The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Friday, 20 April 2018

Book review: Droit d’auteur 4.0 / Copyright 4.0

On this sunny Friday afternoon, why not sip some lemonade and drink in a book review from Katfriend Sabine Jacques [lecturer in IP/IT/Media law at the University of East Anglia. Her research mainly focuses on copyright exceptions and creative industries]. Luckily, Sabine also happens to be multilingual, as two of the chapters of this book are written in French (indicated below), the others are in English. 

The latest edition of Droit d’auteur 4.0 / Copyright 4.0, edited by Jacques de Werra, includes contributions from Yaniv Benhamou, Jo Oliver/Elena Blobel, Jean-Michel Bruguière, Ysolde Gendreau, Wenwei Guan, Daniel Schönberger. 

Copyright 4.0 represents the tenth volume of the series ‘propriété intellectuelle – intellectual property’. This time, the volume is devoted to the impact of the advent of technologies and digitalisation on copyright, and brings together contributions written in light of the ‘Journée de Droit de la Propriété Intellectuelle’ organised by the University of Geneva on the 22nd of February 2017.

Without pretending to exhaust this broad topic, this book provides interesting regional insights on specific challenging areas including the enforcement of copyright online, the creation of user-generated content and also, the role of AIs in copyright.

Perhaps to some readers’ surprise, blocking injunctions have had a tumultuous journey in Swiss law. Yaniv Benhamou covers the Swiss legal developments of this type of injunction, considering civil liability, criminal confiscation, administrative procedures and the proportionality test enshrined in fundamental rights in light of the absence of any specific legal provisions, or comprehensive jurisprudence. The author reminds us that safe harbour provisions, such as present in the EU or the USA, do not exist in Swiss law. Intermediary liability is currently based on a more general framework, although in respect of copyright at least, this is likely to change in the future, which might itself be problematic because it fragments the legal framework. Here, the author calls for a coherent approach to intermediaries’ liability, and does not reject alternative solutions, such as de-indexing websites, or endorsing the ‘follow the money’ approach. Finally, the author favours self-regulatory models to increase transparency and flexibility in adapting the regime to new developments in this area. This chapter is written in French. 

Staying on this theme of website blocking injunctions, Jo Oliver and Elenal Blobel (IFPI) provide the music industry’s perspective, focussing mainly on the EU, although offering insights from other jurisdictions as well. In addition to providing an overview of the impact of blocking injunctions on the music recording industry, this contribution also offers some recommendations for improving the cross-border effect of injunctions to better protect right-holders. Additionally, the authors note that the effectiveness of website blocking injunctions for tackling online music infringements has been hindered by the ease with which website blocks can be circumvented. Here, the UK courts’ ‘dynamic’ injunctions are brandished as an example of good practice, which allows a blocking injunction to relate to a particular website instead of its domain name or IP address. The authors also welcome the recent ‘live’ blocking injunction granted in the UK, because this targets the streaming servers directly, meaning the order may adapt to technological advancement and new users’ habits.

Jean-Michel Bruguière’s contribution [in French] discusses the digital single market from two angles: the proactive behaviour of the CJEU and current legislative proposals. Firstly, the author notes the boldness and creativity on behalf of the CJEU in harmonising copyright law. Revisiting the GS Media decision, Bruguière questions whether it is appropriate to distinguish the burden of proof based upon whether the undertaking which provides the hyperlinks to the copyright-protected content has done so in pursuit of financial gain. This contribution also questions the scope of GS Media’s guidance, as well as highlighting the numerous areas which are yet to be developed. The sections on inflections and admonition are particularly interesting. The admonition award is attributed to the C-301/15 Soulier and Doke decision. In an audacious move, the CJEU not only reformulated the national questions (much criticised by Mr. Justice Arnold), but introduced an additional condition before the authorisation of the right-holder may be implied. This constitutes another example where the public interest has been cast aside in favour right-holders and their exclusive rights. Finally, the chapter comments on the EU Commission’s recent copyright proposals including the press publisher’s right. Although acclaimed by publishers, the author notes that there is no widespread enthusiasm for this proposal. He recounts that journalists fear that they will be worse off as a result of this new ancillary right and most online intermediaries cannot identify any market failure which requires this legislative intervention, which is only likely to increase transaction costs. Here, the author agrees with the criticisms and argues that a publisher’s right is unnecessary, given the remedies available under copyright and competition law. 

