D 0005/86 (Conditions for a disciplinary measure) of 29.2.1988

Summary of Facts and Submissions

I. In 1981 the US journals ... and ... published advertisements reading as follows:

"European Patents, Patents in West Germany and all Eastern and Western European Countries, Trade Marks and Designs, telephone inquiries invited (telephone in English any morning, U.S. time) or write or telex".

These advertisements, which gave the appellant's name and address, led to his being reported to the Disciplinary Committee by another German patent attorney.

II. Requested by letter of 23 November 1981 to comment, the appellant replied on 31 January 1982 that he had been apprised of the publication of the advertisements in a telephone call from Luxembourg in August of the previous year whilst he had been away. He did not know who had placed them.

III. Asked by the Disciplinary Committee who had placed the advertisements, the publishers of ... declined to disclose this information on the grounds that it was confidential.

IV. By decision of 23 July 1982 the Disciplinary Committee reprimanded the appellant on the grounds that what had been published were clearly advertisements prohibited under the Code of Professional Conduct. The appellant's behaviour was also in breach of Article 18 RDR, which required professional representatives to supply all necessary information to disciplinary bodies.

V. The appellant appealed against the reprimand.

VI. On 22 February 1983 the appellant wrote to the Chairman of the Disciplinary Board of Appeal as follows: "Conscious of my obligation to tell the truth, I hereby affirm that

1. I was first apprised of the advertisement in the February 1981 issue of ... in a telephone call from Luxembourg in the summer of 1981.

2. In autumn 1981, after learning from my associates B.Y. in Washington what was in the advertisement, I telephoned the ... and asked who had placed it, but to no avail.

3. In the summer of 1982 I received information about who this might have been, which however I was unable to follow up". At the same time he authorised the European Patent Office to approach the Board of Governors of the ... for any information it required as to how the advertisements had come about.

VII. By decision of 24 February 1983 the Disciplinary Board of Appeal set aside the decision of the Disciplinary Committee and referred the matter to the Disciplinary Board of the European Patent Office (hereinafter "lower instance") (see decision D 08/82, published in OJ EPO 1983, 378 et seq.).

VIII. On 11 February 1983 US patent attorney R.W. made a signed and sworn statement before a notary public reading inter alia as follows:

"Please be advised that I composed, placed and paid for the advertisement in question. The advertisement was discontinued immediately upon Mr M.'s urgent request by telephone. ... Mr M. and his family have become my valued friends". By letter of 11 July 1983 Mr W. further stated that:

"To my recollection, the advertisements in the ... and in the ... were all requested by me on a single day for all insertions of the advertisement.

As explained in more detail in my previous letter, this was simply the insertion of the business card of an old friend in a professional journal directed only to lawyers. I understand the advertisements had no effect whatever and therefore Mr M. was unaware of their presence until the third one had appeared. In response to his urgent request that I cancel the advertisements, I simply took no further action as all had then appeared".

IX. By telex of 13 December 1984 Mr W. informed the rapporteur of the lower instance as follows:

"My present recollection is that all three ... advertisements were paid at the same time (probably in late 1980) and that I received notice to discontinue sometime about March of 1981. Mr M. telephoned me with considerable urgency due to his concern with local rules".

By letter of 4 January 1985 Mr W. enclosed a cheque for $ 130.20 dated 22 December 1980 and made out to the publication ... "for advertising (3)".

X. The appellant submitted a telex from Mr W. dated 14 January 1986 and stating:

"You are entirely correct that my December 1984 letter should have mentioned that you requested that stop in 1982 (not 1981). Sorry for the error which apparently occurred clerically and which I did not notice due to the amount of time which has elapsed since".

XI. On 3 July 1986 the lower instance gave a decision fining the appellant DEM 12 000 because he had been in breach of his obligation to tell the truth under Article 1(1), 2nd sentence, RDR. It was satisfied that since 31 January 1982 the appellant had knowingly made false and misleading statements to all three European disciplinary bodies about when he had learnt who had placed the advertisement. From statements made by the appellant himself and Mr W., it was satisfied that early in 1981 the former had already known that the advertisements in the two periodicals had been placed by the latter.

XII. The appellant's appeal is directed against this decision. (...)

Reasons for the Decision

1. The appeal is admissible; it meets the requirements of Article 22(1) RDR of 21 October 1977 (OJ EPO 1978, 91) and Article 6 of the Additional Rules of Procedure of the Disciplinary Board of Appeal dated 9 April 1980 (OJ EPO 1980,188).

2. The lower instance fined the appellant DEM 12 000 under Article 4(1) RDR for non-compliance with the rules of professional conduct, namely Article 1(1), 2nd sentence, RDR, which provides that a professional representative must not knowingly make any false or misleading statement.

3. Other charges levelled against the appellant earlier in the proceedings are not dealt with in the contested decision, but were considered as aggravating circumstances when deciding the amount of the fine. The Board must therefore examine whether the appellant's breach of his obligation to tell the truth found proven by the lower instance in the contested decision justifies the imposition of a fine.

4. The lower instance was satisfied that the appellant knowingly made false and misleading statements, having been aware early in 1981 - rather than not until summer 1982 as claimed - that Mr W. had placed the advertisements in the two US periodicals.

(...)

6. The lower instance may well be right; there is an inherent logic and a ring of probability to its assessment of the facts. But this is not enough to justify a disciplinary measure. An infringement of the rules of professional conduct must be established to the satisfaction of the disciplinary body before it can impose such a measure. Absolute certainty is not required but a degree of probability in human experience verging on certainty. This is not the case if there is reasonable doubt as to whether the infringement has occurred.

