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27.05.21

G1/21 – President’s Comments on Oral Proceedings in the form of Video Conference

EPO President comments on the legality of holding oral proceedings by videoconference without consent

Historically, oral proceedings have been held solely in person at the premises of the EPO. However, since 1997, it has been possible to request oral proceedings by videoconference (ViCo) in examination proceedings.

Since the start of the COVID-19 pandemic, there has been substantial ongoing disruption to travel throughout Europe and carrying out oral proceedings in a safe and fair manner has been a significant challenge.

With this in mind, the EPO changed the default form of oral proceedings in examination from in-person to ViCo on 01 April 2020, with only “serious reasons” being sufficient to allow the proceedings to be held in person. Shortly afterwards, the EPO introduced a pilot project that allowed opposition oral proceedings to be carried out by ViCo if consent was given by all parties to the proceedings. However, the requirement for consent from all parties to conduct opposition oral proceedings by ViCo was removed in January 2021. The situation is similar for oral proceedings before the Boards of Appeal. As of May 2020, the EPO permitted oral proceedings to be carried out by ViCo if consent was given by all parties, but since January 2021 the requirement for consent has been removed.

The new policy of defaulting to oral proceedings in the form of ViCo has advantages, such as bringing proceedings to a close more quickly, which has reduced the backlog of cases at the EPO. Reducing travel also reduces environmental impact and costs, and minimises the risk of postponement. However, it can be argued that ViCo does not offer the same level of communication as an in-person hearing, and that timely decisions should not come at the expense of quality.

The question posed to the Enlarged Board (Referral G1/21)

A Board of Appeal can refer any question to the Enlarged Board of Appeal during a case, if the board considers that an answer to the question is needed to ensure uniform application of the law.

The G1/21 referral relates to European patent No. 1609239 against which an opposition was filed. Following oral proceedings (held on the premises of the EPO) the opposition division decided that (account being taken of amendments made by the patent proprietor) the European patent and the invention to which it relates meet the requirements of the EPC.

The opponent’s appeal against the opposition division’s decision was referred to the Board of Appeal and attributed reference number T 1807/15.

The patent proprietor and opponent (appellant) had stated that the case was not suitable for ViCo because of multiple parties making submissions in different languages and the need for simultaneous translations. However, the parties neither explicitly objected nor explicitly consented to conducting the oral proceedings by ViCo. Both parties participated in the ViCo oral proceedings on 8 February 2021. A referral to the Enlarged Board of Appeal, on the conduct of oral proceedings in the form of ViCo if all the parties to the proceedings have not given their consent, was requested.

With its decision T 1807/15 of 12 March 2021, the Board of Appeal referred the following question to the Enlarged Board of Appeal in G 1/21:

“Is the conduct of oral proceedings in the form of a videoconference compatible with the right to oral proceedings as enshrined in Article 116(1) EPC if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference?”

Article 116(1) EPC specifies that: “[o]ral proceedings shall take place either at the instance of the European Patent Office if it considers this to be expedient or at the request of any party to the proceedings. However, the European Patent Office may reject a request for further oral proceedings before the same department where the parties and the subject of the proceedings are the same”.

The referral raises general questions about the following:

(1) the parties right to oral proceedings under the EPC,

(2) the legality of oral proceedings conducted in the form of ViCo, and

(3) the function of party consent.

The referred question is seeking to clarify whether, in view of Article 116(1) EPC, oral proceedings may be conducted by ViCo without the consent of all parties. Broadly, the answer to the referred question depends on the interpretation of the term “oral proceedings”.

The President’s comments

On 27 April 2021, the President of the EPO submitted written observations to the Enlarged Board of Appeal on referral G 1/21. In short, the President of the EPO is in favour of the current practice of holding all oral proceedings by ViCo without needing consent from the parties.

In his written observations, the President asserts that the interpretation of A. 116 EPC on the basis of its ordinary meaning confirms that the provision does not restrict the forms in which oral proceedings may be held. He goes on to say that the conduct of oral proceedings in the form of a videoconference is in compliance with the EPC.

With regard to the role of “consent” under A. 116 EPC, the President concludes that the EPC does not stipulate the form of the oral proceedings, it only determines the minimum requirements, which can be fulfilled by ViCo Oral Proceedings held in accordance with the EPO’s practice. The decision as to the form in which oral proceedings are held lies with the competent department, not with the parties. Accordingly, the question of whether oral proceedings can be held by ViCo cannot depend on the consent, a waiver or similar procedural declaration of the parties.

The EPO seems to be moving towards the use of ViCo as the “new normal” for oral proceedings. Oral proceedings for referral G1/21 will be held on 28 May 2021, via ViCo (Zoom). Meanwhile, the EPO has announced that it is extending the use of ViCo for opposition division oral proceedings until 31 January 2022.

We will report further developments on this much-anticipated case in due course.

The written observations of the President of the EPO are accessible via: https://register.epo.org/application?documentId=E55YFGL26765DSU&number=EP04758381&lng=en&npl=false

If you have any questions on this topic, please contact Andy Cloughley at andycloughley@mskpatents.com.

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