Chairman and Enlarged Board criticised for lack of impartiality in ViCo oral proceedings referral (G1/21)

What a difference a week makes. The decision of a Board of Appeal to refer the question of the legality of mandatory video-conference (ViCo) oral proceedings to the Enlarged Board of Appeal (EBA) was issued just over a week ago. Moving quickly, the EBA has already set the  hearing date for the referral. The hearing will take place in two months time (28 May 2021) and, ironically, will itself be conducted by ViCo. Criticism of the EPO continues, both for the hasty scheduling of the oral proceedings with limited time for third parties to comment, and for the potential conflicts of the appointed members of the Enlarged Board. 

G 1/21: Case catch-up

The Enlarged Board of Appeal (EBA) referral from T1807/15 concerns the legality of oral proceedings conducted via Video Conferencing (ViCo) without the consent of all parties (IPKat). In order to avoid a growing back-log of cases during the COVID-19 pandemic, the EPO began holding Board of Appeal oral proceedings by video conference (ViCo) last year for the first time. As part of its overall digital strategy (which also included the online qualifying exams, IPKat), the EPO began laying the ground for ViCo oral proceedings as the new norm post-pandemic. Towards this aim, a new rule of procedure of the Boards of Appeal (RPBA), Article 15a, was introduced, following a short user consultation. Article 15a RPBA permits a Board of Appeal to hold oral proceedings by ViCo whenever "the Board considers it appropriate to do so" (IPKat). New Article 15a RPBA was recently approved by the Administrative Council of the EPO on 23 March 2021 and is scheduled to come into force on 1 April 2021. 

The EPO's swift move to mandatory ViCo oral proceedings has received vociferous criticism from some quarters. It was therefore unsurprising when news broke of a new referral to the EBA on the legality of the new provision. The referral stems from appeal T1807/15 of the opposition decision to maintain EP1609239 in amended form. 

Are the days of in-person hearings behind us?

The party requesting the referral withdrew their request "after speaking with their client". Undaunted, the Board of Appeal (3.05.02) continued with the referral (IPKat). Less than a week after the Board of Appeal decision, the EBA set a date for oral proceedings to consider the referral. Oral proceedings will take place by Zoom on 28 May 2021. Third parties have been invited to submit amicus curiae by 28 April 2021. 

Stay of proceedings?

Understandably, there was some concern from parties to long-pending proceedings before the Board of Appeal that there would be further delays to proceedings in view of the referral. After-all, could the Boards be expected to continue with hearings that may subsequently be found unlawful? The EPO issued a notice on 24 March 2021 that oral proceedings before the examining and opposition divisions would continue by ViCo, without requiring the agreement of the parties. However, to this Kat's knowledge, no statement has been issued with respect to Board of Appeal ViCo proceedings conducted without the consent of the parties. 

EBA criticised for lack of Impartiality of the Enlarged Board of Appeal ?

Criticism has already been levelled at the EPO for the composition of the Enlarged Board handling the referral (see IPKat comments here). Anonymous third party observations (TPOs) submitted a few days after the announcement of the composition of the Board for G1/21, questioned the impartiality of the board, and the inclusion of Mr Carl Josefsson. The TPOs cited Article 24 EPC, which states that members of the EBA may not take part in a case "in which they have any personal interest". The TPO quotes the statements of Mr Carl Josefsson supporting the adoption of new Article 15a RPBA. In the submissions, the anonymous third party observer argued that Mr Josefsson proposed new Article 15a and "is now, in his function as the chairman of the Enlarged Board of Appeal, to decide on the exact lawfulness of exactly this Article, i.e. the Article he himself proposed to be introduced...Mr C. Josefsson would have a personal interest in that his "own" new Article is not overturned by the Enlarged Board of Appeal in order to avoid the disgrace of having proposed a new Article that is unlawful". 

Importantly, the Chairman of the Board has the role of determining the composition of the EBA for a particular referral (Article 2(2) Rules of Procedure of the Enlarged Board of Appeal, RPEBA). This raises the interesting questions of whether, if Mr Josefsson were to excuse himself from the proceedings, the composition of the Board could be impartially determined. 

