Wednesday, 6 April 2011

R 1/10 – Independence

The present petition for review aimed at setting aside decision T 1888/06 where the Board had revoked the opposed European patent.

Unsurprisingly, the petition was dismissed as clearly inadmissible: the R 106 cudgel was used against the petitioners.

There is, however, an interesting passage in the decision. As a matter of fact, the petitioners made a very desperate move and pointed out that the Boards of appeal were not entitled to revoke granted patents. They referred to the statement of position by the advocates general at the ECJ, presented on July 2, 2010 (Opinion 1/09) wherein they denied that the Boards of appeal fulfilled the requirements of an independent court. However, the independence of courts was an absolute object of legal protection (absolutes Rechtsgut) anchored in Article 6(1) ECHR, as also acknowledged by the Enlarged Board (EBA). The consequence of the absence of independent judges was that the Boards of appeal were not entitled to revoke patents. Therefore, the contested decision had no legal basis and was to be set aside. The review proceedings were to be suspended until the ECJ had expressed its opinion in case 1/09.

You might not be surprised to hear that the EBA did not adopt this reasoning. Here is why:

*** Translation from the German ***

[1] Based on the principles that constitute a state founded on the rule of law (Rechtsstaat), i.e. separation of powers, lawfulness of all public action and acknowledgement of human rights, the EBA is unable to share the concerns raised by the petitioners - under reference to the submissions of the advocate general of the ECJ in its opinion 1/09 – against the Boards of appeal being constituted (Verfasstheit) in accordance with the rule of law (rechtstaatlich), and in particular its judicial (richterlich) independence.

[1.1] In doing so, the EBA does not stand alone. As a matter of fact, contrary to the opinion of the petitioners and the advocate general, several high national courts of the contracting states to the EPC have referred to the Boards of appeal as independent courts within the meaning of the rule of law in the past. They have acknowledged the decisions [of the Boards of appeal] to be decisions of an independent court to be taken into account in the progress of their jurisprudence (see, for example, the decision of the [German] Bundesgerichtshof (BGH) dated October 26, 2010, X ZR 47/07, marginal number 31, “Display of topographic information”). This holds true, in particular, for the Patents Court of the United Kingdom, the German Bundesgerichtshof and the German Bundesverfassungsgericht [i.e. the Federal Constitutional Court], the case law of which is invoked repeatedly by the petitioners. See
  • Patents Court, December 20, 1997 – Lenzing [1997] R.P.C. 245;
  • Verwaltungsgericht (Administrative Court), Munich, judgment dated July 8, 1999
  • Verwaltungsgericht (Administrative Court), Munich, judgment dated November 20, 2006 (GRUR Int. 2007, 352)
  • G 1/86 [14] of the EBA
  • G 6/95 [2] of the EBA
  • G 3/08 [7.2] of the EBA
See also:
  • Pignatelli in: Benkard, EPÜ, A 21, marginal number 33;
  • Stauder in: Singer/Stauder (ed.), EPÜ, 5th edition, 2010, A 21, marginal number 1 et seq.
[1.2] Only recently the EBA has had the opportunity to repeatedly express itself accordingly (see its opinion dated May 12, 2010). In its opinion G 3/08 it explains why the Boards of appeal are an independent judiciary within the European patent system that is based on the principle of separation of powers. It refers to A 21 and A 23 which establish the separation of instances, the irremovability of members of the Boards of appeal and the fact that they are not bound by any instructions (Weisungsfreiheit), which are essential characteristics of judicial independence. Moreover, these principles are flanked by particular provisions of the civil servant statutes of the EPO concerning members of the Boards of appeal (cf. Luginbühl in: Singer/Stauder, op. cit., A 23, marginal number 9).

[1.3] Moreover, the contracting states to the EPC, which are organised as states founded under the rule of law almost without exception, are prohibited from signing an international treaty which would transfer their sovereign right to grant industrial property rights having effect in their territories to an international organisation without there being the possibility of examining decisions of rejection issued by this organisation via an independent court bound by the principles in accordance with the rule of law (G 3/08 [7.2.1]; see also BVerfG 2 BvR 2368/99, marginal number 13)

[1.3.1] Not least for this reason, the German Federal Constitutional Court allows constitutional complaints filed against acts of public authority not only if they are directly imputable to the national public authority, and examines legal acts of international organisations in view of their compatibility with the German constitution, in particular with the principles in accordance with the rule of law that are expressed therein and which are widely respected internationally. The acts of the EPO, which, pursuant to Article 24(1) of the German constitution, exercises sovereign powers with effect in the German territory, is also concerned by this examination (see BVerfG 2 BvR 2368/99, marginal number 12 ; as far as the EU is concerned, Article 23(2), second sentence, of the constitution also applies)

