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Friday, 27 April 2012

Four pages good, two pages better


The EPO’s Boards of Appeal routinely issue minutes of oral proceedings which reveal almost nothing about what has taken place over perhaps the most important five or six hours of a patent’s life. 

In contrast, if you attend oral proceedings before a first instance division (e.g. examination or opposition), the official set of minutes you receive should, in theory at least, be reasonably explicit in outlining the discussion which took place and the major points made by each party. (The IPKat leaves it his readers to comment on whether they believe the practice matches the theory.) The official policy at least, which most divisions abide by, is that the first instance divisions should keep detailed minutes. The official policy of the Boards themselves is that they need not.

The letter and the spirit of Rule 124

Perhaps the IPKat is being unfair to the Boards? Well, compare the wording of Rule 124(1) with the formulaic wording which is used by most Boards, on most occasions, to summarise discussions lasting several hours.

Rule 124(1) -- which is equally binding on the Boards and the first instance divisions -- says:
Minutes of oral proceedings and of the taking of evidence shall be drawn up containing the essentials of the oral proceedings or of the taking of evidence, the relevant statements made by the parties, the testimony of the parties, witnesses or experts and the result of any inspection.
Is this reflected in the standard account appearing in the majority of Board of Appeal minutes?
The Chairman declared the oral proceedings open. He summarised the relevant facts as appearing from the file. The parties addressed the Board. The matter was then discussed with the parties. The Chairman then declared the debate closed. The Chairman announced the decision: the appeal is dismissed in its entirety.
In addition, the minutes will detail who attended, whether they identified themselves with a passport or EPO ID card (yes, really), the start and finish times, a formal listing of the requests or claims in play, and statements like "the patentee maintained its main request".

Nobody said anything relevant, clearly
But if you cannot tell from the minutes of a patent hearing whether the appeal was about lack of inventive step or non-compliant drawings, then there has to be serious doubt that the legislators had such a document in mind when they said that the minutes must capture "the essentials of the oral proceedings [and] the relevant statements made by the parties".

The official line, naturally, is that these minutes do capture the “essentials” and the “relevant statements”. But those phrases are interpreted in the most restrictive way. For example, a “relevant statement” would be a patentee saying that it wished to abandon a set of claims, but would not include a submission alleging that the opponent had forged a document’s date.

EPO case law justifying the difference

In the case law of the Boards, the IPKat has found two rather different justifications for this difference in first instance practice and that of the Boards of Appeal. Case T966/99 held that:
Considering that the decisions of the Boards of Appeal are not subject to revision … whilst the decisions of the departments of first instance … are open to appeal, it is clear that what constitutes the ‘essentials’ and the ‘relevant statements’ of the oral proceedings before the Board of Appeal needs not be noted down as extensively as the ‘essentials’ and the ‘relevant statements’ of the oral proceedings before the departments of first instance.”
This justification was never particularly convincing. Rule 124 (and its predecessor, Rule 76) never gave any indication that relevant statements need not be noted down as extensively in one set of minutes compared to another, or that the character of the minutes was different depending on whether or not an appeal was available against the associated decision. Most of all, nothing in the Rule suggested that the nature of a “relevant statement” depended on whom it was uttered in front of.

In any event, the T966/99 rationale, based as it was on the inherent unappealability of Board decisions, lost any validity when the EPC was revised to allow for review of Board decisions by the Enlarged Board. The winds of change were blowing in this regard when decision T263/05 issued. 

The Board in T263/05, while citing T966/99 for other purposes, ignored entirely the point about no appeal being available from Board decisions, aware as it must have been that this was all about to change months later. Instead the Board gave a brand-new justification for the difference in practice between first instance and appeal minutes:
The reason for this [difference in practice] is primarily that decisions of the Boards of Appeal are intended to be self-contained, that is, they are intended to be capable of being understood by the parties and the public without reference to other documents. The decision will therefore provide a summary of all the arguments of the parties, both during the written phase of the proceedings and during the oral proceedings themselves. In contrast, decisions of the Examination/Opposition Divisions will often contain references to the minutes or other documents on file, which need to be referred to in order to fully understand the decision.
This is presented almost as a public service, i.e. by keeping arguments out of the minutes, the decision becomes more easily readable. But again there’s nothing in Rule 124 to support this practice and policy. Would it not be possible to fulfil both the letter and spirit of Rule 124 by writing complete minutes, and then if necessary cutting and pasting (or providing a synopsis of) those crucial points that were required for the decision to be self-contained? 

Why does this all matter?  

If the minutes reveal nothing about what went on during a five-hour hearing, but the decision is self-contained, what harm is done? Well it sometimes does matter. If a practice was ingrained in the EPO that the minutes captured the flow of the discussion and at least the essence of each major point argued, then there would be a higher probability of having a reliable record for the Enlarged Board when deciding if there had been a procedural violation. The Boards themselves do like to have such a record from lower instances to assist them in their reviews of first instance cases.

In one of the rare instances where the Enlarged Board overturned a Board of Appeal decision, reported here, the petitioner was saved only because the evidentiary weight of affidavits from five individuals present on the day, each recounting the exact words of the Chairman of the Board of Appeal, was accepted over the version of proceedings recounted in the minutes and recorded in the Board decision.