The TPOs further observed that the decision on the EBA to hold the hearing on the referral itself by ViCo seems to pre-empt the decision on the referral in favour of ViCo oral proceedings "since it is assumed that the summons to videoconference were issued with the consent of all members of the Board in the present composition". However, notably, Article 15a is a Rule of Procedure of the Boards of Appeal, not the Enlarged Boards of Appeal. 

The European Patent Institute (epi) has also written to Mr Josefsson, noting that, given the controversy surrounding new Article 15a EPBA "it appears to epi that it is necessary for the Enlarged Board not only to be unbiased but also to appear unbiased. It is therefore suggested that the panel of the [EBA] should not include anyone who was involved in the drafting and approval of the proposed Article 15a". 

This Kat looks forward to reading the amicus curiae on the referralwhich unlike the submission to the user consultation on Article 15a, will be available on the public file. If the furore surrounding the introduction of Article 15a is anything to go by, we can expect some strongly worded submissions. It will also be interesting to see if there are any observations from supporters of ViCo oral proceedings and Article 15a RPBA. The Chartered Institute of Patent Attorneys (CIPA) has so-far been an enthusiastic supporter of the EPO's digital strategy and ViCo oral proceedings. The latest issue of the CIPA journal (CIPA membership login required) reported that of the large number of submission to the user consultation on Article 15a RPBA, CIPA’s support for new Article 15a RPBA had been contrary to the majority view, but that there was agreement "that mixed video and in-person oral proceedings are not a good idea".  

Commendable urgency or unjustified haste?

Given the legal uncertainty generated by the referral, the EPO could be commended for attempting to deal with the matter swiftly. The EBA's hasty scheduling of oral proceedings is on the edge of the 2 months' notice legally required (Rule 115 EPC). 

Although strictly legal, the EPO's swift summons to oral proceedings has been criticised for not giving parties sufficient time to prepare their submissions and observations. Whilst it is worth noting that a notice period of even less than two months is not without precedent, when the urgency of a case requires it (J14/91), such decisions have been taken only when the facts of the case were deemed "straightforward" (J14/91, r.2.5). Whilst the case in G1/21 may be considered urgent, is it straightforward? 

The IPKat will keep you updated on further developments. 

Further reading

18 Jan 2021: The inexorable rise of EPO oral proceedings by video conference

9 Feb 2021: The legality of Board of Appeal oral proceedings by video conference has been referred to the EBA

16 March 2021: Board of Appeal in T1807/15 continues with ViCo oral proceedings referral

Chairman and Enlarged Board criticised for lack of impartiality in ViCo oral proceedings referral (G1/21) Chairman and Enlarged Board criticised for lack of impartiality in ViCo oral proceedings referral (G1/21) Reviewed by Rose Hughes on Monday, March 29, 2021 Rating: 5


  1. Without entering the discussion of the mandatory character of OP by ViCos, there is a further decision of a BA considering that OP by ViCos are fully in accordance with Art 116: T 2320/16.

    The fact that the legislator allowed POs in the form of video conferences in 2000 for the examination procedure does not mean that they were allowed for oppositions and appeals, let alone that the parties would not have a say in the form OP are conducted.

    What is at issue is not the possibility of holding OPs in the form of ViCos during the pandemic, but their compulsory nature, irrespective of the will of the parties and without any time limit. Delivering justice on time is a very weak excuse which will only convince those not needing to be convinced.

    That the BA support this destructive will of the office is more than a serious problem, it is not acceptable! The BA support the undermining work started by the Office's and the BA’s governing bodies.

    What is actually much more serious, and what lies behind the OPs as ViCos, is that the decision-making bodies can be dispersed all over the territory of the member states, and even beyond.

    When we see the 'consultation' on the 'New Normal', the desire to dematerialise the office is clear. There is also a clear cynicism in wanting to "consult" the users of the office to see if they approve of this new structure of the office, when users have never been consulted on the mandatory nature of OPs.

    The governing bodies did not invent the adage "divide and conquer", but they are using it to great effect. The very mixed responses of users to the OPs under ViCo are proof of this. If the office's staff are dispersed, the possibility of collective action becomes very difficult. Moreover, if staff are in their home country, there is no longer an expatriation or education allowance to pay. So everything is a benefit for the office. The notion of a seat in Munich and a department in The Hague becomes obsolete. The often invoked Art. 10(2,a) cannot be read without taking into account Art. 10(2,b).

