Oral proceedings in case G1/21 took place today (2 July 2021) for the second time in this case, after proceedings were adjourned at the first oral proceedings that took place last month. While we don’t know what the outcome of the oral proceedings will be, the proceedings were at least properly concluded and we can expect the written decision in due course.
In G1/21 a question was referred to the EPO’s Enlarged Board: 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?
As reported previously, the path to these oral proceedings has not been smooth. Suspicions of partiality were raised against some members of the Enlarged Board in its original composition when it was established to handle the case. The Enlarged Board responded by changing its composition, although this did not stop the appellant from continuing to object to the Enlarged Board’s composition, both in written proceedings and at the first oral proceedings.
These objections continued in today’s oral proceedings, where the appellant objected that the proper procedure to appoint alternate members to the Enlarged Board when changing its composition had apparently not been followed. As a result, the Enlarged Board did not have a proper legal basis and this raises constitutional questions for EPC member states because of the transfer of power to the EPO from the member states to decide on the validity of patents. Based on this, the appellant began proceedings today by making two requests: firstly that the Enlarged Board declare itself to be non-competent to decide on this case, and secondly that the Enlarged Board postpone these oral proceedings further.
The Enlarged Board dismissed both of these requests and we were finally able to hear submissions on the question of oral proceedings by video conference without a party’s consent.
The appellant’s main argument was that, when the European Patent Convention (EPC) was drafted, a party’s right to oral proceedings was understood to mean a right to oral proceedings held in-person. Forcing a party to accept oral proceedings by video conference is not acceptable. If the EPO wants to allow oral proceedings by video conference then the EPC should be amended to reflect this.
The Enlarged Board questioned the appellant as to whether this meant that any technical developments made since the EPC was drafted in the 1970s – laptop computers, electronic whiteboards – should not be allowed unless the EPC is amended. The Enlarged Board also questioned the appellant as to the legal basis for oral proceedings conducted by video conference if the parties consented – did it mean that all such oral proceedings were invalid?
The President of the EPO argued that, even from the original drafting of the EPC, oral proceedings held by some means other than in-person have always fallen within the meaning of ‘oral proceedings’. It is for the EPO to decide the appropriate means for conducting the oral proceedings, such as by video conference now that technology makes it practical. The President further argued that the mindset of the original drafters of the EPC should not be given too much importance because, as the Enlarged Board of Appeal held recently in a different case, interpretation of terminology should be open to further development as technology evolves.
The Enlarged Board questioned the President as to whether the parties have a right to decide on which form of oral proceedings is appropriate. The President responded by stating that the parties have no such right and never have done. It is for the relevant department of the EPO to decide.
An interesting fact emerged from the EPO’s submissions: in last year’s trial of video conference oral proceedings before the opposition division (when in-person oral proceedings were not possible), oral proceedings only took place with the consent of the parties. In that period of time, the EPO would have expected 3000 oppositions to have taken place. But only 300 oppositions took place by video conference. In 90% of cases, at least one party objected to oral proceedings by video conference and so the opposition oral proceedings did not take place. We don’t know the extent to which this figure reflects a lack of confidence in the video conferencing oral proceedings per se vs. some parties exploiting the pandemic to delay oral proceedings. But it does put some numbers to the comments we have seen on internet forums as to the popularity of video conference oral proceedings.
For the most part, the parties’ submissions were consistent with what had already been submitted earlier in writing. If the Enlarged Board had already come to a preliminary opinion as to how the referred question should be answered, then the submissions made in the oral proceedings might not have changed anything.
We will find out the Enlarged Board’s answer in due course – hopefully soon, given the importance of this case – and we will report again. If you have any questions about this case in the meantime, please contact your regular Reddie & Grose contact or the authors below.
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.