The inexorable rise of EPO oral proceedings by video conference

The COVID-19 pandemic will change many aspects of life as we know it. One particularly prominent change has been the accelerated adoption of video-conferencing (VC) as a risk free way of ensuring business continuity. The European Patent Office (EPO) has not been left behind, with the ready adoption of oral proceedings by VC as the new norm. However, the European patent community is divided over whether this is a welcome and inevitable modernisation of EPO proceedings or a dangerous erosion of the right to be heard that should not outlast the pandemic. 

Before COVID-19, all EPO Opposition Division and Boards of Appeal oral proceedings required in person attendance at the EPO by all the parties. The global pandemic, and the accompanying plethora of national lockdowns and travel bans across Europe, initially caused all in-person oral proceedings to be postponed. To keep the business of the EPO  going, the EPO was forced to transition to oral proceedings by video-conference (VC). It now seems, with the introduction of a new rule of procedure of the Boards of Appeal, that oral proceedings by VC might well become the default from now on. 

Examination and Opposition Division oral proceedings

In April 2020, the EPO President launched a "pilot project" for Opposition Division oral proceedings by VC (OJ EPO 2020, 41). The pilot was initially to run until April 2021, but has now been extended to 15 September 2021 (Decision of the President, 10 Nov 2020). The pilot permits oral proceedings to be held at the EPO only "if there are serious reasons" against the use of VC. The decision of the Opposition Division on whether these serious reasons apply is final and cannot be separately appealed (Decision of the President, 10 Nov 2020, Article 2). Concurrently, all Examining Division oral proceedings are now to be held by VC, in view of another Decision of the EPO President in April 2020 (OJ EPO 2020, A39). 

Board of Appeal oral proceedings

In the early days of the pandemic, the EPO Boards of Appeal initially cancelled all imminent oral proceedings. In May 2020, the Board of Appeals resumed limited oral proceedings in Haar. In order to deal with the growing back-log of cases, the Boards also instigated, for the first time, Board of Appeal oral proceedings by VC. All parties in a case had to agree to a VC hearing. The first oral proceedings to be held by OP in the history of the Boards of Appeal was the hearing for appeal case T 1378/16.

In November 2020, the EPO launched a user consultation on an amendment to the Rules of Procedure of the Boards of Appeal (RPBA). The proposed amendment was the insertion of a new article, Article 15a RPBA, to state that the Boards of Appeal may hold oral proceedings by VC in any case that the Board "considers it appropriate to do so, either upon request by a party or on its own motion". Article 15a also states that the Board chair may allow any party or representative to attend by VC. As originally proposed, Article 15a also stated that the Board chair could further, in "exceptional circumstances", require a party to attend by VC (although this provision did not make it into the final amendment). Article 15a RPBA was subsequently adopted by the Boards of Appeal Committee, and came into effect on 1 January 2021 (BA communication of 15 Dec 2020). 

Any parties needing to be further dissuaded from attending Board of Appeal oral proceedings in person, might note that the canteens in Haar and the Isar building have also now been closed until further notice [Merpel: Are there any other places to eat lunch in Haar?].

Article 15a RPBA divides opinion

The Chartered Institute of Patent Attorneys'' (CIPA) submissions to the user consultation strongly supported the introduction of Article 15a RPBA. CIPA cited the obvious advantages of convenience, accessibility and efficiency as a reason to make VC oral proceedings the norm. CIPA argued that the EPO should, in fact, make VC the default for Board of Appeal proceedings, with attendance in person only permitted for "serious reasons" (as is currently the case for Examining and Opposition Division oral proceedings). CIPA's reasoning was that without a clear default to VC, proceedings would be at risk of procedural manoeuvring by parties. CIPA further strongly opposed a hybrid form of proceedings, i.e. proceedings having a mixture of in person and remote attendance, arguing that such proceedings would be inherently unbalanced.  The Intellectual Property Owner's Association had very similar views to CIPA. 

Other organisations, including the European Patent Litigators Association (EPLIT) and the Munich based patent firm Bardehle Pagenberg, promoted their strong opposition to Article 15a RPBA. These submissions stress the importance of face-to-face verbal communication in complex cases and the risk of technical issues (although anyone who has tried relying on EPO WiFi and printers during a hearing will know hat technical issues are not limited to VC oral proceedings...). It seems the EPO listened to these concerns to some degree, given that Article 15a as adopted does not include the provision that the Board chair can in "exceptional circumstances" require a party to attend by VC.

