proposal of how to deal with the surplus. It is probably partly due to the fact that the CTM filing fees are generally thought of as reasonable, partly that some brand owners wish to strengthen the fight against counterfeiting and partly due to the fact that national offices are not perceived as being particularly receptive to ideas that might go against their interests.

The Graul-tiger was
a bravo cat ..."
One interesting document has just surfaced – almost a half year since it was presented to the European Parliament, this being a study conducted by Deloitte Consulting for the Parliament. The report presents the dilemmas in a way that is more open and direct than that which we normally see, which makes the reading all the more interesting. The report can be found here ["The income of fully self-financed Agencies and the EU budget", 82 pages, which focuses on OHIM and the Community Plant Varieties Office: remember, the European Patent Office is not an EU Agency.  The IPKat's not sure why EURid, the EU domain name registry, isn't looked at here, but he's sure there's a good reason]. Anyone in the mood to update themselves on the background can find all the relevant documents on the MARQUES website here.

After the expiry of the public consultation period, OHIM is working on its final proposal for the strategic plan 2015-2020, and it seems clear that the activities that are unrelated to its so-called core business (as EU trade marks and designs registrar) will continue to increase. One might suspect that some Commission activities are placed with OHIM because OHIM has money to cover the costs where the Commission has not. At the same time OHIM, will be obliged to cut staff expenses by 5% while it is expected that filings will grow by 5%. Perhaps this will all help to eat the accumulated surplus away bit by bit. Time will tell.

It is hoped that the negotiations on EU trade mark reform will be finalised before summer. Again, time will tell".
King Midas here; the Midas Touch here 
King Midas in Reverse here and (recommended for anyone who likes decent lyrics, 1960s harmonies and the closest the Hollies ever got to sounding like the Beatles) here

EPO Enlarged Board tells Chairman: "disobey President when necessary"

The European Patent Office (EPO) Enlarged Board of Appeal (EBA) has issued an interlocutory decision in case R2/14 (PDF file, 2.3 MB), in which it once again addresses the dual roles of the Board's Chairman, who is also a Vice-President of the Office (VP3), among other issues.

The quite explosive highlights of this Decision, which is analysed in more detail below, are the following findings made by the EBA, at a time when the independence of the Boards and the degree to which they must be subordinate to the management of the Office have never been more closely examined:

    The Enlarged Board members getting ready
    to defend their judicial independence
  • As long as the Chairman of the Enlarged Board ("the Chairman" from here on) is also a Vice-President of the EPO, there is a potential conflict which might compromise his judicial independence unless properly handled.
  • The proper way to handle this is to balance the Chairman's obligation to obey the President (as VP3) against his invariable obligation to act at all times with complete judicial independence.
  • In cases of conflict the judicial role must take precedence, even at the expense of disobeying a direct instruction from the President.
  • The President's authority and power to give instructions to the Chairman in his role as VP3 and to exercise supervisory authority over him are limited by virtue of Article 23(3) of the European Patent Convention (EPC), which lays down the principle of independence of the Boards.
  • The requirement to disobey an instruction or direction from the President or to fail to provide assistance to the President must also apply where the effects of complying would be indirectly liable to affect the "work or working conditions" of the Board members.
  • The only proper, long-term solution is to revise the EPC so as to take the Boards out of the structure of the Office completely, placing them as a separate independent body within the European Patent Organisation.
Mr Battistelli, President of the EPO, was reportedly furious when, in a previous decision, R19/12 (reported here), the EBA decided that the nature of the Chairman's involvement in the management of the Office gave rise to a justified suspicion of partiality, and ordered that he be replaced by an alternative member for that case.

One cannot imagine that the new decision will make Mr Battistelli any happier. As noted above, the EBA specifically alludes to instructions from the President whose effects might affect the work or "working conditions" (a very hot topic across all levels of EPO staff ranks), particularly at a time when speculation abounds that the President is strongly supportive of a proposal to send the Boards of Appeal to Berlin and there is widespread concern within the Boards that this will hamstring their work.

So reading between the lines (perhaps more than was intended), Merpel discerns the EBA telling its Chairman that, if he is asked to assist with or support this move at an organisational level (after all DG3, under his wing, would have to be involved in the move), he must refuse to do so unless he is satisfied that there will be no adverse effect on the Boards, however indirect that might be. Even more clearly, if VP3 is called on or instructed to implement any sort of efficiency goals within the Boards, it appears that the Vice-President must refuse, again unless there is absolutely no possibility of this affecting the work of the Boards, and one cannot see how this would be the case.

And naturally we mustn't overlook the fact that the EBA also speaks directly to the President in this decision, telling him that his power to instruct the Chairman (as long as the latter is subordinate to the President as VP3) is limited by Article 23, and he may not issue instructions that would compromise judicial independence. This is an important shot in a power struggle between the Boards and the President, have no doubt.