7. The contested decision lacks the requisite certainty. The same facts could also have led to a different conclusion, namely that in March 1981 the appellant did not know Mr W. had placed the advertisements. In his statement of 11 February 1983 Mr W. indicates that he was telephoned by the appellant, but does not say when. In his letter of 11 July 1983 he says the advertisements were not a success, and so the appellant was unaware of their existence until the third one had appeared. As the third advertisement was not published until the May/June 1981 issue of ... it is possible that the appellant did not telephone as early as March 1981. This would accord with Mr W.'s statement in the same letter that in response to the appellant's urgent request that he cancel the advertisements he simply took no further action, as by then they had all appeared. If these statements are correct the appellant could not have telephoned Mr W. in March 1981, but at the earliest in the summer of that year.

This statement from the letter of 11 July 1983 is at variance with that in Mr W.'s letter of 13 December 1984 that the telephone conversation occurred "sometime about March of 1981". However in his telex of 14 January 1986 Mr W. says this was a clerical error attributable to the amount of time which had elapsed since. The lower instance doubts this, taking the view that because Mr W. and the appellant were friends the correction of the March 1981 date was a personal favour. It can however be readily reconciled with the earlier letter of 11 July 1983 as at least suggesting that the March 1981 date given for the telephone call was a mistake. It is thus not too remote a possibility that the appellant telephoned Mr W. not in March 1981 - as the lower instance assumes - but later.

8. In these circumstances the Board considers that there are a number of equally likely dates for the telephone conversation between the appellant and Mr W., namely March 1981 (as the lower instance assumes), the summer of 1981 (i.e. after the last advertisement had appeared) or during 1982 (as the appellant claims), none of which has so far been proven. March 1981 - the lower instance's conclusion - is possible, but not so convincingly substantiated that the other possibilities can almost certainly be discounted. Disciplinary action, therefore, is not warranted on the evidence available, and the Board must accordingly set aside the contested decision fining the appellant.

9. The Board then considered whether to remit the case to the lower instance, a course it may take under Article 12 of its Additional Rules of Procedure if fundamental deficiencies are apparent in proceedings before the disciplinary body whose decision is under appeal, unless special reasons present themselves for doing otherwise. After careful consideration the Board has concluded that there are indeed special reasons for not remitting this case.

The matter has now been before the various disciplinary bodies for over six years. The only witness who might shed light on the true facts - Mr W. - has over the last few years already made several statements in writing about how the advertisements came to be placed, and the matter has still not been cleared up. In his last statement of 14 January 1986 the witness himself mentions the amount of time which has elapsed, which he says has already caused him to make a mistake about when the telephone call was made. The Board therefore concludes that hearing Mr W. in person would not clarify matters, and so does not propose to remit the case to the lower instance.

10. The Board has also considered whether to discipline the appellant for showing a sad lack of co-operation in the proceedings before the Disciplinary Committee. In its decision of 24 February 1983 (OJ EPO 1983, 378, Reasons point 7) the Board of Appeal ruled that it is for the Disciplinary Board of the EPO to determine whether the appellant's conduct constitutes contempt of the Disciplinary Committee, and thus a breach of the rules of professional conduct which should be sanctioned accordingly. In point 5 of the contested decision the lower instance concluded that the question of disciplining the appellant under Article 18 RDR for breach of his obligation to supply information did not arise because that provision was subsumed by Article 1(1) RDR. The Board does not propose to go into this question, because it is not remitting the case to the lower instance for it to consider a possible breach of Article 18 RDR. On 31 August 1984 the appellant did write to that instance through his representative to say that he had misjudged the legal position and his obligations in disciplinary proceedings in saying that a charge could be laid at his door only if the Disciplinary Board of the EPO and the Disciplinary Board of Appeal had conclusive evidence against him. Here he had failed to appreciate his obligation to co-operate, which he regretted. He emphasised however that he had simply misconstrued the legal position; he had never intended to hinder either Board in its work. The appellant has expressly reiterated this in the present appeal proceedings. The Board therefore does not consider it should now discipline the appellant for his conduct, his declaration having given it further reason to hope that in future he will comply with his obligation to supply information to the disciplinary bodies. Had this declaration not been made, however, the Board would have considered a reprimand appropriate. It is not issuing one only because it feels that his repeated apology has fulfilled the object of the disciplinary procedure.

ORDER

11. In the light of the foregoing the Board is not imposing any of the disciplinary measures under Article 4 RDR. As it is not remitting the case either, the Board avails itself of its powers under Article 22(3) RDR in conjunction with Article 111(1) EPC and Article 7(2)(a) RDR and dismisses the matter. The Board does not propose to order under Article 27(2), 3rd sentence, RDR that the costs necessarily incurred by the appellant be borne in whole or in part by the Institute, for given the appellant's conduct during the disciplinary proceedings there is no reason for it to do so. The appellant has in any case made no such request, and in his grounds for appeal has acknowledged that his conduct during the proceedings "was not always felicitous".

On the contrary, the Board takes the view that in this case it would have been appropriate to order the appellant to bear a substantial proportion of the costs, because his uncooperative conduct considerably hindered the disciplinary bodies in their work, thus drawing out the proceedings unnecessarily. However, the Board considers that Article 27(2) RDR prevents it from making such an order, because it makes provision for costs to be awarded against the professional representative only if the matter is not dismissed.