Ysolde Gendreau takes us to North America and tackles the challenges brought by user-generated content (UGC) and other digital copyright uses by focusing on users and online intermediaries. The author explains how the Canadian courts deal with the question of internet intermediaries’ liability differently to those in the USA by focusing upon the surprising outcome in Lenz, concerning a 29-second video of a baby dancing to Prince’s song – ‘Let’s Go Crazy’. Applauding the adaptability of fair use to new technological developments, the US approach is contrasted to the Canadian regime. Since the Canadian Copyright Reform in 2012, the UGC exception has attracted a lot of attention, but the author reminds us that this exception comes with many conditions attached. Firstly, it needs to lead to the creation of a new copyright work. Secondly, the use must mention its source. Finally, the use must not adversely affect the market of the original (i.e. the second step of the three-step test) which requires economic analysis based on the facts of a particular case. Another particularity lies in the requirement that the original source must be obtained legally and without circumventing a technological measure.  Interestingly, this Canadian exception shields both the user and any intermediary involved in the  dissemination of the UGC from liability. Finally, whilst both US and Canadian systems now include provisions tackling the digital environment specifically, these may lead to different outcomes, since the Canadian legislature has been more interventionist than its US cousin in the field of intermediary liability. The future is only likely to extrapolate the territorial issues linked to copyright laws.

An insightful and accessible read for any Kat
Providing a view from Asia, Wenwei Guan examines the local efforts amending copyright law in Hong Kong and Mainland China to adapt it to the digital era. Hong Kong’s current copyright system is modelled on the UK’s CDPA. Having gone through several reforms, the latest Amendment Bill 2014 brought some relief by further promoting freedom of expression and the public interest. However, the rejection of a UGC exception, while introducing a parody exception, leaves the author with a bitter taste, since both are seen to share similar objectives. Compared with Hong Kong, China appears less author-oriented, concentrating on the protection of trade interests, while Taiwan attempts to align itself closely with TPP provisions. Therefore, the author explains the real danger that users’ interests will be eclipsed by trade-related concerns.

Finally, Daniel Schönberger, looking at Swiss law, explores some challenges which AI creativity presents, but concludes that a new legal regime is not currently warranted. As the copyright paradigm rests on the idea that creativity requires a human component, how does this fit when a work has been ‘created’ by a machine? While there is no denying that most of these works are likely to pass a  threshold which is merely defined as useful and aesthetic, the output remains different from what we expect from human creativity. Schönberger argues against recognition of legal persona in robots. The author skilfully articulates that as copyright protection serves as a reward to foster future creativity, that protection is unnecessary for AI creations. Unlike human authors, robots do not need any incentive to continue creating. But also, what spill-over effect might there be on human creativity were robots awarded the same status as humans?

Copyright 4.0 is not only comprehensive and accessible but it can be read as a whole or in parts. This book certainly is of interest to those who research and/or study in the area of copyright law, as well as being a very informative read for anyone interested in the development of copyright law in the digital era.

Details
ISBN: 978-3-7255-8662-2
Publication Date: 2018
Extent: 194 pp
Hardback Price: CHF59.00, Currently available on the Schulthess Website.

photo: Aulusgellius

Fordham 2018 Report 1: Building Out the House - Music Licensing

The AmeriKat has had her paws pretty full of late with trials, events, conferences and general life.  So this year, she was not able to report on the ever incredible sessions from the Fordham IP Conference in New York.  But knowing this, she roped in some wonderful law students and interns at Fordham University who stepped up to the plate.  So over to J.D candidate (Class of 2019), Jacob Tesch, for the first report from the conference on the Music Licensing session: 

