The determination of technical facts in patent litigation
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1 The determination of technical facts in patent litigation GRUR Annual Meeting 2017, Hamburg Carl Josefsson President of the Boards of Appeal Introduction Questions: how are the boards of appeal composed (focus on technical boards)? what role/s do members play? what responsibilities do they have? Sources: European Patent Convention Travaux préparatoires Practice Boards of Appeal 2 1
2 European Patent Convention Mixed composition (legally and technically qualified members): technical boards of appeal Enlarged Board of Appeal No mixed composition: Legal Board of Appeal - 3 legally qualified members not concerned with technical facts and arguments Specific mixed composition depends on type of case and issues involved Boards of Appeal 3 European Patent Convention Technical boards majority technically qualified members (Art. 21(1),(3)(a),(b) and (4) EPC) appeals against decisions concerning refusal of application or grant, limitation or revocation of patent usual composition: 2 technically qualified and 1 legally qualified member/s possibility to enlarge to 3 technically qualified and 2 legally qualified member/s when ED or OD consisted of 4 members or BoA considers that nature of appeal so requires Boards of Appeal 4 2
3 European Patent Convention Compare to composition of the Enlarged Board of Appeal majority legally qualified members Referral for decision or opinion (Art. 112 EPC) uniform application of law clarification of point of law of fundamental importance Petition for review (Art. 112a, R EPC) a fundamental procedural defect occurred a criminal act may have had an impact on decision Boards of Appeal 5 European Patent Convention - Summary determines composition technical boards: majority technically qualified members Enlarged Board of Appeal: majority legally qualified members Legal Board: only legally qualified members does not determine the role that the members play who shall be rapporteur? who shall be Chair? all members have the same responsibility for a case Boards of Appeal 6 3
4 Travaux préparatoires EPC Art. 21 EPC Rapporteur technically qualified member foreseen as rapporteur; no contemplation of legally qualified member as rapporteur; emphasis of legally qualified members on legal issues for a long time foreseen: in addition to 3 member board (2 technically and 1 legally qualified member/s) a technically qualified member who is rapporteur but does not take part in the decision but: deleted from the proposal in 1973 addition of this technical rapporteur unnecessary complication ; rapporteur should simply be one of the members designation of rapporteur left to Rules of Procedure (which leaves it to Chair) Boards of Appeal 7 Travaux préparatoires EPC Art. 21 EPC Chair initial proposal: chair has to be a technically qualified member as he/she needs to chair proceedings of a technical nature no support for suggestion by French delegation to always have legally qualified members as chairs no determination in final proposal of whether legally or technically qualified members are chairs Boards of Appeal 8 4
5 Practice technical boards Responsibility all (3 or 5) members are responsible for all issues in the case; 1 vote per member technically qualified members have a high appreciation also of legal issues through experience some through education (EQE or legal studies) legally qualified members have a high appreciation also of technical issues through experience some through education (technical studies) Boards of Appeal 9 Practice technical boards Rapporteur technically qualified members where case mainly concerns technical issues expertise of technically qualified members particularly important where amendments to claims play a role expertise as previous members of Examining and Opposition Divisions legally qualified members are rapporteurs/co-rapporteurs where case/part of case concerns mainly legal issues Boards of Appeal 10 5
6 Practice technical boards Chair 28 boards: no limitation to technically qualified ones overwhelming majority: technically qualified 3 chairs who are legally qualified (2 in electricity, 1 in mechanics) in some individual cases members are assigned as chair: majority - technically qualified, small number of cases - legally qualified members Boards of Appeal 11 Conclusion boards are collegiate body with mixed composition technically and legally qualified members have expertise in their respective fields that they share in a board; they often have different roles all board members, including the chair, carry the same responsibility for a case all decide on all aspects of the case Boards of Appeal 12 6
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