While stated to be a non-public decision, it appeared on the EPO Register for public download (this may change) and the issues it covers are of such central importance to the independence of the EPO judges that it requires publication. Merpel has considered the balancing of interests between non-publication, the stated reason for which was to protect the private rights of the three Board members whose participation was objected to, and the strong public interest in reporting the decision which for the first time states that the President's power to direct the Vice-President of DG3 Appeals is limited by the overriding interest in judicial independence (as long as the Vice-President is also the Chairman of the Enlarged Board) and believes the correct course of action is to publish. More pragmatically, it does not read like a decision that is only for the benefit of private parties to an appeal; it reads like one that is expected to have a wide audience including the President, the Administrative Council, and probably everyone else -- not that this affected Merpel's thought processes.

So with that, let's look at the decision.

Background
 
At the time of Decision R19/12, in his role as VP3, the Chairman sat on two high level committees of the EPO, the Management Committee (MAC) and General Advisory Committee (GAC). The petitioner in that case (this being a petition for review of an allegedly wrong decision of a lower Board of Appeal) objected to the Chairman sitting on the Enlarged Board, saying that he was compromised by his dual roles. A reasonable observer would have a justified suspicion that he might be influenced in his review of administrative decisions taken by the Office given that he was involved intimately in the management of the Office. The Enlarged Board agreed and took him off the panel for that hearing.

Superficially it may have looked as if the EBA was rapping the Chairman over the knuckles for having given cause for someone to object, but the reality was very different. This was a Board protecting its Chairman and sending a message to the President: if you think that you can keep control of the Boards by appointing the Enlarged Board Chairman to a managerial role where he is bound (under Article 10) to obey your instructions and assist you unconditionally, think again. Doing so has compromised his role and the independence of the Boards -- hence the reported fury of Mr Battistelli at this decision.

The Chairman subsequently stepped down from both of the managerial committees, other than retaining an observer role for appeal-related matters.

The latest decision, R2/14, deals with a similar objection by a petitioner against the composition of the Enlarged Board panel assigned to its case (concerning an appeal decision with which the petitioner was dissatisfied). The petitioner objected to all three of the members, again including the Chairman, and the two other members.

The objection to the other two members

Before turning to the much more interesting case of the Chairman, let's look at the two other members. The petitioner asked for replacement of these Members, on the grounds that they came from the same Technical Board of Appeal, giving (said the petitioner) that one Board undue influence over the EBA in this case; also, that Board was in a similar area of technology as the Board whose decision they were being asked to review, which was likely to lead to partiality and undue sympathy for the decision under review; and finally, it was argued that EBA members in a petition for review procedure should not be members of the lower Boards of Appeal also.

None of these objections gained much traction and were dismissed pretty quickly. In particular it was held that the design of the legal framework envisaged that Enlarged Board members would also serve on Technical and Legal Boards, and no change in this scheme, or in the appointment of particular members to an Enlarged Board panel, was intended when the EPC was revised to permit petitions for review under Article 112a.

The objection to the Chairman

As regards the Chairman, the initial objection simply referred to the finding in R19/12, and initially the petitioner appeared to believe that the nature of the objection was self-evident from that decision (the EBA agreed as it happened, i.e. the nature of the objection was clear). When the Chairman was asked to comment on the objection he submitted a statement saying that he had relinquished the duties that had given rise to a problem in R19/12, quoting from the relevant order of the President removing him from the committees; he further stated that he was not aware of any pressures on him to compromise his judicial role in pursuit of e.g. efficiency goals.

The petitioner tried to expand its case three times. In a first reply it enumerated several reasons why it believed the role of the Chairman was institutionally compromised due to his alternate role as VP3, even if he had stepped down from the relevant committees. Then, before oral proceedings, it sought production of numerous internal and confidential documents that (it said) might reveal the extent of the Chairman's involvement in management activities and/or the President's interference in the Boards of Appeal, and also requested that evidence be taken from various parties to explore the extent of the Chairman's management activities. Thirdly, following oral proceedings and while waiting for the decision to issue, it wrote to the EBA again saying that the "house ban" affair, covered in this weblog at length, exposed an incident of partiality: nearly all of the internal members of the EBA had written a letter of protest at the President's actions (in suspending a Board member and kicking that member off the Office premises). However, the petitioner noted that the Chairman had not signed this letter, which the petitioner said demonstrated that "other [Board] members could not expect the Chairman to defend their rights vis-à-vis the President."

Did the Chairman's failure to openly criticise the President suggest partiality?

The Board did not look at the "house ban" point, i.e. the inference that should be drawn from the failure of the Chairman to sign a letter critical of the President (a letter signed, incidentally by each of the members who wrote this interlocutory decision along with nearly every other internal member of the EBA). It was made late, and was different from the initial objection. The initial objection had been based on an alleged structural or institutional partiality (of the in abstracto kind) inherent in the dual roles, whereas the observations on the Chairman's failure to sign the letter of protest against the President was based on actual conduct and were aimed at establishing in concreto partiality.