"During Thursday afternoon’s session Music Licensing, Termination & Territoriality: Time for Recalibration?, moderator N. Cameron Russell (Center for Law & Information Policy, Fordham Law School) likened the legal developments in U.S. music licensing to building additions to a house. Instead of bulldozing years-old foundation, Congress has, over the years, passed several pieces of legislation to keep up with changes in the ways people both create and consume music.  
Following Russell’s opening remarks, Kenneth Steinthal (King & Spaulding LLP) spoke on issues concerning Performing Rights Organizations (“PROs”) ability to license public performance rights, as well as the Copyright Royalty Board’s the latest update in mechanical licensing rates under Section 115 of the Copyright Act. Steinthal first summarized the Second Circuit’s recent decision in which the court affirmed the determination that the consent decrees governing PROs, such as ASCAP and BMI, permit “fractional” licensing of works—thereby allowing BMI to license works that it or its affiliated writers or publishers lack full control of. According to Steinthal, BMI’s ability to fractionally license could have severe consequences for licensees because they now cannot be certain that their public performance license was approved by all rights holders. This decision, coupled with the lack of a credible database indicating who holds the public performance right of a given work, could result in increased infringement litigation against streaming services by those non-consenting copyright holders. It will be interesting to see if the Department of Justice takes on the Second Circuit’s decision by arguing that this interpretation of the PROs’ consent decrees violates U.S. antitrust law. Steinthal closed his speech by opining that the royalties structure established by the Copyright Royalty Board in January 2018 raises concerns for streaming services.

The panel then debated the impact of these developments on the marketplace for mechanical and public performing licensing of musical works. Many of the panelists disagreed with the extent of Steinthal’s notion that the Second Circuit’s decision could be the downfall of several streaming services and cited Spotify’s recent multi-billion-dollar valuation as evidence of streaming services’ financial ability to fight infringement lawsuits. Steinthal defended his position by stating that we are particularly attuned to larger streaming services because they are frequently in the news and, absent a compulsory licensing regime for sound recordings, the Second Circuit’s decision could be fatal to many smaller streaming services found to owe exorbitant statutory damages for infringement. Richard Pfohl (CONNECT Music Licensing), in agreement that a blanket compulsory licensing system for sound recordings would be an efficient solution, suggested that leaving this issue to the marketplace partially help solve this problem. Moreover, all of the panelists agreed that the lack of transparency with respect to who owns the public performance right of a given work is a major problem in the music industry that needs to be resolved.

Next, Regan Smith (U.S. Copyright Office) provided an overview of the concerns targeted by three potential copyright reforms: the Music Modernization Act, the Classics Act, and the Allocation for Music Producers (“AMP”) Act. The Music Modernization Act, as its name suggests, attempts to modernize the current licensing regime under 17 U.S.C. §115 by creating a blanket licensing arrangement for digital phonograph deliveries. The Act establishes a music licensing collective (“MLC”), overseen largely by publishers and songwriters to collect and distribute mechanical royalties for musical compositions. The formation of the MLC aims to assuage the challenges digital services face when attempting to match songwriters and publishers with recordings and create a more transparent and efficient system for compensating authors. Furthermore, the Music Modernization Act would repeal Section 114(i) of the Copyright Act and give PROs and songwriters the opportunity to present evidence in rate-setting proceedings to a rotating “wheel” of judges who would consider licensing fees by applying a “willing buyer willing seller” standard.

The CLASSICS Act grants owners of pre-1972 sound recordings the exclusive right to digitally broadcast said recordings, which due to an arbitrary quirk in U.S. copyright law, do not enjoy the same federal protections as post-1972 sound recordings. While these recordings will continue to be freely broadcast over terrestrial radio, the CLASSICS Act attempts to alleviate what has been considered by one recording artist a form of “digital ageism.” The AMP Act will amend federal copyright law by codifying SoundExchange’s “Letter of Direction” practice to directly pay producers, mixers, or sound record engineers from a featured artist’s or label’s statutory scheme, if directed to do so. The bill provides for 2% of the featured artist’s share of royalties to be directly paid to a pre-November 1, 1995, producer, mixer, or sound engineer absent a letter of direction or an objection by the artist.

