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New Referral to the EPO’s Enlarged Board of Appeal – Is It Legal To Hold Oral Proceedings by Video?


9th Feb 2021

At Oral Proceedings we were involved with earlier this week, the Board of Appeal decided to refer questions to the Enlarged Board of Appeal relating to the legality of holding Oral Proceedings before the Board of Appeal by video conference without consent of all parties.  This referral may therefore put on hold Appeal hearings at the EPO whilst it remains difficult for parties to travel to Haar to attend Oral Proceedings in person.

Oral proceedings are commonly held to conclude proceedings at the EPO, and give the parties the opportunity to make oral arguments in support of their case. 

During the examination of pending European patent applications, most applicants make a provisional request for oral proceedings to give them a final opportunity to present argument if the examining division are minded to refuse an application.  Historically, oral proceedings before the examination division were held at one of the EPO’s offices.  For some years it has been possible to hold the oral proceedings by video conference where this was requested by the applicant and where the examining division considered this to be appropriate and could be accommodated. 

Since the start of the COVID-19 pandemic, and following the Decision of the President of the EPO of 1 April 2020 that oral proceedings before the examining divisions should be held by video conference,  we have attended many oral proceedings before the examining division by video conference.  Indeed, we have seen a significant increase in the number of oral proceedings being appointed – perhaps partly due to rescheduling oral proceedings that were originally scheduled for 2020, but perhaps also because some of the restrictions, such as the availability of rooms at the EPO, that have previously limited the number of oral proceedings that could be appointed have been removed.  This is particularly the case with the use of more generally available video conferencing platforms and the ability of all parties, including EPO examiners, to participate in oral proceedings from remote locations and so no longer requires a room to be available at the EPO.

Oral proceedings are held to conclude most oppositions and appeal proceedings – especially for appeals against decisions of the opposition division.  Where proceedings involve multiple parties, such as an opponent and a patentee, all parties will normally request oral proceedings in the event that the decision is to go against them, and therefore it is inevitable for oral proceedings to be appointed.  Although it has been possible to request that oral proceedings in opposition proceedings be held by video conference, they were normally held in person. 

When the COVID-19 pandemic started, the EPO began a pilot project on holding oral proceedings in opposition cases by video conference.  This pilot project has been extended and is set to run until September 2021.  During this pilot project, parties may request that the oral proceedings are not held by video conference if there are serious reasons against this.  However, the default position is that all oral proceedings in opposition matters will be held by video conference.

The provisions relating to oral proceedings before the examination and opposition divisions have now applied to the Boards of Appeal.  Oral proceedings before the Boards of Appeal have been held by video conference where all parties have agreed to this.  In late 2020, the EPO issued a consultation on the possibility of amending Article 15a Rules of Procedure of the Board of Appeal to allow a Board of Appeal to decide to hold oral proceedings by video conference without requiring agreement of the parties, and indeed even if some or all parties indicated that they did not want the oral proceedings to be held by video conference. 

In a communication issued on 15 December, the EPO indicated that, from 1 January 2021, Boards of Appeal could decide to conduct oral proceedings by video conference even without the agreement of the parties concerned. 

In the case we were involved in, oral proceedings before the Board of Appeal had been rescheduled once and were appointed for 8 February 2021, in person, at Haar in Germany.  In early January, the EPO were advised that we would not be able to attend the oral proceedings in person due to the travel restrictions, following which the Board issued a notification that the hearing would be held by video conference.  Neither of the parties were asked for their agreement to hold the hearing by video conference.

At the start of the oral proceedings, the appellant sought to introduce an auxiliary request requesting referral to the Enlarged Board of Appeal on the question as to whether it was legal to hold oral proceedings before the Board of Appeal by video conference without the agreement of the parties. 

The Board of Appeal decided to conclude the oral proceedings and to continue the proceedings in writing whilst making a referral to the Enlarged Board of Appeal on the question of whether the Board of Appeal could require oral proceedings to be held by video conference without the agreement of the parties.  The precise questions to be referred to the Enlarged Board of Appeal remain to be seen.  In the meantime it would appear that parties who do not wish to have oral proceedings before the Boards of Appeal held by video conference may be able to object to this pending the outcome of the referral.  Given that travel to attend oral proceedings in Haar is also going to be difficult in the near future, this may mean some delay in the final decision of a number of cases before the Boards of Appeal.

On March 9th, Reddie & Grose hosted a Zoom webinar discussing the pros and cons of video conference hearings before the European Patent Office, along with the potential implications of the recent referral to the Enlarged Board of Appeal. A video recording of this is available here:

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

Author
Steve Howe
Partner
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Author
Christopher Smith
Senior Associate
About the author

Would you like to know more? You can talk to Steve Howe who will be able to help. Call +44 (0)20 7539 4449

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