[1.3.2] In the ruling cited above, wherein the underlying constitutional complaint was not accepted for decision, the Federal Constitutional Court, after having closely examined their legal organisation, has attested to the Boards of appeal of the EPC that they issue court rulings and essentially satisfy the principles in accordance with the rule of law of the German constitution and the requirements under constitutional law that result from the jurisprudence of the Federal Constitutional Court, in particular because of the qualification and independence of their members as well as the strict separation between first instance grant and opposition proceedings on the one hand and appeal proceedings on the other hand (see BVerfG 2 BvR 2368/99, marginal numbers 19,20).

According to the Federal Constitutional Court, this also held true for the principles of the right to be heard and the right to a fair trial pursuant to Article 6 ECHR. Summing up, the Federal Constitutional Court held that the EBA and the Boards of appeal, pursuant to A 113 et seq. EPC have acknowledged procedural and organisational rules for all administrative proceedings before the EPO and thus have ensured that the proceedings before the EPO are in accordance with the rule of law (see BVerfG 2 BvR 2368/99, marginal number 21). The ECHR also shares this opinion in its decision dated June 16, 2009 (individual complaint n° 40382/04 Rambus Inc./Germany, GRUR Int. 2010, 840/842 et seq.) and it is not clear why other national courts of the contracting states to the EPC should come to an essentially different opinion.

[1.3.3] The explanations of the Federal Constitutional Court make clear that the Boards of appeal, in the absence of a particular legal empowerment, are not authorised to examine the EPC as to its compliance with human rights and the constitutions of the contracting states. All the Boards of appeal have to do is to interpret the provisions (Normen) of the EPC, doubtlessly in the light of principles acknowledged under international law such as the rules of interpretation now standardized in Articles 31 and 32 of the Vienna Convention on the Law of Treaties (concerning the analogous application of the Vienna Convention in the framework of the EPC, see G 1/83, J 8/82). When doing so, they are of course allowed to examine, within the system of provisions of the EPC, whether some subordinated provisions (implementing rules, rules of proceedings, etc.) are compatible with the articles of the Convention and, as the case may be, not apply such provisions because they are not compatible with law of higher rank. However, they are prohibited from setting aside articles of the EPC because they are not in line with other national or international codifications or treaties. Situations of the latter kind could possibly be entrusted to national or international courts such as, in the case of Germany, the Federal Constitutional Court or the ECHR in Strasbourg, as the case may be. However, the latter has already expressed doubts as to its competence for examining procedural violations made by an international jurisdiction (Gerichtsbarkeit), in particular according to the EPC, because the national patent system subsisted besides the European patent system and the applicant had the choice which system, including its judicial remedies (gerichtlicher Rechtsschutz), he wished to use (see ECHR, GRUR Int. 2010, 840/842, Rambus Inc./Germany)

[2] A suspension of the present review proceedings until the decision of the ECJ in the proceedings concerning the referral questioning the compatibility of the draft agreement on the introduction of a European patent court is out of the question. As a matter of fact, a decision of the ECJ denying the independence of the Boards of appeal within the meaning of a jurisdiction (Gerichtsbarkeit) in accordance with the rule of law, would not be binding on the Boards of appeal. The reason is that the EPC is not part of the EU legislation but, by instituting the European Patent Organisation, institutes an distinct international subject that is, according to its very essence, independent of the European Union, comprising not only all the EU member states but also non-EU member states.

Apart from that, the opinion 1/09, which has been issued in the meantime by the plenum of the ECJ on March 8, 2011, does not call for adopting another point of view.

To read the whole decision (in German) or have a look at the file wrapper, click here.


Myshkin said...

"Moreover, the contracting states to the EPC, which are organised as states founded under the rule of law almost without exception"

I'd like to know which EPC contracting state forms the exception!

I knew there have been unsuccessful complaints to the ECHR before, but I was not aware of the Rambus/Germany case. Rambus seems to have mistaken the right to be heard for the right to amend its case. I don't think there are many courts that allow parties to make so many amendments to their case as the Boards of Appeal do (though admittedly patent proceedings are a bit special in this respect).