The entire panel agreed that these three bills, which have been received by both the House of Representatives and Senate, are sensible pieces of legislation. Jacqueline Charlesworth (Covington & Burling LLP) noted that the publicly available ownership database created by the MLC would be extremely beneficial for recording artists, music publishers, and songwriters because it would help solve the music industry’s transparency problem. Still, Steinthal expressed skepticism that these proposed bills would resolve the statutory damages problem that entrenches the current statutory scheme.

Joshua Graubart (The Law Offices of Joshua Graubart, P.C.) reviewed the UK High Court decision from Mr Justice Arnold in Gloucester Place Music v. Le Bon, in which the British rock group Duran Duran sought to terminate the transfer to their music publisher, Gloucester Place, which alleged such action constituted breach of contract. Under Section 203 of the U.S. Copyright Act, the author may terminate a grant at the end of 35 years from the date of execution or publication of the work. Mr Justice Arnold of held that English contract law was controlling and that service of a notice of termination under the U.S. Copyright Act would result in a breach of the band’s music publishing agreement. Lauri Rechardt (IFPI) commented that this decision demonstrates that our global music industry is in need of stronger and more transparent rights to underpin the global marketplace for music.

The overarching theme that drove most of the panel’s conversation was that our global music industry faces a transparency problem. It will be fascinating to see if the three proposed bills, which are scheduled to begin the House Judiciary markup process on April 11, can overcome a problem that has negative consequences for songwriters, music publishers, and digital streaming services."

Public interest in Plant Variety Rights. How high is the bar for the grant of a compulsory license?

IPkat has previously reported on the background and contents of the first compulsory license application. Now, as  we finally have the decision itself (Decision nr NCL 001, of the 16th of March 2018), there are a number of interesting points to discuss.


Background of the case

On 12 October 2009, Smith Kline Beecham Limited ( “GSK” ) filed a Community plant
variety right (CPVR) application No 2009/1980 for the variety ‘Ben Starav’ of the species Ribes nigrum L.. By Decision No (EU) 35825 of 8 July 2013, the Office granted a CPVR. By request of 18 November 2014, GSKasked the Office to effect the recordal of the transfer of rights to Lucozade Ribena Suntory Limited( “LRS”).  

On 16 March 2017, the Office received an application for a compulsory licence by Pixley Berries (Juice) Limited ( “the applicant”) pursuant to Article 29 of Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights (Basic Regulation) (the Council Regulation (EC) No 2100/94 of 27 July 1994),.

Public Interest

Article 29(1) of the Basic Regulation provides that a compulsory licence shall only be granted on the ground ofthe public interest. Article 41(2) of the Proceedings Regulation (of Commission Regulation (EC) No 874/2009 of 17.9.2009.) further provides three circumstances  that may, in particular, constitute a public interest:
a) The protection of life or health of humans, animals and plants;
b) The need to supply the market with material offering specific features;
c) The need to maintain the incentive for continued breeding of improved varieties.

The CPVO clarifies in its decision that it is the applicant that has the burden of proof regarding whether there is a public interest, and thus clarifies that the CPVO will not proceed with an independent investigation, but will  base its decision solely  on the facts and arguments raised by the parties to the proceedings.

The protection of life or health of humans, animals and plants (Article 41(2)(a) of the
Proceedings Regulation)

The applicant claimed that there is a public interest  based on the benefit that ‘Ben Starav’ provides to the public health when used for the production of 100% juices, as the consumption of said juices is associated with a healthy lifestyle. Second, due to the climate change, it would be in the public interest to use a variety that adapts well to different climatic conditions, as it is the case for ‘Ben Starav’.

According to the CPVO, the applicant  failed to show the specific benefits provided by ‘Ben Starav’ to public health. The general statement provided by the applicant is not enough (“healthy lifestyle”), since it fails to prove that “Ben Starav” presents better characteristics than other blackcurrants. Furthermore the use of the concept “healthy lifestyle” was considered by the CPVO to be too generic, since it refers to a general way of life covering, for instance, everything from a balance between work and private life to stress control and personal hygiene, rather than pointing to the specific nutritional characteristics of the particular  plant variety.

