19th March, 2019
This was FICPI’s second meeting with the separated Boards of Appeal, and the first to take place in the relatively new premises in Haar.
The Boards of Appeal delegation comprised:
- Carl Josefsson, President of the Boards of Appeal
- Ingo Beckedorf, Chair Technical Board of Appeal 3.2.07
- Mike Harrison, Chair Technical Board of Appeal 3.2.06
- Teresa Somermerfeld, Technical member of Board of Appeal 3.3.02
- Albert de Vries, Chair Technical Board of Appeal 3.2.04
- Sabine Demangue, Legal Research Services of the Boards of Appeal
The FICPI delegation comprised:
- Julian Crump, President
- Elia Sugrañes, Deputy Secretary General
- Didier Intès, President TEC
- Robert Watson, Vice-President CET
- Kim Finnilä, Assistant Reporter General CET
- Antonio Pizzoli, Chair CET4
- Brett Slaney, Chair CET6
- Swarup Kumar, Chair CET7
After brief introductions, Carl Josefsson ran through many points of the attached presentation, which describes their revised structure, their five-year objectives, and their push to keep a high quality procedure, even with the number of new members joining the Boards. It was commented that the evaluation system of the Boards and their members has been in place for 1 year, and so the effects of this system should start to come through. On recruitment, they have been able to fill all the vacancies so far.
The timeliness of minutes and written decisions has improved markedly, with all decisions being issued within 3 months, and normally within 2 months. Minutes are aim to be produced within 7-10 days.
In order to maximise the use of their 10 oral proceedings rooms (“our bottleneck”), they will summon some oral proceedings in the afternoon (mainly for ex parte cases). Co-operation between the boards allows for better cover for sick leave, for example.
Carl Josefsson explained the productivity measures in more detail - productivity is measured by a written decision or withdrawal following a substantive action. Since all decisions are public, the cases deviating from the best practice are identified and discussed internally.
Currently, this production stands at about 22 actions per member per year, which with withdrawals, means each technical member is handling about 30 cases per year as Rapporteur – this doesn’t include sitting as second member on other appeals. These figures compare favourably with those of similar national tribunals.
The Boards expect to be able to “break even” on production in 2020. The increase in the number of Boards of Appeal members is foreseen as being temporary in order to meet the wave of incoming cases, although any future reduction in the number of members will only be through retirements, which will provide a balance when backlog is in better control. In general, the backlog is biggest in chemistry and biotech, but most new cases are coming from the mechanical/electronics technical area.
Revision of Rules of Procedure – Mike Harrison
The BOAC in its totality was at User Conference – it is now considering the 2nd draft in light of the comments at that even, and will make final decision on adoption of the new rules.
Mike Harrison explained that the general idea is to front load the processes to Examining and Opposition Divisions – they have been in dialogue with DG1 about this. It was pointed out that the 6 month period after approval of the rules will be key for reviewing pending cases, as after this period there will be very few transitional provisions and measures. The revised rules should enter into force on January 1st, 2020.
The general concept of convergence of the arguments, evidence and requests was discussed, alongside the potential issues surrounding auxiliary requests arising from the strict new approach to amendment of a party’s case. The discussions showed an understanding from the Boards of Appeal that there will be some difficulties when the patentee wins at first instance.
Case Management - Albert de Vries
Albert de Vries explained how planning within his Boards works by way of example. The Board (3.2.04) has quarterly planning meetings to select cases for hearing (6 to 9 months in advance); summons are then sent out straight away. There is an internal deadline for issuing preliminary communications of 4 months ahead of oral proceedings. By summoning this far in advance, it allows them to deal with requests for postponement/withdrawals, and to add additional cases to fill the resulting gaps in the schedule.
Fee structure - Ingo Beckedorf
The Boards are currently looking into the reimbursement approach, and in particularly into the ‘interim’ period between the grounds being filed and the summons being issued. Possible fee refunds may be tied to the procedural stages of convergence envisioned in the new rules. They were receptive to our suggestions of copying the “expected to start examination communication” from DG1 as a possible trigger.
They listened to our views that ex parte appeal fees are too high, recognised that ex parte appeals require much less resources than inter partes appeals, and explained that if there is a chance of remission for ex parte case, these are often prioritised.
We asked about the referral to the Enlarged Board of Appeal which questions the legitimacy of holding hearings in Haar – Carl Josefsson said that he could not comment, being President of the Enlarged Board of Appeal. One case was moved from Haar to the Isar building this week in response to a request from one of the parties for an adjournment. The chairs are waiting to see how this develops.
We also raised the issue of the independence of the Boards of Appeal, which they turned round to us. They had initially noted that they are responsible to the BOAC. We said the improving budget and staffing situation and the attempts to tackle the backlogs were most welcome.
Author: Robert Watson