Anyway, I was wondering today why the ECJ's opinion on the (in)compatibility of the draft agreement for a European Patent Court with EU law does not also imply the incompatibility of the EPC with EU law. As I understand it, the problem with the European Patent Court system would be that those courts would have to safeguard the proper application of EU law instead of the national courts. Why is this not a problem with the Boards of Appeal (which have even explicitly denied having the power to refer questions to the ECJ)? The only reason I can think of is that the national routes still exist, so that applicants more or less voluntarily give up their right to a proper application of EU law... I'm not convinced that the ECJ would accept this when prompted.

pat-agoni-a said...

I sometimes wonder whether the petitioner really evaluates his chances of success before filing his petition.

On the other hand, if the EBA would have followed his arguments, could it then, also as a no-court, set aside the decision of the BoA?

Michael Thesen said...

The argument is maybe not as absurd as it might seem given that the same argument was used in a discussion on the case law of the BoA by Robin Jacob LJ in Munich. However, Jacob questioned the EPO's procedural rules by referring to Article 32 TRIPS, saying "An opportunity for judicial review of any decision to revoke or forfeit a patent shall be available." This is not the case if the patent is revoked after an appeal against an unsuccessful opposition (for more, see my blog GermanIP on

Myshkin said...

Compliance of the EPC with Art. 32 TRIPS is discussed in T 557/94, point 1.3:
"(...) Reading Article 32 TRIPS in the context of the usual structure of judicial review in the contracting states of the EPC and the EPC itself, this provision guarantees an instance for judicial review in revocation proceedings. Ordinary legal construction (e.g. Article 31 to 33 of the Vienna Convention for the Law of Treaties) forbids overly literal interpretation which is clearly outside what can conceivably be based on the meaning of the provision taken in context.

Article 32 TRIPS does not oblige the reviewing instance to remit the case for continuation of proceedings to the first instance in cases where the first instance did not revoke the patent and the reviewing instance intends to deviate from the decision of the first instance."

The question is also treated by the EBA in G 1/97, point 5. The EBA seems to be of the view that opposition and appeal proceedings form part of the grant procedure, and that therefore Art. 62(5) TRIPS takes precedence over Art. 32 TRIPS as far as the EPC is concerned. I don't find this argument persuasive at all, since I cannot imagine that TRIPS was intended to distinguish between opposition proceedings under the EPC and revocation proceedings under national laws.

In Lenzing AG's European Patent (also referred to in R 1/10) Jacob LJ himself has addressed the point. The situation was that of a revocation in an appeal against a rejected opposition, see par. 5 and par. 13. Lenzing had argued that the provisions of the EPC concerning the Boards of Appeal are in breach of Art. 32 TRIPS (par. 61, stage (9)). Jacob rejected this argument in par. 93-105, essentially by explaining why the Boards qualify as courts. It seems he shared T 557/94's interpretation of Art. 32 TRIPS, but this is not really explained.

Myshkin said...

Another relevant decision is Pozzoli SPA v BDMO SA in which again Jacob LJ participated. Here the question was whether Art. 32 TRIPS forced the Court to grant permission to appeal:
"6. (...) Consider a case where a national Supreme Court, contrary to all decisions below, for the first time holds a patent invalid. Does Art.32 really require that there be a means of judicial review of this? Mr Mellor was forced to so submit. He postulated that the way round this would be for the Supreme Court having reached the decision that the patent is invalid to remit the case to the lower court so that it would be that court which actually revoked the patent so that there could be an appeal to the Supreme Court all over, thus complying with the Art. 32 requirement of a judicial review. Keene LJ aptly described this as a "dog's breakfast" solution.

7. The problem would not arise if one read Art. 32 as applying only to administrative or political decisions. Mr Mellor sought to rebut such a reading by reference to other provisions of the Treaty. These were Art.62.3 (requiring that certain "final administrative decisions [which include revocation of a patent] shall be subject to review by a judicial or quasi-judicial authority.") and Art. 41(4) (providing that "parties to a proceeding shall have an opportunity for review by a judicial authority of final administrative decisions, and … of at least the legal aspects of initial judicial decisions on the merits of the case"). Mr Mellor submitted that Art. 32, in referring to "any decision to revoke" must include judicial decisions to revoke, not merely administrative or other decisions because these other Articles recognise the distinction between administrative and judicial decisions.

8. If right, his submission means the Treaty requires the "dog's breakfast" solution or something similar. (...)"

The Court did not decide on this, since it considered that the decision not to grant permission to appeal already qualified as a judicial review. (In that case, maybe the possibility of filing a petition for review already sufficies as well?)