Report on the case law of the disciplinary bodies in 2023

This is a report on the case law of the disciplinary bodies in 2023, with the exception of the decisions of the Disciplinary Board of Appeal in matters concerning the EQE.

The situation of cases in 2023 is shown in the following table:

Further a summary of the published and/or final decisions is given. Please note that through the summary the cases are simplified and might be altered. Therefore, it cannot be the intention of this report to present generally applicable rules that may be invoked in future proceedings.

It should also be noted that the disciplinary bodies have to make decisions on specific individual cases, considering the individual circumstances, and it is not the task of the disciplinary bodies to establish generally applicable rules.

Decisions from the Disciplinary Board of Appeal.

In the case D 55/2021 the letter of the Complainant was primarily written as a response seeking to defend the Complainant in an earlier disciplinary proceeding initiated against the Complainant. The response concluded with the statement that the response shall be treated as a disciplinary complaint against the Respondent if the DC‑Chamber agrees with the given conclusions in the response.

One procedural question the DBoA had to look at was to determine the correct date when the complaint was filed. The DBoA stated that this date is neither the filing date of the response nor the date when the DC‑Chamber agreed with the given conclusions, but the date it has been received by the Registrar knowing that it is a complaint.

The DC‑Chambers handling the two cases had the same members. A further procedural question was if this situation caused a formal procedural error or gave any reason for exclusion or objection of the members. According to the DBoA this was not the case.

In the decision of the DC‑Chamber it is stated that the dispute between the Complainant and the Respondent was still unsolved and that several court cases were pending. Initiating of legal procedures by the parties seems not to be in contradiction to the Code of Conduct. Filing a lawsuit cannot be regarded as a violation of the Code of Conduct. As long as there are no legally binding court decisions, it cannot be decided whether or not there is a breach of the Code of Conduct. As the effective substantive outcome of the decision, the DC‑Chamber dismissed the complaint.

The epi President filed an appeal.

The DBoA concurred with the epi President in that the reasoning of the DC‑Chamber was incomplete as not all alleged acts mentioned in the response of the earlier case were considered. Especially the alleged acts (cutting off the Complainant from their clients, harming their reputation, forging their signature, forcing them out of the association, barring them from handling matters of the association, etc.) are obviously very serious, and at least prima facie may qualify as potential breaches.

The DBoA concurred with the epi President that the filing of a lawsuit may under certain circumstances constitute a breach of the rules of professional conduct. The DBoA also stated that this is not contradicting by the statement that the Regulation on Discipline (RDR) cannot prevent epi members from exercising their right to defend their interests by all legitimate means, including court proceedings. As a result, the DBoA concurred with the DC‑Chamber in that there was no breach of the RDR in the case in hand as the Respondent did not act in bad faith.

Further the DBoA concurred with the epi President in that a situation where there are pending court proceedings but not yet legally binding court decisions, in principle it can be decided whether or not there is a breach of the Code of Conduct. The disciplinary bodies act independently and are not obliged to wait for a decision of a national court or similar authority. This does not mean that they cannot take pending court proceedings or already issued national decisions into account when assessing an alleged breach of the RDR, e.g. a negative decision of a national court against an epi member will normally also serve as an argument for a breach of the rules of professional conduct. On the other hand, even if a national court finds that certain acts of a professional representative are not illegal under the national laws of a member state, such acts may still be found by a disciplinary body under the RDR to constitute a breach of the rules of professional conduct.

With the Decision D 55/2021 the case was remitted to the DB of the European Patent Office for decision.

In the case D 01/2020 two actions of the Respondent had to be decided.

One action was the use of the title “European Patent Litigator” at a time before UPC was operational.

The DC‑Chamber considered that the use of this title would suggest to the public that the user had a right of representation before a court in litigation actions involving European patents. The Respondent had no such right. Thus, the intentional use of the title “European Patent Litigator” could indeed be “misleading”.

However, the DC‑Chamber observed that the Respondent no longer used the title and saw no reason to pursue the complaint.

The epi President filed an appeal. As far as the title “European Patent Litigator” was concerned, the epi President mainly emphasised the need to clarify under which conditions use of this title was allowed. He did not, however, take an explicit position in this respect.

