Report of the Professional Conduct Committee

M. Stork (DE), Chair

Summary of Activities

The last half year has been particularly active for the Professional Conduct Committee (PCC), with several projects successfully initiated and adopted by the epi Council. These include the development of guidelines for the use of generative AI and the creation of a workflow to support resolving conflicts in which an epi member is involved. Other ongoing projects include revising the Code of Conduct (CoC) and providing opinions in response to member enquiries. Furthermore, issues of misconduct were reiterated, and respective reminders were sent to epi members, such as professional conduct in connection with oral proceedings and the improper use of titles by EQE candidates. Additionally, amendments proposed by the Disciplinary Committee regarding their Additional Rules of Procedure were reviewed.

A full PCC meeting was held in Munich on September 16, 2023; the Working Group on Amendments of the CoC met in Budapest on November 15, 2024; and the other Working Groups held online meetings.

1. Guidelines for the Use of Generative AI

Recognising the growing impact of generative AI, the PCC established in March 2024 an ad-hoc working group, chaired by Tim Powell, to develop guidelines for its responsible use by epi members. The group met several times online, also considering guidelines and initiatives from national bodies. During one of these meetings, Coreena Brinck, a patent attorney based in the UK with experience in both private practice and in-house roles, also being an expert in using AI tools, provided a practical demonstration of generative AI tools specifically for the work of patent attorneys.

Following the working group’s discussions, Tim Powell produced a first draft of epi Guidelines: Use of Generative AI in the Work of Patent Attorneys” and made subsequent amendments in view of input from the working group, from PCC, members of other committees such as the Online Communication Committee (OCC) and external experts. The guidelines emphasise a responsible use of AI, including informing oneself about the tools one uses, ensuring adequate confidentiality, thoroughly checking any output and being responsible for the final work product.

The guidelines were adopted by epi Council in the Council meeting C98 on 16 November 2024 and are included in this edition of epi Information. Although the guidelines are not binding conduct regulations, certain guidelines (e.g., responsibility for work product) can be seen as an application of general conduct provisions outlined in the Regulation on Discipline and the Code of Conduct, specifically in the context of generative AI. As AI tools and our experience with them rapidly develop, it was anticipated by epi Council that these guidelines may need to be revised in the future and a respective mandate was given to the working group.

The guidelines were also the topic of a first podcast from PCC in the “INSIGHT epi” series, released on 11 December 2024. In the podcast, Tim Powell and Martina Stork discuss key aspects of the guidelines, explain the reasoning behind certain features, and address some of the feedback received so far.

Additionally, Tim Powell, together with Julia Gwilt, Chair of PEC, organized the C98 Pre-Council seminar on 15 November 2024 on the same topic and moderated the seminar (see the report in this edition of epi Information).

2. List of Third Members

In recent years, it has become evident that there is a need within epi for giving support in resolving conflicts by involving a neutral third party. The situation can be the one as provided in Article 5(a) CoC, specifying that any grievance in respect of another member should first (i.e. before a complaint is filed) be discussed in private with the other member, either directly or through a third member. To address this need, the PCC established a sub-group of members serving as volunteers for third members, also tasked with developing a framework for the process.

For this aim, the sub-group studied information on mediation procedures, including a workshop given by WIPO on “Mediation and Arbitration”, the WIPO mediation rules, the EU Directive 2008/52/EC and its implementation by national mediation acts (e.g. German “Mediationsgesetz”) and the Professional Regulation for Patent Attorneys in Germany ( “Berufsordnung für Patentanwälte, BOPA”), specifically §9, which references the Mediation Act.

A document outlining the workflow, terms, and conditions was prepared and adopted by the epi Council during its C98 meeting on 16 November 2024. The document includes provisions on confidentiality, limitation of liability, and termination of discussions. The epi Secretariat under supervision of the PCC chair will maintain a list of neutral third members who can be involved in discussions, which will be made available to epi members or other parties upon request. The workflow is yet to be implemented.