    It is also worth recalling what the EBA stated in decision G 2/19: "Users of the European Patent Organisation's services can legitimately expect that the European Patent Office's departments will not perform acts at whatever other place they choose."

    In view of the "dynamic interpretation" in G 3/19, there is not much to expect from the EBA in G 1/21, independently from the fact that the Chair of the BA has put himself as chair of the EBA in G 1/21. This on its own is scandalous enough.

    That the Office is evolving is not in itself bad, but the proposed and imposed changes profoundly alter the structure of the EPC and the way the EPO works. If the legislator wants it after a serious and honest debate, i.e. after a diplomatic conference, there is nothing to prevent it.

    But neither the governing bodies of the EPO nor those of the BA have the legitimacy to do so. A massive outcry is needed to remind the governing bodies of the EPO and the BA of their limits.

    1. "What is actually much more serious, and what lies behind the OPs as ViCos, is that the decision-making bodies can be dispersed all over the territory of the member states, and even beyond."

      This point has come up in discussions several times, but I've yet to see an explanation of why it would be so disastrous that decision-making bodies not be solely located in particular member states. Could you please explain why?

  2. No to an EPO 2.0! - Part 2Monday 29 March 2021 at 10:26:00 GMT+1

    The EPO is not a machine for cutting costs and increasing the bonuses of its managers.

    The notion of public service is completely absent from the measures decided or planned. It seems to me that the EPO is an organisation was set to work for the good of the public and its users.

    This fact alone should lead the profession to react.The epi has started to do so, but there is still a lot of work to be done.

    "Silence is consent" is another adage that is widely used by the governing bodies of the EPO and the BA. And if you are unfortunate enough not to agree, your contribution is simply swept under the carpet.

    The present situation reminds me of an old joke:
    Art 1-The boss is always right
    Art 2-If the boss would by chance not be right, then Art 1 automatically applies.

    But I am not laughing, I am sad.

  3. Human faces have evolved with hundreds of muscles that generate micro expressions vital for human communication. Already, many adolescents starting university degree courses have lost the ability to "read" human faces and have lost the ability to "ask out" a fellow student face-to-face, being able to do it only online, with the help of an app. In a ViCo, there is simply no eye to eye contact (because the participants simply cannot look simultaneously into the face of their interlocutor and into the lens of their camera).

    Why do I mention all this? Because I am wondering how important, IRL, genuine face to face communication is, and empathy between judges and advocates, for the administration of justice. CIPA seems to regard empathy between judge and advocate as irrelevant and superfluous, whereas firms based in Munich see it as more important. Who's right?

  4. The current constitution of the Enlarged Board for this hearing is so self-evidently inappropriately biased that it's lack of slyness is almost a laughing matter.

  5. The referring decision is one of the finest pieces of legal interpretation of a term in the EPC that I have seen in recent times. Others, in particular T 2023/16, merely scratch the surface. The referral is not about vicos per se, it is only about vicos against the will of a party. I hope that the discussion and amicus curiae will focus on the issue at stake: Legality of forced vicos. One may be fine with vicos in general (I am), but one may still have a serious issue with legality of fored ones (I do!). I had multiple vicos in examination, opposition and appeal by now, and they were far from perfect but okay, given the pandemic circumstances. I am not against vicos per se. Let there be vicos even in normal times, but only for those who want them. I cannot stand the fact that the alleged (and doubtful) need for forced vicos during the pandemic is used as a cover-up to put them in place for ever and for all.

  6. Implicit in the EPC and the structure of the EPOrg seems to be the notion that the organs of the EPOrg can be trusted to act fairly and impartially, and that everybody will perform their duties in that spirit. But what this sorry episode illustrates (along with the chequered history of the Office under President Bonaparte - I mean Battistelli) is that there is no adequate remedy available when the organs of the EPOrg breach that trust, and whether by will or neglect act contrary to the letter and spirit of the law.

    When the Boards themselves are complicit in actions which undermine the EPC, or are too captured or compromised to prevent such actions, what remedies are available?

