Pages 401-411

BOARDS OF APPEAL

Decisions of the Disciplinary Board of Appeal

Interlocutory decision of the Disciplinary Board of Appeal dated 18 May 1993 - D 11/91

(Translation)

Composition of the Board:

Headword: Return of documents

Keyword: "Disciplinary proceedings - appeal - exclusion of documents - return of documents" - "Professional representative before the EPO - professional secrecy - confidentiality - limit to powers of investigation" - "Appeal proceedings - submission of opposition dossier - form"

Headnote

I. Documents whose legitimate origin is in serious doubt may without any investigation as to whether such doubts are justified be excluded from the proceedings if they did not serve as the basis for charges against the appellant or if copies of incontestably legitimate origin remain on file. Documents excluded by interlocutory decision - unlike returned items - are not however thereby removed from the Board's investigatory purview.

II. Professional secrecy under Article 2 of the Regulation on discipline for professional representatives (RDR) sets limits to the disciplinary bodies' powers of investigation and to the obligation under Article 18 RDR that a professional representative supply all relevant information. However, confidentiality obligations deriving from a principle enshrined in Part I RDR cannot be invoked to resist a request under Article 18 RDR.

III. Under the powers conferred on it by Article 25 RDR and Article 117 EPC, the Disciplinary Board of Appeal can require EPO departments to produce files - in the present case, a terminated opposition dossier - likely to contain documents helpful to its own investigation.

Summary of Facts and Submissions

I. By letter received on 20 November 1991 the appellant appealed against a decision dated 14 November 1991 taken by the Disciplinary Board of the European Patent Office (hereinafter "Disciplinary Board") in consolidated cases DB 01/90 and DB 02/88 and ordering his deletion from the list of professional representatives for an indefinite period. ...

II. On 14 January 1992 he authorised a legal representative ... to act in his defence.

III. The statement setting out the grounds of appeal was received on 16 January 1992. Its main request was that the proceedings and investigation initiated against the appellant be declared null and void. The auxiliary requests were that the file be referred back to a Disciplinary Board composed of non-members of the "Compagnie nationale des Conseils en brevets" or - failing that - that the appellant be acquitted of the charges against him (having been amnestied under French law) and the penalty imposed on him set aside.

IV. On 24 January 1992, under Article 12, second sentence, RDR, the President of the EPO and the President of the Council of the Institute of Professional Representatives were each given the opportunity to comment. On 19 March 1992 the former indicated that he did not wish to do so. The latter made no comment.

V. By fax received at the EPO on 20 February 1992 the appellant stated that:

• one of the complainants who had brought the disciplinary proceedings against him had been found guilty ... of stealing documents (by photocopying them) belonging to his practice;
• the disciplinary dossier contained a number of stolen documents ... which had in some cases served as the basis for the decision now under appeal.

In his view, the decision of 14 November 1991 was therefore null and void, because it was based on stolen documents. Furthermore, in view of the court ruling, keeping these documents on file constituted possession of stolen goods. The appellant therefore requested the return of the following papers:

...

By fax received on 3 March 1992 he explained that he wanted the file sent back to the Disciplinary Board to enable it to take a decision based solely on documents it was entitled to have. If the documents he wanted removed from the file were not returned to him in two weeks he would be obliged to take legal action against such implicit or explicit refusal. If oral proceedings were going to be held, he asked to be notified so that he could present orally the information required for his defence.

VI. On 6 March 1992, to enable the present Board of Appeal (hereinafter "this Board") to rule on his request regarding the documents listed in the fax of 20 February 1992, the appellant was asked to furnish evidence that they were indeed those unlawfully acquired and that the relevant court judgment was final ...

VII. By fax received at the European Patent Office on 23 March 1992, the appellant produced a certificate issued on 17 March 1992 by the clerk of the court and indicating that the judgment was final. As regards the unlawful origin of the documents he wanted returned, he cited a police report drawn up at the request of the examining magistrate and which was on the file considered by the Disciplinary Board.

VIII. By letter dated 3 June 1992, the appellant submitted a further request, namely removal from the file of all documents which discussed the stolen papers and of those submitted in breach of the confidentiality by which professional representatives were bound. He listed these items as follows:

...

He added that if the 205 documents referred to in the complainant's letter to the EPO dated 13 October 1989 were on his disciplinary file they were there unlawfully.

IX. On 16 June 1992 the rapporteur informed the appellant that he proposed to suggest that this Board rule first on the admissibility of his appeal and on his request for exclusion of certain documents, before taking any decision as to the merits. The appellant was invited to comment.

X. By fax dated 18 June 1992 the appellant replied that in his opinion the stolen items should be removed automatically before any decision was taken; this Board had no discretion in the matter. The sole purpose of the initial decision should be to create a lawful disciplinary file complying with criminal law and the patent profession's code of conduct. Only then, once his rights as defendant had been respected, should the Board take a decision on the merits.

