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Conducting Oral Proceedings at the European Patent Office by Videoconference

The European Patent Office (EPO) uses oral proceedings as a means to bring pre-grant examination and post-grant opposition proceedings to a close. Oral proceedings will be appointed when the EPO considers it expedient to discuss outstanding issues face to face and/or at the request of any party to the proceedings. Consequently, the majority of EPO oppositions conclude with oral proceedings. Oral proceedings are rarer during pre-grant examination, but are typically appointed when the EPO intends to refuse the application. The Boards of Appeal also hold oral proceedings during the appeal procedure. 

Before April 2020, oral proceedings were held in person at one of the premises of the EPO by default, with videoconference available only upon request during pre-grant examination proceedings. Videoconference was not available for post-grant opposition proceedings or before the Boards of Appeal. However, the EPO has since moved towards carrying out oral proceedings (including before opposition divisions and Boards of Appeal) by videoconference.

From a legal standpoint, oral proceedings held by videoconference and those held in person are of equivalent status. As such, there is no legal reason to favour one format over the other. However, there are practical implications and considerations which may be of interest to and should be taken into account by users of the European patent system. This briefing seeks to explore some of those practical implications and considerations.

Oral Proceedings Conducted by Videoconference

Oral proceedings before examining divisions take place by videoconference unless there are “serious reasons” against doing so. Furthermore, under a pilot scheme, oral proceedings before opposition divisions scheduled to take place until the end of the pilot scheme on 31 December 2022 will also, by default, take place by videoconference unless there are “serious reasons” against doing so. The pilot scheme has already been extended three times, having originally been intended to end on 15 September 2021.

These measures do not apply to the Boards of Appeal, who resumed in person oral proceedings in Munich to a limited extent on 18 May 2020 and are currently conducting both in person oral proceedings and video conference oral proceedings, on a case by case basis.

Whilst the COVID-19 pandemic was the trigger for these changes, the new provisions relating to examining division oral proceedings are not time-limited or conditional and will therefore remain in place even now that most travel restrictions have been fully lifted. Moreover, if the pilot project for opposition division oral proceedings is deemed a success, the EPO may continue with it on a voluntary, or quite possibly a mandatory, basis after December 2022. 

However, in October 2021, the Enlarged Board of Appeal decided that in person hearings represent the “gold standard” and parties should only be denied this option for “good reasons”. It therefore seems possible that legal challenges could arise now that examination and opposition divisions continue to conduct oral proceedings by videoconference without the consent of parties, despite the majority of COVID-19 restrictions having been lifted.

With the default position for oral proceedings before examining and opposition divisions currently being videoconference, we can expect the majority of examining and opposition division oral proceedings to take place by videoconference. The scope of the “serious reasons” that might necessitate an in person oral proceedings appears fairly limited. Examples of serious reasons include: reasons relating to a participant as an individual (e.g. a proven visual impairment that prevents a representative from following oral proceedings on screen), and reasons related to the nature and subject-matter of the proceedings (e.g. where they involve the demonstration or inspection of an object where the haptic features are essential). By contrast, a non-specific preference for oral proceedings in person or a lack of suitable equipment are not considered serious reasons. 

If a party prefers examining or opposition division oral proceedings to be conducted in person, it would be advisable to put a request on file early, together with “serious reasons”. It is also possible that the EPO may be open to conducting examining division oral proceedings in person on account of the complexity of the subject-matter at issue, though it remains to be seen whether this will happen in practice. If the request is accepted, the oral proceedings will be rescheduled to take place in person after 31 December 2022.

Attendance by the Parties and Their Representatives

An advantage of videoconferencing is that participants are not bound to any particular geographic location as long as there is a stable internet connection. 

Consequently, the members of an examining division, opposition division or Board of Appeal either connect together from a videoconferencing studio within an office of the EPO, or separately from home and/or different offices as required. 

Similarly, on request, representatives for a given party may also connect from different locations, provided that this does not have an impact on the stability of the videoconference connection. Likewise, any “accompanying persons”, such as a client/expert/other legal adviser, may also connect from different locations on request. It is necessary to request permission from the EPO for participants to connect from different locations.

