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Monday, 24 November 2014

EPO video-conferencing: good for the planet -- but is it good for patent applicants too?

In recent times Merpel has become increasingly interested in the workings of the European Patent Office (EPO). This interest is not, as some might believe, confined to the political and financial dimensions of its operations, since Merpel has also taken quite a fancy to the EPO's functionality. In this context, she has been reflecting on a small but important integer element of the cut-and-thrust of relations between patent applicants and those who stand between them and their desired object: the EPO Examining Division.

In days of old, when examination of a patent application at the EPO became problematic, the European patent attorney would -- like a medieval knight -- need to mount his trusty steed and travel to the EPO’s citadel in Munich, Berlin or the Hague, for face-to-face combat with the Examining Division. This trial by ordeal was popularly known as oral proceedings. In recent times, however, the EPO has embraced video-conferencing for oral proceedings before the Examining Division, a move that has simplified proceedings greatly while also reducing the reduced overall costs for the applicant.

Sage advice from eEtiquette
This is no bad thing.  The choice of video-conferencing for a particular application is something that lies at the discretion of the EPO. Initially it was difficult to arrange, often because of non-availability of video-conferencing facilities at the EPO (though additional facilities are now available and are routinely used for oral proceedings). The experience of some users has been that the Examining Division refused video conferencing for reasons along the lines of "The complexity of the case is such that the presence of the representative in person is required", and this was done with sufficient frequency for them to cease recommending them (it being a huge waste of time to explain to the client the concept of video conferencing, its pros and cons, get them to agree, make the request, and then for that request to be refused (with last-minute travel arrangements then having to be made).

Be that as it may, the facility of video-conferencing exists and it has to be acknowledged that this has improved the EPO's green credentials by reducing the number of flights and other journeys by attorneys to the EPO from locations across Europe, much to the consternation of that dedicated band of air-mile collectors [the obvious solution is to come up with some sort of incentive scheme which gives patent attorneys points, redeemable for rewards, for video-conferencing from far-away locations -- a useful business method if ever there was one ...].

For the attorney, however, there is always the nagging doubt as to whether a face-to-face hearing is likely to produce a better result than a video-conference for the applicant. It is generally assumed that the EPO will treat applicants fairly, irrespective of whether the hearing is held in person or by video-conference, which anecdotally seems to be true. It has however come to Merpel's attention that there are rumours that an examiner has indicated a prejudice against video-conferences on the basis that a request for a video-conference indicates that the applicant does not consider the application to be important and does not therefore warrant the cost of a trip to the EPO -- with the result that video-conference oral proceedings are not nearly as successful for the applicant as one might imagine.

Merpel recognises that, in the absence of data, rumour and anecdote govern our perceptions. This being so, she expects to hear from readers from whose experiences both patent attorneys and the EPO Examining Division can learn.


Anonymous said...

Britain being in a different time zone means the agents are just digesting their breakfast and the Examing Division is itching for some lunch.In the plus column,Examining Divisions have the freedom to be naked from the waist down during video-conferencing.

Anonymous said...

A few comments:
- you can't know if your VC system is compatible with the EPO's, until they grant VC oral proceedings and send you the details of the test connection. They apparently use quite old technology. This means of course that you fight for the right to use VCs, but then find that your systems are not compatible.

- the VC system is constantly switched on at the EPO - we tested the system and found that we could look in to an EPO meeting being held in the VC room (they couldn't see us).

- EPO examiners are not used to the VC system - our oral proceedings required tech. support to come and help, and even then we had to run the audio via a telephone.

- but I can agree with the EPO - some cases would simply not be suited for video conferencing, as you are seriously limited when sending new Requests back and forth.

Anonymous said...

I've already had a couple of OPs by video-conference, and I've found the EDs quite eager to grant these requests, and indeed very curious about the equipment (it's engineers and scientists we are talking about, after all: video-conferencing is just the kind of retro-futurist technology they all love).

The EPO updated its equipment a couple of years ago. It used to be quite outdated indeed, but this is no longer the case.

And yes, early adopters have to cope with both the examiners' and their own inexperience in using these facilities. There are glitches (although, curiously enough, in my experience they've usually been related to the ancillary equipment, such as fax machines).

