Report of the Disciplinary Committee about its annual meeting in Sofia

P. Rosenich (LI), ChairP. Rosenich (LI), Chair

After some discussion phases in the past years since last Council the work at DC continued as it is legally provided for. No bigger problems or difficulties have popped up.

DC-Contacts with the epi Presidium

A) Non Attendance at the last Board Meetings

Because there was no need for discussion with the Board and no agenda points regarding Discipline scheduled the DC-Chair did not attend the last Board Meetings.

B) Attendance at the Council Meetings

The DC Chair Paul Rosenich has attended the last Council meetings including the Sofia Council.

C) Invitation of President and Vice-President to address DC-Meeting and inform about DB and DBoA decisions.

While most of the DBoA Decisions refer to EQE-Matters and DB-Decisions are often not published it is of importance for the DC to learn how the higher ranking Disciplinary Bodies decide about cases which have been treated at DC-level beforehand. This is an integrative element of development of the Disciplinary Law and Practice.

It is reminded that the DB as such is - like the DC - also a first instance Disciplinary Body however it is composed of epi and EPO Members and may order more severe sentences than the DC. Francis Leyder and Heike Vogelsang-Wenke attended the Sofia Meeting of the DC and the President presented his views about certain problems he recognized. Many of those problems - as far the Disciplinary Committee is concerned - are already addressed by it. So does the DC register all cases in order to be able to refer to past decisions against the same Member if necessary. Further a database of decisions is created to help the Chambers in following the case law. Also the requirement of secrecy within the DC between Chambers has been lifted in cases where a Chamber has a reason to look into another case which is related to their current case. The President and DC Chair agreed that efficiency in the proceedings is important and the early delivery of decisions is necessary. The DC does deliver its decisions between 9 and 15 months after a claim was filed.

Annual Meeting of the DC

A) Back to Back organization with epi Council Meeting

In order to safe travel costs and organizational man power DC agreed with the Presidium to use this new format back to back for organizing the DC meeting. In years where the DC is not freshly appointed such combination of meetings are technical possible. The next meeting, at which the DC will be newly appointed and hence can not be combined with the Council it will be held in Portugal - as so far the DC was not in this Member state.

It was current practice of the DC to visit different Member States in order to make itself also visible for the local epi-Members. The DC does also meet with local representatives of the profession in order to exchange opinions on disciplinary Questions. In Sofia Samuil Benatov of Sofia attended a dinner meeting for that purpose. Unfortunately as it was reported, Bulgaria does currently not have a national patent attorneys organization, as most of the other Member States have.

B) Agenda of the Sofia DC Meeting

Joint Dinner Meeting of the Members of the Chambers. Here the Chambers could discuss/deliberate their Cases and make themselves familiar with other internal topics.

Report and Discussion from the Chair about the past year.

Report and Discussion from the Working Group on Guidelines. Here it was reported and presented that Templates and Guides have been prepared to ease the work of the Chambers. Also a Mock Case presented by Wolfgang Poth was discussed.

Presentation and Discussion of interesting cases. About three points fell under this discussion point and allowed all Members to chare their opinions. For the DC this is of importance as on the one hand it wants to operate under a unified view taking into account all national views on questions of Discipline.

Update on the amendments of the Regulation on Discipline and Additional Rules of Procedure of the Disciplinary Committee. While the Regulation on Discipline is not a topic where the DC is decisive, the Additional Rules of Procedures are important to allow the DC to operate efficient and fair. A number of improvements have been elaborated and presented by the DC-Secretary Tuna Yurtseven who lead a respective Working Group. The internal discussion is now opend.

Report about Case Management by the Registrar. The Registrar Vernessa Pröll requested all Chambers to deliver together with their decision also an abstract of it. This will efficiently help the Working Group for the Database of Decision. This Working Group is composed of John Grey (GB), Wolfgang Poth (DE) and Thierry Debled (FR). They have been again entrusted with reading all decisions in the respective languages (GB,DE,FR) and providing abstracts for those decisions which have not yet been listed.

C) Need for appointment of new Members to DC

Italy and Netherlands lost its DC-Representatives, as they had to step back.

DC noted with satisfaction that Council appointed new representatives of those Countries to the DC: Giuseppe Mazzini (IT) and Ferry A.T. van Looijengoed (NL)

Interesting Complaints:

A) Non Representation

A Complainer said that he was not properly represented during Oral Proceedings and therefore lacked the right to be heard. This because the Complainer believed that the appointed European Patent Attorney did not properly represent the Complainers case at the Oral Proceeding. Chamber Westerholm takes care of this case.

B) Request for Mediation

A Complainer requested DC to mediate between his interests and an European Patent Attorney who has withdrawn from representation immediately after he has received some critics from his client/the Complainer. Depending on a response of the Complainer on clarifications questions by the Registrar a Chamber will be entrusted in due course.

This case shows a practical problem, which might be more often in real life:

For skilled patent attorneys and long standing epi Members it is not so difficult to find a competent European Patent Attorney for a particular work in a particular technical field.

However for clients or "newcomers to the IP-world" this might be somehow difficult.

On the one hand for the DC it is impossible to help applicants in their application work before the EPO on the other hand it seems not possible either to name specialized epi Members to such desperate clients. Eventually epi Council wants to look into this problem and think it over on how an objective presentation of qualification could be made, so that clients could better than with the existing Membership list find their way to an optimal representative.

It might be worth to mention in general that a European Patent Attorney who wants to resign as representative of a client has to do everything to preserve his client's rights before taking action and resigning as representative in order not to damage the client's interests. This might also include substantive work for the case (e.g. filing an application, responding to an office action, etc.) in case the client would suffer irrevocable damages if the representative would not do the work. Such aspects will be taken into account when determining the time period the client reasonably should have to find a new suitable representative. During which time period a current representative eventually has to continue to work for the client, ie should eventually resign from his representation only after careful considerations.

C) Received Number of Complaints (and other requests)

2017: five complaints and five other requests
2018: five complaints and four other requests
2019: two complaints and one other request

None of these cases led to a decisions which was published so far.