    The Contracting States are the ultimate guarantors of the functioning of the EPOrg and the rule of law under the EPC. But they, too, as represented by the Administrative Council, seem either not to know or not to care (or perhaps even to encourage) this abuse. What then?

    Can any of the Contracting States ultimately be held liable? The host states, perhaps? Even there, we saw in the saga of the previous president's abuse of EPO employment rights that the highest court in the Netherlands was prepared to give an unbelievably wide construction to the range of actions covered by diplomatic immunity. Thus it seems that even national legal systems are of minimal help against an international organisation gone rogue.

  7. To quote from document BOAC/16/20:
    "The President of the Boards of Appeal proposes that the Boards of Appeal Committee adopts the amendment to the Rules of Procedure of the Boards of Appeal set out in Part II of this document. The amendment involves inserting in the Rules of Procedure of the Boards of Appeal (RPBA 2020) new Article 15a, which clarifies that the Boards of Appeal may hold oral proceedings pursuant to Article 116 EPC by videoconference".

    BOAC/16/20 thus serves as concrete evidence that the President of the Boards of Appeal has proposed legislation which contains provisions permitting "without consent" VICOs. The referral in G1/21 is all about whether "without consent" VICOs are compatible with the EPC. In what universe can the very person who proposed subsidiary legislation sit as the Chair of the Enlarged Board tasked with deciding whether that legislation is compatible with the Convention?

    It could perhaps be said that the EBA needs time to consider the objections to partiality, and that they will do so in due course. However, much like the answer to the referral in G1/21, the EBA's ultimate decision seems to have been made already.

    If the EBA ultimately decided to exclude Mr Josefsson from the proceedings, it would need to address the fact that he has already participated in the proceedings, contrary to Art 24(1) EPC. This would then force the EBA to rescind the decisions taken by Mr Josefsson, including decisions on the members appointed the EBA, as well as on the timing and manner of oral proceedings.

    Given the information in the above quote from BOAC/16/20, it is inconceivable that Mr Josefsson would have been unaware that his participation in G 1/21 would be entirely inappropriate, if not unlawful. In view of this, as well has the fact that he has already participated in the proceedings, we must therefore conclude that Mr Josefsson has no intention of self-recusing from G1/21.

    Also, even before 16 March, epi warned that, to avoid the appearance of partiality, Mr Josefsson should not participate in the referral. Thus, given the extraordinary speed with which the EBA has acted on other matters connected with the referral, we can conclude that the EBA has no intention of reaching a speedy conclusion on the possibility of a FORCED exclusion of Mr Josefsson.

    Taking all of the above together, it is hard, if not impossible, to reach the conclusion that the EBA will simply brush off the well-founded objections of partiality and continue with the current composition of the EBA ... with entirely predictable consequences for the outcome of the referral.

  8. I'm beginning to think that Mr Josefsson's conscience is clear because, to him, it is self-evident that the sovereign States that set up the supra-national European Patent System did so fully aware that they were creating an extra-judicial system, outside the Rule of Law. We can see in recent years the Contracting States setting their faces against the idea of entrusting the EPO Boards of Appeal with anything as important as the adjudication of infringement cases.

    For pure validity cases, at stake is nothing as serious as criminal acts, loss of liberty, breach of any human rights, and so on. All that is at stake is whether the inventor's request for grant is or is not granted. So, nothing important enough for the guardians of the Rule of Law to get all steamed up about. Due process, I hear you cry. Forget it says Mr Josefsson. Nothing to get excited about, folks. Move along now, move along please.

  9. There is yet another TPO in the docket now; see

    In addition to the Chairman Mr Josefsson, also Ms Ritzka and Mr Eliasson are challenged for the appearance of bias. BOAC/16/20 held that Mr Joseffson was advised by the Presidium before making the proposal to BOAC; both Ms Ritzka and Mr Eliasson were member of the Presidium at the time.

    Three out of five internal member of the EBA appear to be biased. Anything but a good start.

    1. A further 3rd party observation has been filed by a reader of this blog, by the look of it.

  10. The problem with the TPO is that they are anonymous. It will thus be easy for the EBA to prima facie dismiss them.

    What is going on at the E>BA is bending of the law, but who cares as the EPO benefits from immunity? Since 2010 immunity is meaning impunity.