Furthermore, the applicant’s argument that “Ben Starav”, adapts well to climatic zones, and thus also guarantees good harvests throughout different seasons, does not provide any concrete evidence of a public interest.

The need to supply the market with material offering specific features (Article 41(2)(b) of the Proceedings Regulation)

The next step in the evaluation of the CPVO consists of determining whether the characteristics that are of importance from a public interest perspective are unique for the specific plant variety. The applicant claimed that ‘Ben Starav’ has unique characteristics, which make it unlike any other blackcurrant varieties, namely i) a consistent high yield of good quality fruit, ii) harvest season not in conflict with other cultivars , iii) even ripening at harvest, iv) even bud-break across a range of winters , v) good juice quality from an organoleptic point of view, vi) good compositional analysis and vii) excellent colour .

The CPVO concluded, however, that the evidence provided by the parties is clear in that the alleged characteristics of “Ben Starav” are not unique to the specific plant variety.   As such, the CPVO ruled that the alleged unique characteristics of the variety “Ben Starav” do not fulfil the requirement of Article 41 (2) of the Proceedings Regulation  since these features are also offered by other varieties of blackcurrant.

On the need to supply the market with material from ‘Ben Starav’
The applicant claimed in brief that there is a need to supply the market. Taking into consideration that it has been shown that there are a number of available blackcurrant varieties, and that the characteristics of importance from a public interest perspective are shared by several other varieties of blackcurrant, the CPVO  concluded  that there is no need to supply the market with “Ben Starav”.

On the public funding of the variety ‘Ben Starav’
Worthy of discussion is  the fact that “Ben Starav” is the result of a partly state-funded breeding program. LRS answered  that this fact  does not in itself mean that a third party may exploit the research results by means of a compulsory license.  The question thus posed to the CPVO was whether state funding could have an impact on the grant of a compulsory license. In other words, can partial public funding of the “Ben Starav” breeding programme  constitute a  public interest sufficient  to justify the grant of a compulsory license?

The CPVO concluded that this is not necessarily the case. A state authority may choose to invest in a breeding programme for reasons of public interest but at some point needs to determine whether to claim the legal rights on the variety or to allow a private entity to protect and own the plant variety protection, as in this case. When such a decision is reached, the public (e.g., consumers and competitors) may not then raise any claim to the variety in question. Thus, granting a compulsory licensing should abide by the same rules irrespective of whether the breeding programme leading to the variety was 100% private or 100% state funded.

Interest of the case 
An important question that the CPVO answered is whether alternatives to the variety are an important part of the evaluation whether to  grant a compulsory license. The CPVO concluded  that although the determination of the existence of alternatives belongs  to competition law (theory of essential facilities), it is  also important for the determination of whether the requirements for the grant of a compulsory license are fulfilled.

 In fact, where alternatives exist, the need to supply the market with the specific plant variety becomes much more difficult to prove.  In support of this argument, the CPVO points to the ruling of the German Federal Court of Justice ruling of 11 July 2017 regarding a patent on the antiviral agent “Raltegravir”. There, the Court stated that “a compulsory licence cannot be granted if the public interest can be satisfied with other, essentially equivalent alternatives”. It is  interesting how the CPVO chose to seek guidance  by reference to  parallels between patents and intellectual property rights. Moreover, this decision  points to  the growing importance of competition law principles in the application and interpretation of intellectual property law provisions.



Thursday, 19 April 2018

BREAKING: German FCJ declares AdBlock Plus legal


Germany’s Federal Court of Justice has today decided in a year-long dispute between the German news publisher Axel-Springer-Verlag and Eyeo, the Cologne-based company behind AdBlock Plus.


AdBlock Plus is a browser-addon that blocks banners, pop-ups and other ads. Eyeo claims it is being used on more than 100 Mio. devices around the world. Unwanted ads are listed in a ‘blacklist’ and automatically hidden from every website a user visits. However, Eyeo provides advertisers the opportunity to have their ads added to a ‘whitelist’, if they comply with certain standards that are set by Eyeo. Additionally, advertisers need to pay Eyeo to have their ads added to the whitelist. Once on the whitelist, ads will be shown to users even if they have AdBlock Plus installed.

