February 10, 2021
10 February 2021: This article has been updated to reflect our understanding that the Technical Board of Appeal 3.5.02 has made a referral to the Enlarged Board about the legality of holding Oral Proceedings by videoconference without the consent of all parties. The wording of the referred question(s) has not yet been made public.
The EPO has long offered the option of holding Examining Division Oral Proceedings via videoconference, well before the disruptions caused by Covid-19 this year. As a firm, Mathys & Squire has embraced the use of videoconference for Examining Division oral proceedings for many years now and have bespoke videoconference rooms in a number of our offices that are frequently in use.
In our experience, videoconference oral proceedings before the Examining Divisions – of which the firm has held over 250 to date – work well. We have found them to be well suited to a discussion of the technical and legal issues at hand, and a clear dialogue can be conducted between the presenting attorney and members of the EPO. Not only does the use of videoconference have clear environmental benefits in that it reduces the need for air travel, but it also allows an attorney to prepare and present from their preferred location and removes unnecessary distractions.
With the advent of Covid-19, in April 2020 the EPO decided that all Examining Division hearings would be held by videoconference unless there were “serious reasons” not to. Videoconferencing was also offered for hearings before the Opposition Division, provided there was “the agreement of all parties”.
For Examining Division hearings, this was generally widely welcomed in the profession and allowed the prosecution of patent applications to continue despite the restrictions imposed by Covid-19. Having attended many Examining Division hearings by videoconference from home under lockdown restrictions, the authors of this article have personally found the process to be reliable, clear and convenient. Equally, the process appears to have been convenient for EPO Examiners too, allowing them to attend virtually from different locations.
For Opposition proceedings, however, uptake has been low – a progress report published by the EPO noted that the cumulative number of videoconference opposition hearings between May and October 2020 was less than 250, far less than the normal of approximately 250 a month in 2018 and 2019.
This may reflect the greater level of discomfort felt by parties when it comes to relying on a virtual hearing in cases which are contentious (and, hence, more valuable). It might also explain why the largest increase in opposition ‘backlog’ is in the healthcare, biotech and chemistry sector, which has seen a 24% increase in the 12 months to September 2020, versus 15% in mobility and mechatronics and only 7% in information and communications technology.
Faced with this lack of uptake, and to prevent an insurmountable backlog developing, the EPO recently issued a notice (dated 10 November 2020) indicating that as of 4 January 2021 all oral proceedings before both Examination and Opposition Divisions would be held via videoconference, and that videoconference oral proceedings could only be postponed for “serious reasons” and if this was the case they would be postponed until after 15 September 2021. The definition of “serious reasons” is not clear, but an EPO notice indicates that one example of a “serious reason” is where “the demonstration or inspection of an object where the haptic features are essential”. The notice makes clear that “sweeping objections against the reliability of videoconferencing technology or the non-availability of videoconferencing equipment will, as a rule, not qualify as serious reasons in this regard”.
Opposition Division hearings are public, and many of the clients we work with would be interested in attending opposition division oral proceedings, but due to cost and/or travel commitments cannot attend in person. The move to switching Opposition Division hearings to videoconference will allow clients to dial in and watch the proceedings in real-time, thus improving access to justice.
With the switch to videoconference oral proceedings for both Examination and Opposition proceedings, the EPO Boards of Appeal have also been conducting some oral proceedings via videoconference where there is agreement with the parties concerned. The Boards of Appeal confirmed in May 2020 that a videoconference is permissible for an appeal hearing (T 1378/16). From May to October 2020, over 120 appeal hearings have been heard via videoconference; although this is, as for opposition hearings, much less than the total number which would be expected over the same period.
The EPO Boards of Appeal now propose to formalise this change in practice by amending the Rules of Procedure of the Boards of Appeal (RPBA). Following a recent consultation, the Boards intend to add a new Article 15a to the RPBA which would allow the Boards to schedule hearings by videoconference, whether or not the parties to proceedings agree to this. The changes will likely come into effect in April 2021, but the guidance from the EPO suggests that the Boards will start to adapt their practice from January 2021. We therefore expect to see the Boards scheduling hearings by videoconference of their own motion starting early in 2021.
In the consultation on the changes to the RPBA, concerns were expressed in some quarters about a Board insisting on a videoconference hearing if not all parties to proceedings agree to do this. We understand that a question has now been referred to the Enlarged Board of Appeal in case T1807/15 to clarify the extent of the Boards’ powers in this regard. The wording of the question is not yet known.
During 2020, the videoconference facilities at the Boards of Appeal have primarily been set up towards all parties attending remotely (T 492/18 at reason 2.4). However, the possibility of hybrid oral proceedings, in which some parties attend in person and others attend remotely, is permitted under the proposed new Article 15a. In our experience, some Boards have been resistant to hybrid oral proceedings, and it remains to be seen whether the Boards really make use of this option.
The authors have experience of conducting appeal proceedings by videoconference and have found it to be both convenient and reliable.
With bespoke videoconference facilities in our offices throughout the UK, and with an office in Munich, we are well placed to handle both videoconference oral proceedings and also in-person hearings, whether these take place in front of the Examining and Opposition Divisions, or the Boards of Appeal.
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