    1. Article 4 of the Rules of Procedure of the Enlarged Board of Appeal:

      Article 4
      Exclusion and objection

      (1) If the Board has knowledge of a possible reason for exclusion or objection which does not originate from a member himself or from any party to the proceedings, then the procedure of Article 24, paragraph 4, EPC shall be applied.

      (2) The member concerned shall be invited to present his comments as to whether there is a reason for exclusion.

      (3) Before a decision is taken on the exclusion of the member, there shall be no further proceedings in the case.

    2. The difficulty with Art 4 RPEBA is not so much that its provisions are unclear (they are not) or that there is any doubt that they should be invoked in this case (they most certainly should). Instead, it is that the EBA itself, INCLUDING the members to whom the reasons for exclusion and objection apply, which is charged with deciding to apply the provisions of Art 4.

      In this case, the members to which there are clear grounds for exclusion are not only in the majority but also include the Chair. In view of this, what are the chances that the grounds for exclusion will simply not be addressed by the EBA? On the other hand, if the EBA refuses to address such a clear contravention of a fundamental principle of natural justice (nemo judex in causa sua), it is difficult to see how the external members of the EBA can, with a clear conscience, agree to continue their participation and to thereby lend credence to what would undoubtedly be a kangaroo court.

    3. @Proof of the pudding I think you need to correct the first paragraph above. The objected-to members will NOT participate in the decision on exclusion, according to EPC Art 24 (4):
      (4) The Boards of Appeal and the Enlarged Board of Appeal shall decide as to the action to be taken in the cases specified in paragraphs 2 and 3, without the participation of the member concerned. For the purposes of taking this decision the member objected to shall be replaced by his alternate.

    4. No correction needed. I agree that members objected to cannot participate in a decision on their potential exclusion. However, that was not the decision to which I was referring.

      The decision in question is whether to apply any provisions of Art 24 in the first place.

      It is already abundantly clear that the Chairman has decided not to apply Art 24(1) to himself or the other members of the EBA who participated in drafting and/or promulgating Art 15a RPBA. This is despite the clear personal interest, namely an interest in avoiding professional embarrassment, that all three (or four) members have in connection with the question referred.

      If that were not enough, then the epi's letter, which was received by the EPO before the Chairman took decisions in connection with G 1/21, really ought to have triggered Art 24(2) EPC ... and hence a decision on exclusion PRIOR to the participation in the proceedings of any of the members objected to.

      So, despite the existence of clear grounds under Art 24(1) and/or Art 24(2) for triggering a decision on exclusion, it is apparent that the Chairman has not (yet) decided to apply either of those provisions. Which was precisely my point. That is, it is one thing to have laws designed to deal with actual or perceived conflicts of interest ... but it is another thing entirely to ENFORCE those laws. The trouble here is that it seems that the Chairman gets to decide upon whether the laws in question are enforced.

  11. So, when it comes to information regarding G 1/21, it seems that the public will have to content itself with a Communication from the EBA added without any fanfare to the EPO's website:

    I may be mistaken, but this seems to me to be the one and only occasion upon which a communication from the EBA regarding a referral (and providing information on the deadline for third parties to file written statements) has not been published in the OJ EPO.

    Funnily enough, a different development that occurred only one day earlier, namely AC decision number CA/D 3/21, IS reported in this month's Official Journal. As all will be aware, that is the decision to formally approve Art 15a RPBA. It is almost as if the EPO is trying to rush through the decision in G 1/21 and to do all that it can to avoid attracting the attention of the public to what is going on.

    This latest development might not provide conclusive proof of a conspiracy to use any means necessary to ensure that Art 15a RPBA remains in force. However, it makes it harder than ever to explain away the numerous, POTENTIALLY prejudicial developments in connection with G 1/21 as simply being a series of unrelated mishaps.

    1. It transpires that information regarding the referral in G 1/21 will now be published in the Official Journal:

      This is all fine and well except for two rather important points. The first point is that not even the advance publication of the Communication from the EBA mentions the date for submission of amicus briefs. However, this probably has something to do with the second point, which is that the official publication of the EBA's Communication will not take place until AFTER the date by which amicus briefs should be submitted.