Axel-Springer-Verlag took offence at this business model and took Eyeo to court in 2014, essentially requesting a ban of the software on the grounds of competition law. The Regional Court of Cologne dismissed the claim, Axel Springer appealed. Upon appeal, the Higher Regional Court of Cologne partially reversed the first instance decision and agreed with Axel Spinger that by requesting advertisers to pay in order to have their ads added to the whitelist, Eyeo displayed forbidden ‘aggressive commercial practices’.

Such practices are deemed illegal by Section 4a UWG, the German Act against unfair competition. Section 4a UWG reads:

“Unfairness shall have occurred where a person engages in an aggressive commercial practice which is suited to causing the consumer or other market participant to take a transactional decision which he would not have taken otherwise. A commercial practice shall be regarded as aggressive where, in the factual context and taking account of all its features and circumstances, it is suited to significantly impairing the consumer’s or other market participant’s freedom of choice by

1.  harassment,

2.  coercion, including the use of physical force, or

3.  undue influence.”

The Higher Regional Court found that Eyeo’s business model could be seen as an ‘undue influence’ in the sense of the law. The judges saw a large market power of Eyeo due to the sheer number of AdBlock Plus users. Advertisers would be excluded from access to customers and had to buy their way out of this situation. 

Eyeo took the case to the FCJ, which today ruled in the defendant’s favor (case No. I ZR 154/16). So far, only a press release is available and it usually takes several months before the written reasons are published. From the press release, it is clear that the judges saw no acts of unfair competition by Eyeo. They found that the provision of an ad-blocker does not constitute a deliberate obstruction of competitors (Section 4 UWG). The judges also denied a deliberate interference with the plaintiff’s business. According to the FCJ, it remains the end-users’ decision whether they install and use and ad-blocker. Because of this autonomous decision of the users, any interference would only be ‘indirect’. An indirect interference could not be considered unfair, the court found.

Finally, the FCJ disagreed with the Higher Regional Court regarding ‘aggressive commercial practices’ by Eyeo. The judges stated that AdBlock Plus was not suited to significantly impair market participant’s freedom of choice, especially with regards to the plaintiff, who is not a consumer but a large news publisher. The details of this argument remain to be seen once the written reasons become available.


*UPDATE*: for the first time ever in Germany, it was allowed to film during the oral proclamation of a judgment. You can view the proclamation in full here.

Boards bite back but need real teeth - Guest Contribution

The EPO is not this GuestKat's natural habitat, and so she was glad to be reminded of the consultation on the new rules of procedures of the Boards of Appeal from Katfriend Gwilym Roberts of Kilburn & Strode.  The online consultation is open until 30 April 2018, and readers are able to participate here.  Over to Gwilym for some suggestions and analysis:

"The proposed new rules of procedure of the Boards of Appeal at the EPO are aimed at streamlining matters but should they go further? 

The IPKitten getting her contribution in
The EPO has been streamlining all kinds of things recently with the “early certainty” programme. Search, examination and latterly opposition have all been subjected to efficiency measures, and whilst the balance with quality cannot be ignored (as the 924-Examiner-letter to the Admin Council shows), there is no question that speeding things up is generally welcomed.

As we all know, the Boards of Appeal are independent and, sadly, slow. However, they are taking action themselves by issuing a consultation on various changes to the rules of procedure that they follow in lieu of the Guidelines. The consultation is open until noon on 30 April 2018 and is likely to attract huge interest from national institutes, practitioners and no doubt EPO Appeal Board members and Examiners. It seems, mostly, to address all the right problems, but in some ways possibly could learn from national law in ensuring that the proposed good practices are adequately enforced. Here are some key proposals:

