News & Resources

09.04.21

Oral Proceedings by Videoconference at the EPO

UPDATE: In view of the ongoing coronavirus pandemic, the EPO has decided to further extend the pilot project for conducting opposition hearings by VICO until 31 January 2022. Where there are serious reasons preventing the use of VICO for oral proceedings in opposition, oral proceedings will be postponed until after that date.

Since the start of the COVID-19 pandemic there have been substantial ongoing disruptions to worldwide travel. This has posed significant challenges as to how to carry out oral proceedings before the EPO in a safe and fair manner. The EPO has rapidly improved its technical capabilities in order to find a solution to these problems and has made a number of important procedural changes relating to oral proceedings before each of the divisions of the EPO.

Videoconferencing (VICO) has been central to the EPO’s strategy. We take this opportunity to provide some information about videoconferencing at the EPO.

Examination Division Oral Proceedings

The EPO has held all oral proceedings before the examination divisions by videoconference since 4 April 2020 unless “serious reasons” are given in support of postponing the oral proceedings until they can be held in person.

The “serious reasons” seem to include an individual’s inability to follow proceedings on a screen (for example, due to a visual impairment), and that the presentation of physical evidence is required (for example, where it is essential to assess the haptic features of the invention). It is not appear sufficient to argue that it is not possible for a party to attend the proceedings because multiple languages and translations would be necessary. Objections against the reliability of the VICO technology, or non-availability of VICO equipment, also do not qualify as “serious reasons”.

Where such serious concerns are raised, oral proceedings will be postponed until after the 15 September 2021 at the earliest.

The examining division, the applicant and their representative can all connect to the oral proceedings from different locations in order to participate. Thus, the three members of the examining division may be at different locations to each other.

Amended claims can be filed by email. Similarly, all other submissions made during VICO oral proceedings should be made by electronic means.

If insurmountable technical issues arise during the proceedings, then a new date for oral proceedings will be set. However, if an applicant does not attend the oral proceedings for non-technical reasons then the proceedings may continue.

The full notice from the EPO can be found here.

Opposition Oral Proceedings

At the beginning of the pandemic the EPO introduced a pilot project that allowed opposition oral proceedings to be carried out by videoconferencing if consent was given by all parties.

However, in light of the continued significant disruptions caused by the pandemic, the pilot project has now been extended until 15 September 2021 and all oral proceedings for oppositions are now being conducted via videoconferencing unless there are “serious reasons” as to why this approach cannot be used. The serious reasons are the same as those described above. Thus, consent to conduct the opposition oral proceedings by videoconferencing is no longer required from all parties.

The removal of the requirement for all parties to consent was intended to tackle the ever-growing backlog of unheard opposition proceedings which have arisen due to some parties withholding consent until proceedings can be conducted in person and due to travel restrictions.

The use of videoconferencing does not affect the public nature of oral proceedings before the opposition divisions, as members of the public may follow the oral proceedings by videoconference remotely by giving prior notice or by attending the premises of the EPO if they desire.

In the same way as oral proceedings before examining divisions, where serious reasons have been raised as to why oral proceedings cannot take place by videoconference, oral proceedings will be postponed until after the 15 September 2021 at the earliest.

On expiry of the project on 15 September 2021, the EPO intends to resume holding oral proceedings in opposition on the premises of the EPO. Although the project may be extended, the EPO intends to maintain dates for oral proceedings in opposition which have been scheduled to take place on the premises of the EPO after the 15 September 2021.

Full notices from the EPO can be found here and here.

Board of Appeal Oral Proceedings

At the start of the pandemic the EPO continued to arrange Board of Appeal oral proceedings in person at the EPO. In such cases where parties were unable to attend, parties could write to the EPO to request a change of date for proceedings or alternatively request that the oral proceedings be carried out by VICO. However, oral proceedings would only be held by VICO if all parties agreed.

However, the EPO has reassessed the measures put in place to conduct Board of Appeal oral proceedings at the EPO, in particular the requirement for the consent of all parties in order to conduct the oral proceedings by VICO.

From 1 January 2021, oral proceedings before the Board of Appeal can be conducted using videoconferencing without the agreement of the parties concerned. This has been made clear in the new Article 15a of the Rules of Procedure of the Boards of Appeal adopted by the Boards of Appeal Committee. This change allows the Board of Appeal to decide to hold proceedings via VICO if the Board considers it appropriate to do so, either upon request by a party or of its own motion.

Thus, Board of Appeal oral proceedings conducted by videoconferencing is not the default position as is the case for opposition oral proceedings. Instead, whether videoconferencing is used is at the discretion of the Board of Appeal based on factors such as the complexity of each individual case. This is borne out by experience. We have received summonses for oral proceedings both by videoconference and in person at the Board of Appeal premises in Haar.

In a similar way to opposition proceedings, applicants, representatives and officials may all participate in the proceedings from different locations by videoconference. Similarly, members of the public wishing to follow oral proceedings conducted by VICO may do so remotely by giving prior notice or in a dedicated room on the EPO premises in Haar.

Further details regarding Board of Appeal oral proceedings can be found in this notice.

Referral to Enlarged Board of Appeal – G1/21

In view of concerns raised by some parties, the Board of Appeal has made a referral to the Enlarged Board of Appeal on the question of whether it is allowable to hold oral proceedings by videoconference if one or more of the parties do not consent. The Board referred the following question:

‘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?’