During examining or opposition division oral proceedings, we have found that all reasonable requests for participation from different locations have been accepted. 

However, the EPO, especially for opposition hearings, may refuse the request if the number of additional participants would “impair the efficient conduct of the proceedings”. Such a decision to refuse is not appealable.

Attendance by the Public

Oral proceedings during pre-grant examination are not public. However, the EPC stipulates that oral proceedings before opposition divisions are public (unless the EPO decides otherwise). Likewise, oral proceedings before Boards of Appeal are also public. Consequently, the EPO has made provisions for such oral proceedings held by videoconference to be attended by the public.

In particular, members of the public will be able to watch public oral proceedings held by videoconference in a dedicated room on the premises of the EPO. Alternatively, members of the public may, upon giving prior notice to the EPO, be provided with a link for connecting to the videoconference remotely.

The EPO intends to verify the identity of any member of the public connecting to the videoconference. However, the identities of the members of the public will remain hidden from the parties. Consequently, for example, the interested party behind an opposition by a “strawman” could attend the oral proceedings anonymously, and even provide the representative with input/instructions in real time via a back channel (e.g. messaging software).

Conduct of Oral Proceedings

The EPO aims for oral proceedings conducted by videoconference to mimic those conducted in person. Thus, the general structure of the oral proceedings should be the same, irrespective of whether it is held in person or by videoconference. That is to say, at the start of the oral proceedings, the chair will announce the particulars of the patent or patent application under consideration, and identify the parties present. 

The oral proceedings will then typically proceed in sections focusing on one issue at a time (added subject matter, novelty, inventive step, sufficiency, etc.), generally with a decision announced at the end of each section. The parties’ representatives will be given an opportunity to present their cases on each issue in the usual way. 

While presenting during in-person oral proceedings, it is common for the representative to receive input/instructions from a client/expert/other legal adviser who is also present at the oral proceedings. Likewise, if two or more representatives are acting for a particular party, those representatives may well need to consult each other during presentation of their case. Accordingly, to replicate such communications during videoconference oral proceedings, we suggest setting up a “back channel” (for example via an instant messaging service) allowing private communication in real time. 

Another aspect to consider are the pauses for EPO deliberation that typically take place after the conclusion of each section. When the oral proceedings are held in person, this involves the parties’ representatives leaving the room whilst the examiners discuss the case privately. When the oral proceedings are held by videoconference, the members of the tribunal “leave” the main videoconference and deliberate in private, either in person (if they are all at the same location) or via a private videoconference connection if they are at different locations. 

During the pause for deliberation, it is usual for the representative(s) to plan for the next section of the oral proceedings and discuss these matters with any clients/experts/other legal advisers present. The back channel discussed above could be used for such discussions, though in some cases it might be preferable to have a separate videoconference or telephone connection available.

Any submissions that are made during oral proceedings via videoconference, such as new claim requests or an amended description, will need to be sent by email to the EPO. 

At the end of the oral proceedings, the chair will announce a final decision in the usual way, following which the oral proceedings will be closed and the videoconference connection terminated.

Technical Considerations

The standard videoconferencing platform now used by examining divisions, opposition divisions and the Boards of Appeal is Zoom. The EPO stopped using Skype as of 1 October 2021.

We would recommend using the Zoom desktop client for connecting to oral proceedings, because it is compatible with all types of hearing. By contrast, the Zoom web client is not compatible with examining division hearings (which utilise end to end encryption).

In case of technical problems preventing the oral proceedings by videoconference from being conducted properly on the day, a new summons will be issued. However, as with oral proceedings held in person, if a party fails to appear for other reasons, the oral proceedings may, and generally will, take place in the absence of that party.

Conclusions

The EPO’s recent switch to greater use of videoconferencing for examining division, opposition division and Board of Appeal oral proceedings gives rise to a number of practical implications and considerations which should be taken into account by users of the European patent system. Videoconferencing presents opportunities for parties to engage more fully with oral proceedings because the barriers to being present and engaged are dramatically lowered by removing the need to travel to an EPO office. Should you have any questions regarding oral proceedings by videoconference, please approach your usual contact who will be able to advise.

07 April 2022

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