Some thoughts on the Disciplinary System of the European Patent Organisation

Dr. W. Fröhling (DE), Vice Chair
P. Rosenich (LI), Chair

1. General Comment

The basic concept of the disciplinary system of the European Patent Organisation is working well and fulfills the needs of the Organisation.

There are deficiencies in its daily operation in that in certain cases it takes too long to issue a decision. But these deficiencies are mainly of procedural nature and can be solved by amending the additional rules of procedure of the three disciplinary bodies (DC, DB and DBoA) of the Organisation.

For amendments of the additional rules of procedure, the disciplinary bodies themselves are in charge. Once the disciplinary bodies have reached an agreement on such amendments, the DBoA will submit this proposal for amendments to the Administrative Council for the Council’s approval.

The three disciplinary bodies of the Organisation have started to review these rules and will meet for a first meeting soon in order to discuss what needs to be done and how to proceed.

2. The Disciplinary Committee and its work

The DC is the 1st half of the 1st instance of the disciplinary system of the Organisation. Every Member State of the Organisation has the right to be represented by an epi member (preferably from that State) in the DC. There are no substitutes for the members of the DC.

As part of the disciplinary system of the European Patent Organisation, the DC is independent in its work (deciding on compliance of members of the institute with the Rules of Professional Conduct) and how it organizes its work (in accordance with the Additional Rules of Procedure of the DC). The term of the DC is coincident with the term of the epi Council. At the inaugural meeting of the new Council the members of the new DC are appointed by the Council. Further, the Council decides on the budget of the DC.

The DC is not one of the “committees” of the epi Council or the epi Board which are supposed to support with their work the epi President, the epi Board and the epi Council, ie the executive and legislature. The DC is part of the judiciary as also expressed for instance in the name of the DC in the German version of the Rules of Professional Conduct: “Disziplinarrat” (plain translation: Disciplinary Council).

The Chair of the DC creates, at the beginning of the term of the new DC, a number of fixed chambers (consisting of a chair, a rapporteur, a member and a substitute member) whereby the Chair takes into consideration amongst other things the experience of the members of such a chamber in disciplinary matters and the language skills of the members.

All incoming complaints against epi Members are handled by the DC. After an initial formal check (and a check in case of complaints of epi members against other members of the epi if the complainant has tried to settle the dispute according to Art. 5(a) of the epi Code of Conduct before filing the complaint), the Chair assigns the incoming complaint to one of the chambers.

The chamber’s main tasks are (i) to study the details of the complaint and any comments of the President of the EPO and President of the epi and, if necessary, conduct on its own motion further investigations and, if necessary or requested by the defendant, conduct oral proceedings, and (ii) eventually issue a decision which could be:

  • a. To dismiss the case, or
  • b. To issue a warning, or
  • c. To issue a reprimand, or
  • d. To refer the case to the Disciplinary Board.

All this has to be done within 9 months after having received the complaint. On request of the chamber this term can be extended by the chair of the Disciplinary Board by a maximum of 6 additional months. If the chamber has not issued a decision after 9 months or, if an extension has been granted, at the end of this extension, the case would be taken over by the Disciplinary Board.

The chambers of the DC are issuing their decisions within the applicable 9 months or 15 months term. Within the last 25 years none of the DC cases have been taken over by the DB because of time overdue. The Registrar of the DC watches the 9-month term carefully and remind the chamber. The DB also watches that term.

3. The roles of the Disciplinary Committee with the disciplinary system of the Organisation

a. The DC has a filtering role within the disciplinary system of the Organisation with the effect that the DB and/or DBoA is in most cases involved only in important or severe cases:

  • i. All incoming complaints are checked regarding formalities and the severeness of the case. Simple cases between epi members (e.g. unpaid bills) can often be settled by a phone call.

  • ii. Once a complaint has been assigned to a chamber of the DC, that chamber investigates the details of the complaint and collects all evidence in order to prepare the case for decision. If the chamber decides to refer the case to the DB the case has been investigated, if necessary, oral proceedings have been conducted and the relevant evidence is stored in a structured and ordered way in the file, ie the DB receives the case (in most cases) in a state “ready for decision”.

The effect of this role of the DC on the efficiency of the disciplinary system of the Organisation should not be underestimated:

  • i. The initial check reduces in many cases the overall number of cases to be dealt with.

  • ii. The preparational work by the chamber involved saves a lot of time and efforts for the DB and/or the DBoA in cases which the DC is referring to the DC or which are appealed by the defendant and/or the Presidents of EPO and epi.

  • iii. Due to the composition of the DC and its chambers, local habits and languages can be equally considered in order to provide a fair procedure in an international environment. Not only complainers but also defendants may feel secure in that respect.

b. The work of the DC helps to maintain the high reputation of the profession enjoys in the public, but in particular within the European Patent Organisation:

  • i. Simple cases of non-compliance with the Rules of Professional Conduct, in particular in connection with disputes between epi members about non-severe subject matters (like unpaid bills), should be decided by the DC, ie by a disciplinary body of the Organisation comprising only epi members and no members from the EPO. Only severe cases should be decided by the DB, a disciplinary body with members of the epi and the EPO and chaired by a legally trained Chair coming from the EPO,

  • ii. This setup is, by the way, a strong indication that the Member States and the Administrative Council of the European Patent Organisation gave a lot of trust in the epi and the DC/epi and its Members should be proud of it.

The trust is demonstrated by the fact that the DC (comprising only epi members) has been entrusted by the Administrative Council to serve as the 1st half of the 1st instance of the disciplinary system.

The DC has the following tasks

  • of initially checking all incoming complaints,
  • of conducting all necessary preparations to make the case ready for decision,
  • and eventually also of deciding the case on the base of the findings of the DC as described above,

without any involvement from the outside, in particular from the EPO (except the right of the Presidents of epi and EPO to submit their comments on the cases to the chambers involved and their right to file an appeal).

But also the concept of having, at the level of the DB and DBoA, disciplinary bodies which are composed of members coming from the epi and the EPO with the Chair coming from the EPO and the majority of members coming from the EPO is convincing and corresponds to international standards of disciplinary systems since severe cases and/or cases that have been appealed are decided by court like disciplinary Bodies within the legal frame of the European Patent Organisation (an independent organization sui generis). Similar disciplinary systems for national patent attorneys and advocates can be found for instance in Germany, Poland and many other Member States of the European Patent Organisation.

c. The fact that all the Member States of the Organisation have the right to be represented by an epi member in the DC without substitutes reflects the importance of the DC as a body of the epi aside of and independent in its work from the epi Council and epi Management. As a matter of practice, the DC is always composed of basically senior, experienced epi Members, many of them with legal education in addition to the patent attorneys profession and many of them also involved in national Disciplinary Bodies. This in turn secures a proper international view on matters of Discipline and also gives trust to all Members of the epi and the Public, that also local habits on national level are considered when dealing with disciplinary cases.

d. Further, by having representatives of all Member States in the DC, the chambers of the DC have also via its members direct access to the national disciplinary systems of said states, which might be an important source of information in the work of the chambers of the DC.