The EBA explicitly said it was not considering the house ban point for procedural reasons alone and that it had not looked at the merits, suggesting to Merpel that there may be scope for a new objection on this explicit point -- and the petitioner appears not to have any qualms about rocking the boat, so perhaps we can expect another new objection and a second interlocutory decision.

Could the petitioner obtain internal documents and evidence from the Office?

The EBA also refused the requests for production of internal documents or the taking of evidence from the Chairman and others. The EPC did not have discovery procedures that would allow a party to uncover documents that might support its case, nor could a party expect the Board to make its case for it -- an appellant or petitioner had to produce its own case for the Board. In the absence of such documents and evidence the petitioner had merely made vague assertions and suggestions that had no evidential basis.

Merpel smiled at the additional suggestion of the EBA, apparently made without irony, that the petitioner could have asked for these documents from the competent bodies. This suggestion betrays an admirably naive faith in the power of a nicely-worded letter addressed to the management of an organisation which appears to be deeply paranoid and averse to any examination of its internal procedures, and which is at war with its own stakeholders over the very issues that the documents would reveal. But perhaps Merpel is wrong. Prizes will be awarded by this blog to any patent attorney who successfully convinces Mr Battistelli to send them the internal investigation guidelines used when investigating Board members, which is one of the documents sought by the petitioner.

The structural/institutional conflict in acting as Chairman & VP3

All of the foregoing meant that the decision was confined to the R19/12 point itself: had the circumstances changed sufficiently since that decision so that the Chairman was no longer to be regarded as under a suspicion of partiality?

The Board accepted the Chairman's account of his reduced activities and disengagement from the relevant committees without question. Nevertheless it noted that the Chairman had dual roles, one managerial in which he was subordinate to and answerable to the President (Arts. 10(2)(f) and (3) EPC), and the other in which he was "in no sense hierarchically subordinate to the President and is not answerable to him" (see Art. 23(3)). These managerial and judicial roles could in principle come into conflict with one another.

The EBA labelled this potential conflict as a "normative conflict" between two equal-ranking rules of the EPC (Art. 10(3) vs Art. 23). All other relevant rules, such as Art. 10(2)(f), or the Staff Regulation that might apply to the Chairman as an employee under Arts. 10 & 11, were subordinate to Articles 10(3) and 23.

Resolving the "normative conflict" using (you guessed it) praktische Konkordanz

The EBA once again noted [presumably in the hope that someone from the AC is listening to the highest patent court in Europe] that the only permanent and clear solution to the question of judicial independence would be to separate the Boards of Appeal entirely from the Office, making the Boards a separate, fully independent body within the European Patent Organisation. While this would require amending the EPC, they helpfully reminded the petitioner [Hmm, says Merpel, for a non-public decision it seems the authors expected a wider audience than a lone disgruntled patentee], and noted also that there was a draft amendment to the EPC ready to go, but that a diplomatic conference would be required to make the necessary changes. The proposal to give the Boards organisational autonomy had widespread support, backing this up in a deadpan footnote quoting from none other than a "B. Battistelli", writing in the GRUR Newsletter in 2010.

So with no diplomatic conference in prospect, how was the conflict between the Chairman's role to be resolved. Borrowing a legal concept called "practical concordance" (praktische Konkordanz) from German constitutional law, they said that the conflicting rules had to be interpreted in a balanced manner:
39.7  In applying the concept of "normative concordance" to the present case, the Board concludes that the President's power to give instructions to the Chairman in his function as VP3 pursuant to Article 10(2)(f) and (3) is limited by Article 23.

The Chairman is therefore relieved of any obligation
(a) to obey any presidential instructions or
(b) to observe any other administrative/executive directions or
(c) to assist the President pursuant to Article 10(3) EPC
if and to the extent that any such instruction, direction or assistance might affect him and/or any other member of the boards of appeal, including the Enlarged Board of Appeal, in performing their judicial duties [...]

39.8 An indirect effect in this context could even be caused by any measure of the aforementioned kinds which, prima facie, is not immediately and intentionally directed to the exercise of judicial duties in the narrow or obvious sense.

Similarly, measures directed to less central aspects of the work and working conditions of the Chairman and other members of the boards of appeal and of the Enlarged Board of Appeal could also have longer-lasting effects. These might be perceived by the members concerned and/or by a reasonable observer, for example a party to proceedings before a board of appeal or the Enlarged Board of Appeal, as influencing the independence of the members of the boards of appeal or the Enlarged Board of Appeal.
The Board continued that, even if he scrupulously tries to balance his two roles, the Chairman/VP3 could be faced with an unresolvable conflict where he either obeys the President (and fails to uphold the principle of judicial independence as a result) or he disobeys the President and thus fails in his role as VP3:
In that event, one may legitimately expect that his judicial duties under Articles 23 (3) and 24 and under Article 6(1) ECHR must prevail.
So there it is. As long as the Chairman remains subordinate within the hierarchy of the Office to the President, nothing in the EPC, his contract or the service regulations, permits him to compromise the independence of the Boards, and nor may the President legitimately instruct him to do anything that affects the working of the Boards.

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