More clarity over acceleration of appeal proceedings
  • Proposed amendments to Article 10 codify and replace a Notice in a 2008 OJ regarding accelerated processing
  • The grounds for acceleration must be “objectively verifiable”, and examples given mirror the existing reasons, i.e. where there are infringement proceedings or a licensee decision depends on the outcome of the appeal. Accelerated opposition, however, has been dropped as an example ground for accelerating the appeal of that opposition.
  • Perhaps the greatest concern is that this can be dependent on various factors including the workload of the Boards. Whilst this pragmatism is welcomed in one sense, the problem at the moment is that the workload of the Boards makes it impossible to accelerate proceedings, so it’s difficult to see how this is going to change. There is also a question mark over transparency. It would be very useful if we could see what the proceedings pipeline looked like so that we could understand the reasons and prospects for acceleration or non-acceleration.
More clarity over “amendment (of everything)” in the proceedings
  • The proposed new rules explicitly remind us of the primary object of appeal proceedings: “To judicially review the decision under appeal”. As a result, a range of provisions underpin this declaration, removing or discouraging opportunities for practitioners to reopen cases altogether, as everybody is wont to do at the appeal stage at the EPO. The definition seems reasonable, and the proposals permitting its implementation largely codify existing Board of Appeal practice; in particular as Article 12 makes very clear, “amendments” are extremely unpopular under the new system, whether of requests, facts, objections, arguments and evidence. This becomes progressively more difficult through the appeal proceedings as discussed for example at Article 13 and 15, and in a further useful codification, the minutes of the first instance proceedings are now explicitly part of the appeal proceedings permitting, presumably, easier recognition of when the case is being “amended”. This has interesting ramifications in that the minutes of the first instance proceedings are going to become extremely important for minimising wrangling between parties, and we can only hope that in future the first instance minutes will be structured so that all of these possible areas of amendment can be easily and consistently recognised. It’s also going to be extremely important for practitioners to review the minutes carefully as soon as they’re issued at first instance going forwards. This clampdown on amendment is one area where the Boards of Appeal could perhaps do with more “teeth”. As we all know, they have the ability to award costs, but as we also all know, they rarely ever do because it’s rather difficult to enforce. Where amendments assist with procedural expediency, great. But elsewhere we may see huge and pointless discussions between parties about what constitutes an “amendment” to the case without any real sanction and this becomes an area of significant concern if we are to maintain procedural expediency for the Boards.
  • The Boards may be removing some of the practitioner’s freedoms in playing with their appeal cases, but they give something back as well by replacing the word “may” with “shall” in relation to issuance of a preliminary non-binding opinion. This is essential and really helps all the parties understand what’s coming, especially if it could be signed off by the whole Board so that there is less prospect of surprise at the proceedings by the other two members when they find out what they’re supposed to be thinking. There is also mention in the explanatory remarks accompanying the proposed rule changes of case management – so pivotal in UK proceedings - and this is another area where the Boards could really do with some teeth, to ensure that, at every stage of the proceedings, they have control over timings, amendments and general behaviour of the parties, underpinned by a stronger costs regime. This would undoubtedly focus the minds of the parties to the proceedings and contribute to an enhanced procedure.
Postponement
  • A minor but potentially important detail is introduced in relation to the reasons which can be presented for postponing Oral Proceedings – a notable omission currently from the proposed list is religious holidays and it would seem to make sense for the Boards simply to reiterate the list of reasons already in the Guidelines for first instance Oral Proceedings.
Transitional Provisions
  • Finally, in relation to transitional provisions, whilst there will be some leeway for practitioners to transition to the stricter rules of procedure, it does not look like the Boards currently go far enough and in particular don’t recognise that behaviour right now at first instance could be highly relevant in a future appeal under the new rules of procedure. A simple example would be practitioners not advancing every possible request at first instance (because there is currently a little bit more leeway in introducing them later in appeal, for example) – if this is not taken into account then normal current practice could be penalised unfairly.
We need to see greater speed from the appeal procedure at the EPO, even more so if it is to be a worthy competitor to any UPC that comes into force. Treating appeals a little more classically is certainly a reasonable step in the right direction and largely codifies existing case law, but there seems to be a lot still to be learnt from “tougher” jurisdictions such as the UK to bring parties a little more to heel. Consultation is welcomed, as EPO consultations always are, and everyone should have a good look at the proposed changes and work out how best to feed back if they want to make sure that they get the appeal structure they want rather than the one they deserve!"

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