G 1/21: Enlarged Board considers videoconferencing inferior to in-person hearings, but not unsuitable for oral proceedings

Following the order issued on 16 July 2021, the Enlarged Board of Appeal (EBA) has now published its full written Decision in G 1/21. The procedural objections raised throughout the earlier part of the proceedings have been covered in a previous article, and so this article focuses on the opinion of the EBA on the status of oral proceedings by videoconference in the context of the European Patent Convention (EPC).

Although the EBA considered it necessary to restrict the referred question to proceedings before the Boards of Appeal, as opposed to departments of first instance, the Decision issued provides general guidance with respect to the circumstances under which oral proceedings by videoconference may be imposed on parties without their consent. The EBA acknowledged that in-person proceedings should be the ‘gold standard’ default, with videoconferencing able to provide a suitable alternative in some cases. The EBA also commented that the parties’ preferences (with good reason) should be given due consideration by a Board when deciding on the format of oral proceedings. Thus it seems that we can expect a return to the ‘old normal’, at least for Board of Appeal proceedings, following the current pandemic.

Scope of the referral

The EBA opened by reformulating the referred question in view of the particular need for clarification in the referring decision (CLBA 2019, V.B.2.3.3). In doing so, they considered that the choice facing the referring Board in T 1807/15 was not between in-person and videoconference, but instead between videoconference and postponement – the question was thus limited to periods of ‘general emergency’, such as the Covid-19 pandemic. However, the EBA has not provided further comment as to which parties able to declare a ‘general emergency’ (or when it is over).

The EBA did consider it appropriate to evaluate compatibility of videoconferencing with the EPC more generally, and not solely in regard to Article 116 EPC, as “the right to oral proceedings is an expression of [the right to be heard under Article 113(1) EPC]”.

Where does videoconferencing stand?

The fundamental question of what legal status is given to a videoconference may usefully be considered in several parts, summarised as follows:

(1) Do oral proceedings by videoconference constitute ‘oral proceedings’ within the meaning of Article 116 EPC?
     YES

(2) Is a videoconference equivalent to in-person oral proceedings?
     NO

(3) Is a videoconference a suitable format for conducting oral proceedings?
     YES

The first of these questions focuses on the interpretation of Article 116 EPC, which is actually concerned with when oral proceedings are to take place, rather than what constitutes ‘oral proceedings’. The EBA considered the term ‘oral proceedings’ to be very general so a broad interpretation, requiring only verbal communication between parties, was adopted. However, it was later noted  that a telephone interview would not be ‘suitable’ in the context of the third question. In dismissing allegations about the intention of the legislators of the EPC 1973 and 2000, the EBA stated that the purpose of the Convention is to “provide a system for the grant of European patents with the aim of supporting innovation and technological progress”, and therefore considered that it would be at odds with the fundamental object and purpose of the EPC to exclude the use of newer technologies in the conduct of oral proceedings. It was also pointed out that the use of laptops, PowerPoint presentations, and digital whiteboards would equally not have been envisaged by the original legislators, but these forms of technology have nevertheless formed a useful part of oral proceedings for some time.

On this topic, the Decision makes an interesting point that, if videoconferences were not ‘oral proceedings’ within the meaning of Article 116 EPC, the validity of certain aspects of such videoconferences even with the consent of the parties could be called into question. For example, giving parties the opportunity to make oral requests (in accordance with their right to be heard), or the rendering of an oral decision by a Board, might have different legal status as compared with the same procedural acts performed in-person.

The second and third questions were considered under the same heading in the Decision, but there seems to be an important distinction between them. Specifically, the second question appears to relate to the effectiveness of videoconferencing in general, whereas the third assesses simply whether it meets the needs of users of the European patent system where necessary, e.g. to avoid postponement of oral proceedings in the height of a pandemic. It is noteworthy that the EBA agreed (at least with a number of the amicus curiae briefs) that communication by videoconference “cannot, at least for the time being, be put on the same level as communicating in person”, i.e. it is not equivalent to in-person proceedings. However, the EBA considered that the essential features of oral proceedings can be ensured by a videoconference, namely (as set out in R 3/10) “.. to allow each party to make an oral presentation of its arguments, to allow the Board to ask questions, to allow the parties to respond to such questions and to allow the Board and the parties to discuss issues, including controversial and perhaps crucial issues”. This is consistent with the analysis above with respect to the legal validity of acts performed via a videoconference. The EBA also noted that the extent to which body language can be interpreted (which was a feature of a number of the submissions by those taking a position against videoconferencing, including the appellant) is a matter of degree; the point was made that interpretation of body language could equally be impacted by distance or layout in a physical courtroom.

Thus, the Decision concludes that videoconferencing does provide a suitable alternative to in-person proceedings.

In what circumstances may a party’s request for in-person oral proceedings be denied?

Before turning to this final part of the question, the Enlarged Board noted that oral proceedings are most often held on the request of a party. It was therefore concluded that the choice of format for oral proceedings should be made by the party requesting them, particularly as they could have good reasons to prefer in-person proceedings (since it has been established that these are the ‘gold standard’).

Despite this conclusion, it was considered that the Board of Appeal could overrule the party’s preference in format under certain circumstances. The conditions for doing so as set out in the Decision are that:

(i) there must be a suitable, if not equivalent, alternative (such as videoconferencing); and

ii) there must be circumstances specific to the case which justify the decision not to hold the oral proceedings in person.

The EBA specified that the decision as to whether the specific circumstances justify deviating from a party’s wishes “must be a discretionary decision of the Board of Appeal summoning them”.

Whilst the present Decision may have addressed the issues raised in light of T 1807/15, it remains to be seen how the Boards of Appeal will apply the guidance and to what extent they will exercise their discretion. The Decision does feature statements with which we are now all too familiar, including ‘general travel restrictions’, ‘quarantine obligations’, and ‘other health-related measures’ preventing travel to an in-person hearing, and so there is the potential for some variation in the interpretation of these deciding factors. One helpful point, although seemingly less relevant after over a year of trialling videoconferencing in European Patent Office (EPO) proceedings, is that the decision should not be influenced by administrative issues including the availability of rooms and interpretation, or by intended efficiency gains.

Conclusion

Whilst we might still expect some discussion in the coming months about the suitability of videoconferencing as an alternative to the ‘gold standard’ of in-person hearings in particular cases, the overall impression based on the reasoning of the present Decision is that the EBA envisages the EPO maintaining the status quo for the time being (at least until an end date to the most recent state of ‘general emergency’ is announced). Nevertheless, the Decision has now provided particular terms as a springboard to open discussion with the Boards of Appeal surrounding parties’ particular circumstances, and it will be interesting to see how broadly or narrowly these terms are applied in the coming months, including whether the departments of first instance look to follow the same procedure.

For the moment, it seems that we can conclude that the EBA does not see videoconferencing becoming a ‘new normal’ in its current form, and we hope to see a return to the premises of the EPO for those of us who are keen to do so.