The question applies to all oral proceedings by videoconference, including hearings before the examining and opposition divisions, as well as the boards of appeal.

Despite the referral, oral proceedings by video conference without the consent of the parties continue to be held. The Enlarged Board of Appeal has prioritised this case and has set a hearing date of 28 May 2021.

 Technical Information and What to Expect

The EPO uses Skype for Business or Zoom to host oral proceedings. Both are compatible with Windows, Mac, iOS, and Android and available to be downloaded for free from the appropriate app websites. Zoom is intended for use in proceedings with multiple attendees and/or where simultaneous interpretation is required.

In practice, in addition to the summons, participants will receive an email confirming the date, time and the videoconference contact details to be used to establish the connection (in the form of a link or by other suitable means) and containing any further appropriate information, including on the organisation of the videoconference.

Participants are strongly advised to perform a test call well before the date of the oral proceedings, especially where there is a third party. This is particularly important where participants are taking part from different locations. We can assist you with this an ensure that any technical issues are addressed prior to the date of proceedings.

Oral proceedings held by videoconference will usually be scheduled to start at 9am Central European Time. It is possible for this time to be adjusted slightly to better accommodate time zone differences.

Upon commencement of oral proceedings via videoconferencing a systems check will typically take place followed by the verification of each representative and any additional attendees. Verification can take the form of presenting a valid photo ID, which may be emailed to the EPO prior to proceedings.

During oral proceedings and consultations held by videoconference, documents must be filed electronically by email. The board or division in question will provide the parties or representatives with the email address to be used. Any emails and attached documents filed by a party during oral proceedings in opposition proceedings will be forwarded by the EPO to the other parties, unless the party in question has already sent them directly to the email address indicated by the other parties. Documents that require submission during proceedings, such as amended claims, should be prepared as PDF copies and should be sent by the representative to the EPO email address indicated.

Videoconference oral proceedings will generally follow the same procedure as in-person proceedings once verification has been completed. However, if a technical malfunction disrupts proceedings, the proceedings are generally paused until the issue can be resolved. If it is not possible to resolve the issue, the proceedings will typically be rescheduled.

Finally, when the proceedings are intentionally interrupted to consider a particular issue or come to a decision, participants may be asked to mute their microphone and disable their video for a prescribed time. During such an interruption the members of the division may convene in a separate videoconference.

Some system checks may be performed before the proceedings are resumed.

Although some proceedings may be open to the public, for example opposition proceedings, no recording of the oral proceedings is allowed by any party. If members of the public do wish to attend, the EPO will provide a dedicated room at the EPO in which to do so or members of the public may attend remotely.

 Potential Issues and Opportunities

Initially, concerns were expressed that holding oral proceedings by video conference might prevent the parties from being able to fully present their arguments and from being properly heard. However, experience has shown that whilst VICO oral proceedings are certainly different, they do not present significant disadvantages. Thorough preparation for the hearing remains the key to success.

Whilst it is now harder to read the interaction between the members of the examining division, opposition division or board of appeal, it is perhaps easier to see the reactions of all members simultaneously and to adjust oral submissions accordingly.

In addition, the divisions and the boards recognise that holding oral proceedings by videoconference can be physically and mentally demanding and will allow the parties to take regular breaks on request. Representatives should make use of the opportunity for breaks to refresh themselves and hone their case, especially if new facts and arguments emerge during the hearing.

The divisions and boards will also halt oral proceedings immediately if any party indicates that they are experiencing technical difficulties and will resume the hearing only when issues have been resolved.

VICO oral proceedings also present a number of opportunities. Applicants can now attend oral proceedings remotely, either together with their representatives or in private as a member of the public. This is particularly advantageous for clients from East Asia and North America, who can now attend oral proceedings with us without travelling to Europe. In this case, we recommend setting up a separate channel of communication between us, so we can discuss how the hearing is progressing and take instructions during interruptions to the proceedings.

In addition, it is now cost effective for experts to attend oral proceedings by videoconference, where their attendance in person would previously have been to expensive or time-consuming for them.

In general, VICO oral proceedings take longer than hearings in person, which can increase costs. Importantly, however, since UK attorneys no longer need to travel to the Hague or Munich, hotel and flight costs are avoided and the costs of oral proceedings for our clients has decreased significantly.

 Examiner Interviews

Although we have held telephone interviews with examiners for many years, we have found that working from home has made examiners more procedurally flexible. We are increasingly contacted by examiners for an informal discussion and we have also started holding informal interviews by videoconference, especially Teams. Examiners are also more willing to accept draft claims submitted by email during or before the interview as the basis for an informal discussion. Anecdotally, we are finding this leads to shorter time to the issue of a communication under rule 71(3) EPC (intention to grant).

Concluding Remarks

In the current uncertain climate, the EPO has transitioned towards the use of videoconferencing as the new default position for all oral proceedings. The extent to which the EPO transitions back to oral proceedings that require physical attendance is yet to be seen. Nonetheless, we can be sure that VICO oral proceedings in some form are here to stay and that a large proportion of hearings will continue to be held by videoconference in the future.

All our attorneys are fully prepared and equipped to adapt to the requirements of the EPO. We continue to provide our clients with high quality and effective representation during oral proceedings before the EPO.

 

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

 

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