The DBoA stated that the RDR do not provide for the possibility of having general points of law, such as the (un) lawfulness of a certain conduct of a professional representative, clarified by the DBoA by way of a request for a positive or negative declaratory finding.

As a result, the appeal was rejected as inadmissible regarding the use of the title “European Patent Litigator”.

The other action was the use of the title “IP attorney” by the Respondent for non-qualified candidates.

The DC‑Chamber considered that it was outside the scope of its competence to take disciplinary measures in relation to that title, as it could possibly have no relation to European patent work. It further observed that in at least some contracting states there were no special requirements for acting as an adviser on IP-related issues, and also that the term “attorney” was rather vague, especially when not used in relation to a specific contracting state or specific kind of IP right.

The DC‑Chamber dismissed the matter with the regard to the use of the title “IP attorney”.

The epi President also appealed this part of the decision. He stated that the use of the title “IP attorney” should not be permitted under the circumstances of the case. This term gives rise to an association with the protected professional title “European Patent Attorney”.

The DBoA found the appeal admissible in that regard and stated that it is irrelevant whether the title at issue “might have no relation to European patent work”, as held by the Disciplinary Committee. In fact, the opposite is true: what matters is whether the reported conduct concerned activities which are related to the EPC.

In the view of the DBoA, it is likely that a significant part of the target public in the present case will assume that the title “IP attorney” is being used as a short form or as an alternative form for the full title “European Patent Attorney”, or that it includes this title. Consequently, it is likely that the target public will assume that the persons using the professional title “IP attorney” have the same qualifications as persons using the title “European Patent Attorney” and are therefore entitled to act before an IP authority, such as the European Patent Office.

Lastly, the Respondent must have “knowingly” made the misleading statement in question – Art. 1(1), second sentence, RDR.

The Respondent has always been aware of all the relevant circumstances, i.e. that non-qualified candidates were given the title “IP attorney” on the company’s website. Furthermore, at the latest since receiving the complainant’s request to remove the statements at issue, the Respondent has also been aware of, or has at least condoned, the possibility that the use of the title “IP attorney” could be considered misleading.

As a result, the DBoA concludes that an infringement of Art. 1(1), second sentence, RDR in conjunction with section 3(b) Code of Conduct has taken place.

For the finding of the sanction the DBoA considered that the Respondent had meanwhile refrained from using the title in question and that the DBoA had not yet decided on the legal question of whether or not the title “IP attorney” is misleading for non-qualified candidates.

With the Decision D 01/2020 the DBoA imposed a warning.

Decisions from the Disciplinary Committee

From the four decisions of the DC one decision was appealed by the epi President, one case was forwarded to the DB and two decisions became final. These two decisions will be reported here.

In one case the complaint was based on non-payment of an invoice from the Complainant to the Respondent. When the Rapporteur asked the Complainant of the status of the non-payment, the Rapporteur was informed that the invoice had been settled, and that the Complainant had therefore withdrawn the Complaint. The DC‑Chamber decided to dismiss the case because the Complainant has withdrawn the complaint before the DC‑Chamber could make a decision on the merits.

In the other case the Respondent was instructed by a Client to assist in the transfer of its patent portfolio to the Complainant. Also, the Complainant contacted the Respondent in this regard, but without receiving any reply. The patent portfolio was finally transferred, but several months later.

The Respondent argued that the instructions were unclear. This argument was not convincing for the DC‑Chamber as according to the file it was evident that the Client has always been clearly willing to have its patent portfolio transferred to the Complainant.

The DC‑Chamber assumed that situations may exist in which a delay may be justified, for example, to clarify ambiguities in instructions, or similar. But the duty to observe good fellowship would reasonably have required at least some kind of response to the Complainant after their contact.

The Respondent considered that its attitude towards the Complainant and the Client was appropriate and justified by the debt due by the Client. So, the reason for the delay appeared to have been unpaid invoices.

According to the finding of the DC‑Chamber, the Respondent breached the RDR. Considering the circumstances of the complete case the DC‑Chamber found that a reprimand was an appropriate sanction for the facts raised to its attention.

Comments