Nevertheless, I've found these OPs very fruitful, and I can say that videoconferencing has possibly allowed me to obtain at least one patent grant in a couple of hours when the cost-conscious client would probably have been very reluctant to pay for the journey to Munich.

Anonymous said...

@ Anon at 13:32

What are the equipment requirements now then at the representative end?

Anonymous said...

@Anon at 15:44

Until May 2012, ISDN-based videoconferencing equipment was required. Now, Internet Protocol videoconferencing is also available:

"The EPO video-conference studios
employ both ISDN technology (H.261/H.320 ITU compatible, channel bonding or H.244, videocoding CIF H.261, H.263, H.264, audiocoding G.711,
G.722, max. transmission rate 768 Kbit/s using 12 channels) and IP technology (SIP or H.323, videocoding CIF H.261, H.263, H.264, audiocoding G.711, G.722, max. transmission rate 1024 Kbit/s). Each studio has a fax machine; a document camera with zoom function can be made available on request. Video-conferences must be carried out at a transmission rate of at least 256 Kbit/s, but at least 384 Kbit/s is preferred. The maximum transmission rate is 768 Kbit/s for ISDN and 1024 Kbit/s for IP, but will increase as
the technologies develop. Up-to-date information will be available under the support number indicated in the communication allowing the video-conference."

There seem to be even web browser plugins that can meet those requirements...

Anonymous said...

That's all very clever, but can it automatically upload my selfies to the EPO register?

Anonymous said...

I use some PC software from Polycom called "RealPresence" to do EPO OPs, with a decent webcam it works quite well. Older versions of this sort ofsoftware were pretty poor, but now with decent PCs, webcams and a reaonably fast broadband line, the quality can be very good.

Obvious disclaimer - other videoconferencing software is available, yada yada...

Anonymous said...

I have not yet used videoconferencing. When I have given the client that option, the clients in question have preferred to have me attend in person if the case is important to them and/or if the arguments to be presented are not straightforward.

My feeling is that the potential cost saving of videoconferencing does lead to it being considered for less important cases, so there would be some grounds for the examiner's prejudice mentioned in the article.

Anonymous said...

I have done 20+ oral proceedings by video conference (4 in the last month) and more than that in person (roughly 50:50 split between Munich and The Hague, with 3 or 4 in Berlin).

I have seen no change in attitude in the examining division depending on whether I am there in the same room as them or whether I am on their screen.

In terms of success rate, I have not noticed any difference between attending in person or video conference. If anything, I think that video conference puts me at an advantage over attending in person because:

1) during the frequent breaks in the oral proceedings I don’t have to leave the room (we just mute the audio) if I don’t want to –so I can keep studying all the papers without the hassle of finding a place to look at them at the EPO (often I find myself wandering the corridors as the “attorney room” is either busy or far away); and

2) I can ask colleagues in the office for inspiration. In a recent hearing the examiner made a technical argument that he had not presented before. We have an attorney who happens to have worked as a researcher in this field and mid hearing I asked that attorney if the examiner was right. I didn't think he was right, and my colleague strongly agreed with me. Without my colleague's input I would have been less confident making my arguments.

I also get a trainee to sit in on the video conference as a training exercise (i.e. no charge to the client), which is good for them and good for me because an extra pair of eyes never hurts.

Also, given that amendments need to be submitted in electronic form, it is more convenient to use my own PC and simply email the amendments to the examiner than to use the EPO’s facilities. At least a couple of times I have been at the EPO and the printer in the attorney room has been broken, and I have had to mess about with the examiner to find a way to print them out.

Anonymous said...

I agree with the points made above in the post at 10:52.

One way to address the partiality concern outlined in this post is to request video conference immediately in response to all examining division summonses.

I started with this tactic in the era of facilities never being available, in order to give the EPO the impression that there was client-side demand for the facilities.

I have carried on with it partly for that reason, and partly to address the partiality concern outlined in this post. It becomes a benefit in cases which might become "not worth travelling for" (for example after discussions with the examining division over the phone after early written submissions). In such cases it is easier to have made the early request, get the video conference and cancel if needed than it is to get videoconference at short notice. A late request for videoconference after unconstructive early engagement would I think be easier to construe as the case not being worth travelling for.

In terms of presenting an argument over the videoconference, there's a school of thought that says for cases where you have difficulty convincing yourself of the validity of your points, the extra distance introduced by the technology makes it easier to sound believable.

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