Time to allow recordings?

This Kat believes it would be better for all concerned, however, for there to be a transcript or even a plain audio recording of the proceedings. The EPO does not offer this service, and woe betide the representative who brings in and activates a recording device (such as the now ubiquitous smartphone). While the EPC and its Rules are neutral about the question of recording oral proceedings, and it's not clear what penalty could be meted out to someone who did record the goings-on at oral proceedings, the EPO issued the following notice way back in 1986:
In order to avoid misunderstandings, parties to oral proceedings and their representatives are hereby informed that the following rule will in future apply.
At oral proceedings under Article 116 EPC, whether before an Examining Division, an Opposition Division or a Board of Appeal, no person other than an EPO employee is allowed to introduce any kind of sound recording device into the hearing room. Such a rule is in accordance with the general practice in the Member States of the European Patent Organisation.
(Incidentally, appealing vaguely to “general practice in the Member States” was also the rationale given for the ban on double patenting in overlapping divisionals, though several Boards have since cast doubt that such a general practice in fact ever existed, or that it was a valid reason for the EPO to adopt such a practice in its Guidelines.)

That aside, most comparable tribunals at national level, i.e. the courts who have the final say on validity, do allow for either recording or the issuing of transcripts. Has the time arrived when the EPO should consider allowing an official recording to be released or (perhaps for a fee) transcribed? The technology would cost very little. Would this not "raise the bar" at the EPO's end of the pitch, in terms of providing a more transparent process for arriving at decisions of great importance to inventors, applicants and opponents? L:et us know what you think.

10 comments:

Megan said...

I agree that an audio recording should be made and given to all parties involved to prevent disputes later as to what was said, as it is very tempting to surreptitiously record the proceedings.

Meldrew said...

YES! - YES! - a thousand times YES!

The cost to the EPO would be negligible.

Recordal would reduce the risk of applicants (or EPO) remembering what they should have said rather than what they actually said, and basing future conduct on that false recollection.

The enhancement to EPO reputation from such transparency would be considerable.

Recordal may have a salutary effect on representatives, and on EPO examiners and Board members, by enhancing preparation for oral proceedings.

Of course, an allied problem is the high prevalence of bad decisions presented orally that have to be justified later in tortured written decisions.

If the Examining/Opposition divisions and the Boards had access to recordals or transcripts, and presented their decisions in writing rather than at the oral proceedings, I suspect that the quality of decisions would rise, and the number of appeals decrease.

hollyipltd said...

Greater transparency and accountability are always good. Now that Board of Appeal decisions are open to review circumstances have changed and Boards of Appeal have got to accept that.

Anonymous said...

Perhaps the EPO could hire all those Court Reporters cut loose from The Old Bailey in March:

http://www.bbc.co.uk/news/magazine-13035979

Roufousse T. Fairfly said...

(part 1/2)

This thread is already receding in internet oblivion, but better late than never...

You first deplore the EPO's unsubstatiated references to national law:

... appealing vaguely to “general practice in the Member States” was also the rationale given ....

But then you appear to resort yourself to the same type of vague reference:

That aside, most comparable tribunals at national level, i.e. the courts who have the final say on validity, do allow for either recording or the issuing of transcripts.

I am curious to know in which countries where these "most comparables tribunals" providing the type of verbatim transcripts or sound recordings you appear to call for happen to exist.

I had a quick look at DE and FR law (admittedly major EPC members), but couldn't locate provisions for providing a literal record of some sort. They do however stipulate which particulars should be taken down in an official record.

Article 728 of the French Code de proc├ędure civile defines the elements that must be recorded in the court's registry. I can't find anything in this list beyond what is typically found in DG3's barebones style minutes.

Germany's Article 160 ZPO ("Zivilprozessordnung") specifically defines in section 3 some details which might be understood to be implicitly covered in the corresponding article of the CPC. I don't see a basis demanding or allowing the provision of a verbatim transcript.

The subsequent ZPO articles do specify how events should be noted during the debates. A sound recording device is allowed (i.e., a dictaphone), but as an alternative to shorthand, longhand, or the use of a computer, and for the clerk's personal use. (This is how I understand the articles).

So much for "detailed" minutes in national law.

What would be the legal weight of a recording of the debates or a verbatim transcript for justifying the review of a BoA decision by the EBoA? Rule 106 EPC sets a very high standard. If a certain procedural incident is caught on tape or by the ears of a transcript clerk, then it should also be perceivable to a well prepared, quick thinking, attorney or his party. A transcript could just as well provide evidence that the petitioner failed in his duty to raise objections on the spot. I very much doubt that a transcript would help in proving the type of fundamental procedural defect which could not possibly have been objected to during oral proceedings. Be careful what you wish for...