      I could perhaps accept that there is nothing suspicious about all of this ... were it not for the fact that the advance publication (which is notified to all those who subscribe to the EPO's newsletters) does not refer to the 24 March 2021 Communication from the EBA that contains the missing information (which Communication was NOT notified to the same subscribers).

      Thus, by slightly delaying the official publication of the Communication from the EBA, the EPO has ensured that the subscribers to its newsletters are not (directly) informed of the date for submitting amicus briefs in connection with G 1/21. Whilst this will not prevent the filing of such briefs, it could (together with the very short deadline) reduce their number. I cannot help but think that this was precisely the reason for the slight delay to the official publication.

  12. I just hope that all people outraged by the present attitude of the Chair of the BA will write to the EBA and request that their amicus curiae briefs will be published-

    1. Maybe it would be better if they wrote to Arnold LJ.

  13. With respect to the suspicion of partiality, it might be interesting to have a look at the following procedural decision in a petition case taken inter alia by the President of the Boards of Appeal:

    1. The documents for R 5/18 indeed make interesting reading.

      As I understand it, the Chairman of the EBA for R 5/18 is the same as the Chairman for G 1/21. The OPs for R 5/18 were originally due to take place in person but, presumably by order of the Chairman, were changed to VICOs on 31 March 2021, which was AFTER the EBA received the referral in G 1/21. Further, the EBA denied a request of the Petitioner to change the format back to in-person proceedings. Finally, to rub salt into the wound, the OPs in R 5/18 will take place before the EBA's decision in G 1/21 is issued.

      So, to summarise, the EBA will conduct oral proceedings in a petition for review by using a format whose lawfulness (absent the consent of the parties) is currently in doubt. Further, the EBA's final decision in connection with that petition for review will be announced before the EBA, with THE SAME CHAIRMAN, has separately decided whether "without consent" VICO OPs are permitted under the EPC.

      In other words, Mr Josefsson will announce a final and unappealable decision in connection with R 5/18 before going on to Chair the EBA for G 1/21 ... whose answer to the question referred could, in theory, undermine the validity of his decision in R 5/18.

      Are we really expected to believe that, under these circumstances, Mr Josefsson is capable of keeping an open mind in connection with the question referred in G 1/21? Despite this, Mr Josefsson is showing no signs of self-recusing. It therefore seems that we can expect that not only will he participate in G 1/21 he will remain as the CHAIRMAN of the EBA. Unbelievable.

  14. There are further submissions on the EPO Register. One makes a bizarre and (I think) plainly incorrect assertion about the impact of ViCo on the rights of professional representatives vis-a-vis the location of their places of business. The other is a substantial set of observations from a Swiss patent attorney association which is worth detailed consideration.

    1. I do think that the submission is probably not very elaborated but strengthens the argument that oral proceedings should only take place in Munich, The Hague and Berlin.

      In my opinion, Art. 134(6) EPC reads as follows: "Every professional representative may establish a place of business in Germany or the Netherlands." Thus, a Turkish professional representative may establish a place of business in Germany. However, German professional representative may not necessarily estalbish a place of business in Turkey.

      This intentional discrimination seems only justified in view of oral proceedings being allowed to take place only in Germany or the Netherlands.

  15. EPI has apparently grown a spine. A shame that it never did so during the abuses of the Battistelli era.

  16. In the comments to the previous IPKAT-Article:

    an anonymous stated

    "I.B. drafted the text accompanying the proposal for new art. 15a RPBA, but this something only the aficionados within the Boards know: there's nothing in the public records and it will be difficult to request that he be recused. But at least he is not the rapporteur."

    While there is still no written proof of his participation in drafting the text accompanying the propoal for new Art. 15a RPBoA, he should at least recuse in view his participation as a chairman in the following the decision:

  17. Yet a further submission is now on the Register. The anonymous sender seems to be familiar with the IPKat comments section...

  18. Is there any reasons why the Amicus Curia from VESPA and epi as well as the anonymous Amicus Curiae (i.e., the third party submissions) are not immediatly published under:

    and can only be found in the register?


All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.

It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.

Learn more here:

Powered by Blogger.