XI. On 30 June 1992 the appellant added to the file, for information, a copy of a charge he had that day filed in person against X with the chief investigating magistrate in ..., alleging possession of documents stolen and placed unlawfully on his disciplinary file.

XII. In the light of new points which had emerged during the proceedings, the Presidents of the EPO and Council of the Institute were given a further opportunity to comment. On 20 July 1992 the former noted the new developments but saw no need to comment. The latter again made no comment.

Reasons for the Decision

1. The appeal complies with Article 22(1) RDR and is therefore admissible.

2. Before this Board takes a decision on the merits, the appellant wants all the documents listed or mentioned in points V and VIII above to be excluded, and some of them returned to him. In his view, they should not be on file and cannot legitimately serve as a basis for the disciplinary penalty imposed on him.

2.1 Since the invitation dated 16 June 1992 gave the appellant an opportunity to comment and expand on the grounds in support of his requests, the Board takes the view that before deciding on the merits it should issue the present final and binding "interlocutory decision" without oral proceedings.

2.2 Its purpose is thus to rule on removal and return of the documents of disputed origin, without considering their probative value which is entirely a matter for the decision as to the merits.

2.2.1 Without prejudice to possible use of the investigatory powers available to it throughout the present appeal proceedings, and without having to consider whether the objections raised are justified, this Board rules that the documents of disputed origin (see points V and VIII above) are excluded if they did not serve as a basis for the Disciplinary Board's allegations against the appellant or where copies of incontestably legitimate origin remain on file. In such circumstances, and at the present stage of the proceedings, it would seem to be unnecessary or at least superfluous for them to be on file.

2.2.2 For those documents not meeting the above criteria, however, this Board must determine whether there are good grounds for challenging them, and if so whether they should be removed from the file and possibly also returned to the appellant.

3. As regards the items whose return is requested (point V above), this Board notes that the file contains two different letters dated 25 May 1987 and has not been able to establish that either of them, or the letter dated 3 September 1987, is from files stolen from the appellant. They are all items of correspondence drawn up by Mr ... (complainant) for the attention of the disciplinary bodies, and made known to the appellant during proceedings to which he was party. There would thus seem to be no reason to order their return. It has still to be decided however whether to exclude them from the proceedings (see point 5 below) and how to deal with their annexes.

3.1 The first of the two letters dated 25 May 1987 is in fact the initial complaint made by the complainant against the appellant. It was accompanied by six annexes which served as the basis for two of the seven charges heard by the Disciplinary Board.

3.1.1 The first five annexes (A, B plus attachments, C, D and E) relate to the dossier of an opposition filed by company ... against European patent No. ... granted to J ... for application No. ... This Board has established that the originals of all these documents are in the opposition dossier, which is the property of the European Patent Office and was submitted early on during the disciplinary proceedings. This Board has requested that it now be attached to the appeal papers. It is therefore immaterial that the photocopies forming Annexes A and E to the letter in question are on that file. This Board is not however ordering their return to the appellant. As company M ... has clearly stated in its letter misdated 11 May 1986 (item No. 53 in the opposition dossier) that the complainant was its sole representative for this opposition, there is nothing to suggest that he was not in lawful possession of all the documents pertaining to the case, even if the file was confiscated by magistrate's order during investigations against him.

3.1.2 The sixth annex (F) is a photocopy of a letter dated 15 January 1987 and submitted by the complainant in support of his charge of defamation by the appellant (recorded as allegation No. 6 by the Disciplinary Board). It was sent by the complainant to the appellant to explain why he was ending their contractual relationship. This Board therefore does not think it can be validly argued that the copy submitted in evidence by the complainant is from a client's file stolen from the appellant. The request for its return is therefore unfounded.

3.2 The second letter dated 25 May 1987 is addressed to the Disciplinary Committee and mainly describes the complainant's duties as a salaried employee working in the appellant's practice. Attached were two annexes A and B consisting solely of photocopies of the documents ruled on in points 3.1 to 3.1.2 above. For the same reasons, this letter will not be returned either.

3.3 Finally, as regards the annexes to the letter of 3 September 1987 (numbered 2 to 26 under point V(c)), this Board would point out that in the contested decision the facts described were not used as the basis for a specific charge against the appellant, although the Disciplinary Board saw fit to state in the minutes of the oral proceedings held on 17 and 18 June 1991 that they could be. As such, these documents are immaterial and should be excluded. This Board also considers that serious doubts as to their origin still remain: the possibility cannot be excluded that they come from files seized by the police from the offices of Z... S.A., although this is not absolutely certain. Nor did the court judgment specify which of the files seized had in fact been taken from the appellant (see point 3.1.1 above in fine, case of dossier M...). These documents will therefore not be handed over to the appellant, since as things stand it is not proven that he is the owner. If however, as a result of his complaint against X for possession of stolen papers, the court should requisition them or order their return to their rightful owner, the European Patent Office would have no reason not to comply.