3. Amendments of the Code of Conduct

The Working Group on Amendments of the CoC has focused on provisions related to file retention and transfer. In this context, the applicability of these provisions to epi members working in private practice and in-house roles was also discussed. Furthermore, the group addressed inconsistencies between language versions and ambiguities within the CoC. The proposed changes are expected to be presented to the Council at C99 in May 2025.

4. Opinions on Member Enquiries

In 2024, the PCC responded to two member enquiries as provided in Art. 7(c) CoC: one on file retention policies and the other on commissions (see Art. 3(c) CoC). Opinions were provided to the enquiring members, with the first also published in epi Information 3/2024.

5. Topics concerning misconduct of epi members or EQE candidates

i) The handling of perceived misconduct by epi members in connection with oral proceedings was discussed in a meeting with the President of the Boards of Appeal on 17 October 2024. From the epi side, Peter Thomsen, epi President, Martina Stork, PCC Chair, and Nicole van der Laan, epi Legal Advisor, attended the meeting. Among others, the Boards of Appeal noted an increasing number of instances where parties and their representatives fail to appear at oral proceedings, either without any prior notice or with very late communication of their non-attendance. Such short notice information is causing unnecessary organisational resources and costs on the side of the EPO, translators, if they were requested, and for other parties summoned to the oral proceedings. Following the meeting, a reminder was sent to all epi members with the epi Newsletter 11/2024 that non-attendance should be notified as soon as possible, preferable at least one month before the oral proceedings (see also Collection of Decisions 4.2.4, last updated at C82 Munich, 24./25.04.2017). epi Members should also remind their clients/employers to make a timely decision.

ii) PCC was further informed by an epi member that a Chinese firm approached epi members offering to rent the member’s EPO account. A warning was sent via epi Newsletter 08/2024, reminding all epi members that allowing non-members to carry out professional activities related to any Offices or Courts under the member’s name without adequate supervision is prohibited (see Art. 3(d) CoC). Accepting such offers may lead to serious disciplinary consequences.

iii) Further, PCC has again noted that some EQE trainees are referring to themselves as “PQ European Patent Attorney” or “Partially Qualified European Patent Attorney” on social media or on firm websites. A reminder was sent via epi Newsletter 08/2024 that the title “European Patent Attorney” must not be used by those who are not members of epi, even with an indication “PQ” or “Partially Qualified” (see also epi Information 03/2022). The epi members are also asked to convey this message to their trainees and ensure that such titles are not used on firm websites or the like.

6. Additional Rules of Procedure of the Disciplinary Committee

The Disciplinary Committee (DC) proposed amendments of their Additional Rules of Procedure (AddRPDC) and the PCC was asked by the epi President to review the proposal for facilitating a discussion within epi Council. Although epi Council is not directly responsible for these Rules, it has a key responsibility for the disciplinary system, as it has the authority to propose changes to the overarching Regulation on Discipline for Representatives (RDR) for adoption by the Administrative Council and has to be consulted when the Administrative Council considers amendments on its own motion (Art. 29 RDR). Although the yearly number of disciplinary complaints is rather low with about five incoming complaints per year as reported by DC previously, the disciplinary system is of utmost importance for the profession, due to its public function of maintaining confidence in the profession. It is also important to note that any epi member could potentially be the subject of a complaint or may find it necessary to file a complaint against another epi member.

Therefore, the PCC highly appreciates that the epi Council is being consulted on amendments to the AddRPDC and values the adaptations made by the DC during this process. The current proposal introduces electronic communication methods and gender-neutral language, both of which are generally welcomed. However, amendments have been proposed that could introduce ambiguities and may not align with the RDR. For instance, the proposal suggests that a prerequisite for an epi member filing a complaint against another epi member is the occurrence of a prior private discussion, with the DC sometimes requesting confirmation of such a discussion from the complainant. While Art. 5(a) CoC describes such a private discussion before filing a complaint as good conduct, the PCC believes this provision is not a mandatory prerequisite for filing a complaint, as this is not specified in the overarching RDR. Furthermore, overall, the proposed amendments do not appear to enhance the speed of proceedings. Consequently, the epi Council asked the DC to conduct a further review of the proposal.


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