However, it is perhaps not surprising that UK patent attorneys (as represented by CIPA), and patent owners (as represented by IPOA) would be in favour of oral proceedings that do not necessitate the time and expense of a flight to Bavaria. Clients in particular are likely to welcome the cost savings and increase in transparency that VC oral proceedings provides. It is also to be expected that German based patent firms and litigators might look less favourably on changes that reduce the competitive advantage of being based within tram distance of the EPO. 

The inexorable rise of EPO oral proceedings by video conference The inexorable rise of EPO oral proceedings by video conference Reviewed by Rose Hughes on Monday, January 18, 2021 Rating: 5


  1. As per the post ending hint, the debate is inevitably affected by (heavy) business considerations. As long as the ViCo was presented as an emergency - thus, intrinsically pro tempore - solution to hold OP so as not to freeze EPO business, that's fine. But taking advantage of the situation to draconianly eternalize ViCo, all the more (probably? Need to see how the "appropriate" will be construed) as default option, leaves me uncomfortable. Forgetting for a second the diverging interests of UK and German firms, the key point to me is whether EPO stakeholders feel that moving from in person to ViCo OP may lead to an unfair treatment by the EPO or a risk for legal/technical misunderstanding of the party's arguments. If this is the case, yes, the change is negative and should be strongly opposed. But if the argument is simply that the importance of the proceedings in writing would overwhelm the OP, then I see little room to complain. We are brutally invited to play a different game, with different rules. Personally, I would have adopted different solutions for ex parte and inter partes proceedings. Also, the fact that the UK firms are against a mixed solution makes me think that that being physically in front of the Board – assuming the Board is in the EPO premises, of course – is somehow perceived as being advantageous (or maybe only preferable to have your client accept a negative decision)

  2. It is difficult to know what to make of the submissions from CIPA and the IP Owners Association. I know for a fact that members of both have expressed views directly contrary to the submissions made by the organisations (for example, Bardehle Pagenberg is currently listed as a member of the IP Owners Association).

    It is also worth noting that the submission of Business Europe was strongly against the making VICOs the default mode, and that the submission of epi advocated (again) making face-to-face the default mode as soon as the pandemic is over.

    The most remarkable thing about the consultation exercise, however, is that the EPO has not commented upon the CONTENT of the submissions that it received. Combined with the extremely short period (2 weeks) that stakeholders had to prepare and submit their comments, this is both extremely unusual and highly suspicious. Why bother asking for comments if you are not going to reveal which changes were made in the light of those comments, and why those changes were made?

  3. I was just wondering how the public can view those oral proceedings by video that are made open to the public. Does the EPO provide log-in details?

  4. Ron, public access is possible by emailing the EPO:

    "The request is to be submitted via email to the EPO at at least three working days prior to the date indicated in the summons to oral proceedings. A request submitted later may not be processed in time and consequently may be disregarded."

  5. I think VC has advantages for the clients that we are forgetting. At the end of the day, the attorney and the ED might think they understand the science, but it is the inventor(s) who can really contribute. And they are based all over the world with other commitments. Also, we amend on behalf of the applicant, and so it can be very helpful to have them attend. Why should, for example, a Japanese inventor/applicant be forced to travel all the way to Munich in order to gain advantages that could be obtained by VC? And we need to be careful to avoid preferential treatment for local applicants...

    1. Anon,

      No one is saying that there are no relative advantages to VICOs. Cost and ease of participation are certainly two advantages that are hard to dispute. But are those the only metrics that should be used to determine how OPs are conducted? I would suggest not. This is not least because effectiveness of communication is lower with VICOs compared to in-person proceedings. It depends upon one's perspective whether the reduction is only slight or instead quite significant. Nevertheless, it is (also) undeniable.

      Some clients may not be concerned about the fact that VICOs reduces the effectiveness of their representative's oral submissions to the EPO (and hence potentially reduces the persuasiveness of their oral arguments). However, others will be PROFOUNDLY concerned about this ... especially if the OPs in question relate to an opposition against a patent of great commercial significance.

      So perhaps it would be better to allow the parties to choose their preferred mode of conducting OPs? Because in-person proceedings are preferable from the perspective of the right to be heard, my view is that, at least after the end of the pandemic, they should be the default mode (in case not all parties agree to VICOs). Why force parties to use VICOs if they truly do not wish to do so?