4. The appellant also wants the items "discussing the stolen documents" removed from the file. In view of the reasons just given for excluding certain annexes to two letters sent by the complainant to the disciplinary bodies, this Board takes the view that a distinction must be drawn between Annexes A to E to the letter of 25 May 1987 (point 3.1.1 above) and Annexes 2 to 26 to the letter of 3 September 1987.

4.1 All the former items relate to the opposition filed by company M... against patent J..., so any document discussing them is in fact about original papers in the opposition dossier. As these originals are in a file rightfully belonging to the European Patent Office, this Board sees no need to require the complainant to produce these photocopies. The latter, who was duly authorised to represent the opponent and who accused the appellant of using a false authorisation, was able when filing his complaint to refer to documents on the opposition dossier without submitting photocopies. It was in fact the European Patent Office which by communication dated 30 April 1987 informed the complainant and appellant that two authorisations had been issued to two different professional representatives for the same opposition (items 49 to 52 in the opposition dossier for patent J...). So there is no reason to exclude papers in which the complainant discusses the documents in that dossier.

4.2 The second set of annexes however the Board regards as immaterial, because ultimately they did not serve to support any charges. The documents discussing them are therefore excluded from the proceedings as irrelevant.

5. The appellant argues that his request for removal of the documents listed under point VIII above (P1 to P17) is justified because they are in breach of the confidentiality rules to which professional representatives are subject.

5.1 Before giving a ruling, this Board would note that this list includes the letters (plus annexes) of 25 May 1987 (P3) and 3 September 1987 (P6) addressed by the complainant to the disciplinary bodies. It has already held that these letters are not to be returned (see point 3 above) and that the annexes are excluded from the proceedings (see points 3.1.1 and 3.3). It will now consider the request for their removal from the file for reasons of confidentiality.

Document P1 is the item accompanied by the 205 documents the appellant wants removed from the file (see last paragraph of point VIII above). However, this letter concerns several cases pending before the Disciplinary Board, and the copy on the appeal proceedings file is only a photocopy unaccompanied by the 205 attachments. At this stage in the proceedings, and given that they do not serve to substantiate any of the charges made against the appellant, this Board sees no need to require that they be produced. It would also appear that documents P1 to P10 are all items of correspondence exchanged between the complainant and the disciplinary bodies, whilst documents P11 to P17 relate to the M... opposition dossier and were submitted by the complainant to refute accusations that he had stolen it. Lastly, documents P1 and P9 are identical to P2 and P10. The request that all these papers be removed from the file is in any case - as already stated - based on a claim of breach of confidentiality.

5.2 In this connection, a closer look at the obligations of EPO professional representatives shows that the confidentiality requirements invoked by the appellant are derived from a principle enshrined essentially in Part I RDR. The purpose of the RDR, along with the Code of Conduct and the Regulation establishing the Institute, is to lay down all the obligations to which representatives are subject in their dealings under the EPC with the public, their clients, other patent agents, the EPO and the Institute. It is in this context too that the disciplinary bodies were set up, and their responsibilities and powers defined.

Thus, Article 18 RDR states that "Where proceedings against a professional representative are pending before a Disciplinary Body, the representative shall supply all necessary information and, on request, submit his files to the Body, except in so far as this would be in conflict with his obligation to professional secrecy". Article 2 RDR reads as follows: "A professional representative shall be bound not to disclose information accepted by him in confidence in the exercise of his duties, unless he is released from this obligation". It is clear from these two articles that the disciplinary bodies' investigatory powers are limited only by considerations of professional secrecy. In consequence, a representative called before a disciplinary body cannot simply cite the confidentiality of a file or of information it contains as a reason for refusing to comply with a request under Article 18 RDR.

Since both the Disciplinary Board and this Board are thus empowered to require that representatives produce confidential information in their possession, the appellant cannot validly argue that these bodies are obliged to exclude such information solely because it was produced by the complainant.

And as the documents are not covered by professional secrecy - which moreover the appellant has never claimed - this Board rejects as unfounded his requests that they be removed from the file as confidential.

6. This Board's arguments above have established that the documents herewith removed from the file were either unnecessary or superfluous to it. The request that the case be referred back to the Disciplinary Board is therefore refused.

Order

For these reasons it is decided that:

Annexes A, B, C, D and E to the letter of 25 May 1987, attachments 2 to 26 to the letter of 3 September 1987, and the documents or parts thereof discussing said attachments 2 to 26, are excluded from the proceedings.

The request for exclusion and return of documents other than those just mentioned is rejected.

The request that the case be referred back to the Disciplinary Board is likewise rejected.