A good, intelligible, and reliable sound recording is not a trivial matter. Do you want to turn EPO OP rooms into sound studios? Only a minority of these are currently equipped for simultaneous translation, with permanent furniture and cabling for PTT microphones. Equipping and maintaining all facilities with comparable equipment for sound recording would not be cheap. I cannot imagine that a technical failure of the equipment could represent grounds for reopening the case after a decision is pronounced, and repeating OPs. Whose duty would it be to keep an eye on the equipment, and make sure that the recording device is started at the proper moments. Should the recording be allowed to be edited afterwards?

Roufousse T. Fairfly said...

(part 2/2)
In the examining and opposition divisions, it is one of the examiners ("second examiner") who is tasked with producing minutes. This examiner is also a member of the deciding instance. Even though the division as a whole is not responsible for the minutes, one would normally want to avoid blatant contradictions between the minutes and the decision, so what trust could formally be placed in the former?

In DG3 this task belongs to the registrar, who plays has a formal, (but crucial) supporting role. Should he have any influence in deciding how much of the proceedings should go recorded? Or the chairman? So you would be left with only two antipodal alternatives: a full, word for word, transcript (expensive), or the minimal style.

When I was taking down notes as a second examiner I had to keep my ears pricked to make sense of the parties. The division listens to the arguments in the language they're originally mumbled in. Forget Charles Laughton. Think stultifying readings of previously submitted briefs delivered in a monochord voice (... er, if you now turn, er, to page 17 of my letter dated, lemme see, er XX.XX.XXXX, er, er... ). Should you really take every er er er down, or would a statement to the effect that the party recapitulated his written arguments on, say, novelty, suffice? The opposite, ad libbing verging on stream of consciousness, is also a bit difficult to record, if the party makes no sense or is obviously out of step. (eg: once an opponent turned to me and asked what I was looking for when I purportedly drafted the search report years earlier -- even though I never even belonged to the search or examining divisions. Then he starts making noise on some other irrelevant issue, I think it was non-unity. And his side was winning anyway!).

The scope of the minutes was variable. In the majority of cases, OPs take place in the applicant's absence (or are cancelled for one reason or another), so you needn't write that much. You needn't be too exhaustive either when the OP ended up with a decision to grant and a representative walks away with a wide grin. In oppo I would occasionally put down the more preposterous statements I would hear as literally as possible, for the enjoyment of the board and of the public.

There were cases where unsuccesful representatives courteously requested more detailed minutes of an examination OP. I understood that they wanted to demonstrate to their foreign correspondents that they had dutifully represented their interests, and put forward all of their arguments, regardless how unpromising.

But I also had the experience of some other representatives who really wished nothing the briefest possible record of either a phone conversation or an OP. In retrospect, I believe that they were concerned with the inequitable conduct doctrine in the US.

Can't please em all.

BTW, the question of OP recordings was a theme in R20/09 and R17/09. With that background I don't think recordings will be allowed any time soon. In the latter case the appellant tried producing his own minutes of the OP, to show the world that he was robbed of his invention, and to prove how unfairly he was being treated.

If you're really so interested in getting a transcript, how about bringing you own stenographer to the OP? In a big pharma case that would represent only chump change in relationship to the amounts involved.

What could be objected to someone intensely taking notes during an OP?

The stenographer(s) could be hired on the spot from a agency, and be commissioned with the production of a formal transcript, PDQ. He could sit separately from the parties, with the public. The question would arise as to whether he could listen in on the translation, or would have to be multilingual.

Roufousse T. Fairfly said...

(part 3/3) (didn't fit in two messages).

If the OP tempo is too fast (unlikely), you may try introducing a stenotype in the room. I surmise that these are silent enough, and it would be interesting to know what a board might pull out of its hat to oppose its use. To my knowledge, there is nothing against parties bringing a laptop into the room, notwithstanding the issue with built-in microphones. So what difference does it make if the device has two dozen keys instead of 84?

Roufousse T. Fairfly said...

I wrote my comments in three separate parts. Why is only the last one visible?

Jeremy said...

Sorry, Roufousse -- your previously invisible comments went straight into Spam. Google's new blogging software, with which we're struggling right now, doesn't tell us when new items have entered the Spam box so we don't know when to check them.

Roufousse T. Fairfly said...

Thanks Jeremy,

These blogging systems are a real bane, I don't know of any one which is really satisfactory.

The subject reminded me of a certain a passage from http://www.youtube.com/watch?v=jNKjShmHw7s:


- So what do you suggest, Sir Humphrey?
- Bernard, Minutes do not record everything that was said at a meeting, do they?
- No, of course not.
- People change their minds during a meeting, don't they.
- Yes...
- So the actual meeting is a mass of ingredients for you to choose from.
- Oh, like cooking.
- Like... No, not like cooking, Bernard. Better not use that word in connection with books or minutes. You choose from a jumble of ill-digested ideas a version which represents the PM's views as he would, on reflection, have liked them to emerge.
- But if it's not a true record...
- The purpose of minutes is not to record events, it is to protect people. You do not take notes if the Prime Minister says something he did not mean to say, particularly if it contradicts something he has said publicly. You try to improve on what has been said, put it in a better order. You are tactful.
- But how do I justify that?
- You are his servant. A minute is a note for the records and a statement of action, if any, that was agreed upon.

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