    2. (Anon of 10:47). Yeah, fair enough. I was specifically talking about the "ED"; I should have made that more explicit. But I see no disadvantage to the applicant getting a choice even for ED OP.

  6. @ Anonymous of 19.01.2021-10:47GMT

    Nobody forces a Japanese applicant/inventor to come to Munich! If he is not residing in a member state he has to take a professional representative under Art 134 EPC.

    That Japanese applicants are not very flexible when it comes to the wording of claims (the same can be said about US applicants) is nothing new and certainly not a reason to force everybody to have OP in form of a ViCo.

    It is question of trust between the applicant and the professional representative. The later should also be technically competent.

    Those are the last reasons to restrict oral proceedings to ViCos.

    The Paris Convention has taken care when it comes to avoid preferential treatment for local applicants: any foreign applicant cannot be treated differently than a local one. The foreign one needs a representative in a member state as there is only judicial cooperation within the member states. But this is not disadvantaging foreign applicants!

    It is the attempt for representative’s firms not located in Munich to get a piece of this cake! No more no less! See the CIPA paper.

  7. I cannot but agree with “Proof of the Pudding”. If the EPO and its Boards of Appeal claim that they are at the service of its users, the BOAC should have at least published a statement saying how many replies were in favour and how many against the move towards OP in form of a ViCo. One can guess where the balance went.

    OP in form of ViCo are certainly useful during the pandemic, but all commentators are of the opinion of that it should be left to the parties to decide whether they want to have OP in form of a ViCo during the pandemic and/or in the future.

    Imposing OP in form of ViCo like it is done in first instance or that it should be left to the discretion of the BA, lacks any legal basis in the present EPC. Even the boldest interpretations of the EPC under Art 31 and 32 of the Vienna Convention on the Law of Treaties do not allow to come to the conclusion that mandatory OP in form of a ViCo have a legal basis.

    The “Travaux Préparatoires” show that there was thus unanimous agreement that oral proceedings before the Boards of Appeal were meant to be proceedings in person. What applies before the BA applies mutatis mutandis to the first instance. That it implies travel and corresponding costs was not a deterrent to render OP in person mandatory.

    When it comes to interpret the EPC, the boards often resort to the VCLT. It even came up in the famous G 3/19 decision. Why not here?

    On top of this, when the members of the deciding body can sit miles apart in different locations, it boils down to fully dematerialise the EPO. This is a change of the EPC which cannot be decided by the head of the EPO or even the AC. This needs a Diplomatic Conference! By sending examiners and board members to their home countries, the head of the EPO is hoping to save salary costs and education allowances. At what cost for the users?

    Do you want an EPO were its staff sits miles apart? What is this for a kind of office? It boils down that divisions and boards will be reduced to the examiner in charge or to the rapporteur. The provision of a separate channel of communication between the members of the deciding body does by no means replace an active discussion when all are sitting in the same room.

    That technical progress can help in reducing travel is acceptable, but reducing OP to seeing the other party or the deciding body merely on pictures the size of a large post stamp is something which is not everybody’s liking. If you are happy with it, fair enough, but this should not be imposed. If the parties agree and the deciding body sits together at the same location, why not having Ops in form of ViCo. Otherwise my answer is a simple no.

    For the rest, just have a look at the comments published in Kluwer Blog under the heading “Response to EPO consultation: Don’t impose oral proceedings by videoconference” of December 2d, 2020:

  8. Nothing is inexorable at the EPO but the will of its head. But heads come and go, and before coming to such far reaching changes at the EPO, a Diplomatic Conference or at least a Conference of ministers of the Contracting States responsible for patent matters should be called, cf. Art 4a EPC.

    The duty of the president is to urgently call such a conference as since the entry into force of the EPC 2000 in 2007, at least two conferences should have taken place and the next one should be in preparation.

    By the way Art 10(2,b) EPC provides that “unless this Convention provides otherwise, he [the president] shall prescribe which acts are to be performed at the European Patent Office in Munich and its branch at The Hague respectively. I cannot see there that he has the power to dematerialise acts as fundamental in the patent procedure as OP.

    Art 10(2,a) might allow the president to “take all necessary steps to ensure the functioning of the European Patent Office, including the adoption of internal administrative instructions and information to the public”, but Art 10(2,a) has to be read in conjunction with Art 10(2,b).

    With examining and opposition divisions distributed all over the Contracting states, and OP being no more than virtual, as the staff not residing in Munich or The Hague but can be anywhere over Europe, the president does not seem to be up his duties!

    Who will inform the AC of this?

    What applies to the first instance applies as well to the boards, but I am sure that should necessity arise, the EBA could come up with another very convenient “dynamic interpretation”.

  9. I am anon of 1047. I would like to point out that I picked Japan as a distant time zone with a different language (hence inconvenience), not as a reference to any general habits of Japanese applicants.

    If you are talking about opposition/appeal, then I agree that the applicants/inventors are of lesser importance (so much is just law based, and plenty of time to ask for tech input during written proceedings). Also, UK firms are happy to fly for OD/BOA because the budget is normally high enough to justify it, so less need to worry about different national interests.

    But for the ED OP, I think the applicant/inventor is very helpful. Especially as new issues are raised all the time, and the ED is normally receptive to scientific input. We are their representatives and act for the client. I disagree with the "they must simply trust us, and we know the science".

    There is no patent attorney who understands the invention, the literature, and the underlying scientific complexities better than the inventor. There is no patent attorney who knows the commercial situation better than the applicant. They need us because, without knowing the law, they cannot hope to address the issues. But they are very helpful to us if we ask them the right questions. "The ED is now saying that x=y, do you know of a paper to dispute that". "This amendment would be valid, but would not encompass X. Is X a realistic work around?"

  10. Dear Anon of 10.47

    I am inclined to think that you are much more familiar with UK practice than with European practice.

    As far as I know, UK appeal is much more law based than at the EPO. This is certainly not the case at the boards. When the documents (prior art, requests) filed in appeal are admitted in the procedure, the discussion is mainly about technique.

    In opposition, there is also not a lot of written input at the EPO, as there are in general at best two exchanges. The OD summons rapidly to OP in order to avoid ping-pong between opponent and proprietor. If possible the OD gives its provisional opinion in the annex to the summons.

    In my experience and should necessity arise, the applicant/inventor is as useful in opposition as in examination. But be it in examination a representative should know from its client what his needs are and what is useless to him.

    Whether one takes Japanese or US applicants, or applicants sitting next door to the EPO, they are mostly using qualified representatives.

    That UK representatives have longer to travel to the EPO than Munich ones is not a reason to have OP in form of a ViCo. The same applies for Finnish or Turkish representatives.

    1. Anon of 10:47.

      Kind of you to assume I have some familiarity with the UK approach. Alas, I wouldn't touch a UK appeal with a barge pole.

      Anyway, as I said before, I certainly understand why lots of people (both UK/DE) prefer Opp/Appeal in person. But I still think that VC for ED OP has many advantages due to the ease of attendance and the more collaborative approach wherein a chat with the inventor or a brand new amendment can help.

      In terms of opp/appeal, we obviously have a different impression. I said that there is "plenty of time to ask for tech input" during written proceedings. While there are few exchanges, the proceedings last well over a year before OP. I view this to be adequate time to seek technical input on likely issues.

      As to whether the appeal is law-based or not. If you are able to convince the Board that the appeal is not merely a review of the correctness of the first instance decision, and if you are able to convince them to introduce new prior art/amendments at that late stage that could necessitate further technical input from the inventors, then hats off to you.

      Similarly we differ on appeal. If you are able to introduce new prior art and new technical arguments in appeal, then fair play to you.

  11. I understand your point of view, but we still differ in views. I still find it not compelling to have the applicant/proprietor/opponent present during OP in examination or in opposition.

    My experience is that when a representative is accompanied by its client, OP are often more tedious, no need to say why, but it cannot really change the outcome. Whether the applicant/proprietor/opponent is present when the case is a good one, then success is achievable; if the case is doggy, the chance of success are remote even in the presence of the applicant/proprietor/opponent

    With the RPBA20 any hope to bring in new submissions will remain a hope. What has been missed in first instance has barely a chance to enter appeal. Late submissions in appeal are only admitted in exceptional circumstances. The recent case law of the BA show that the circumstances are really exceptional. Here again, whether the applicant/proprietor/opponent is present will not change the situation exactly as in first instance.

    I do not intend to continue a discussion on this point.

    Whatever can be said, OP in ViCo as only form of OP as decided by the EPO and the BA lack a legal basis.

    Nothing against taking into account new technical means and holding OP in form of ViCo, but outside the pandemic it should be left to parties whether they want a ViCo or not.


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