Are parties still impaired from attending in-person proceedings? G1/21 (ViCo) applied by the Boards of Appeal (T 1197/18)

The decision of the Enlarged Board of Appeal (EBA) in G1/21 was perhaps the "non-event" of the patent year. Despite clear and considerable interest in the EBA's view of mandatory ViCo oral proceedings as the new norm, the EBA chose to only answer the narrow question of the legality of ViCo oral proceedings during the disruption caused by the COVID-19 pandemic. As one commentator analogised, if you ask the EBA for a drink, the EBA will respond that they don't have any single malt whisky...As of yet, we also do not have the benefit of the EBA's written decision and reasoning in G1/21, but must rely on the EPO's summary. In the meantime, the precise meaning and scope of the EBA's order in G1/21 is already being contested by parties before the Boards of Appeal, most notably in the recent decision T 1197/18. 

Background: ViCo oral proceedings and G1/21

In response to the disruption caused by COVID-19, the EPO began holding Board of Appeal oral proceedings by video conference (ViCo) in 2020. Most parties have accepted the necessity for this measure during the extraordinary circumstance of a pandemic. Last year, however, the Administrative Council approved a new Rule of Procedure of the Boards of Appeal (RPBA), Article 15a, that permits a Board of Appeal to hold oral proceedings by ViCo whenever "the Board considers it appropriate to do so" (IPKat). This apparent determination of the EPO to continue with ViCo oral proceedings post-pandemic has proved controversial to say the least. The referral in G1/21, on the legality of ViCo oral proceedings, was therefore not unexpected, and was accompanied by more than 40 amicus curiae (IPKat). 

The referring Board of Appeal in G1/21 asked the following question:

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?

Despite the obvious interest in the referred question, the EBA did not answer the broader question of whether new Article 15a RPBA is permitted under the EPC. The EBA instead limited its answer to the legality of mandatory oral proceedings during "a period of general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises". The full decision of the EBA has not yet been released, but the order of the EBA was announced by EPO press release as follows:

During a general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even 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.

The refusal of the EBA to answer the question referred to it by the Board in G1/21 left open the question of whether Article 15a RPBA contravenes the EPC once the state of general emergency impairing the parties from attending in-person is at an end (IPKat). The EBA was thus able to dodge the controversy (and any potential conflict with the EPO President and Administrative Counsel) but did little to address the legal uncertainty hanging over ViCo oral proceedings as a new norm post-pandemic. 

On the plane

How are the Boards of Appeal applying the EBA order in G1/21?

Interestingly, the Opponent who requested the original referral to the EBA in G1/21 did not interpret the decision as applying to their case. A request for oral proceedings to be held in-person was filed by the Opponent shortly after the EBA order was announced. The request noted that "the parties are not impaired to attend in-person oral proceedings", and cited the decision that quarantine was no longer compulsory for people entering the country from the Schengen area. As such, the Opponent argued, the Swiss patentee would be able to attend. Notably, the patentee's representatives are based in the UK, albeit at a firm with a Munich office, but are yet to comment on the Opponent's latest request for in-person proceedings. 

In a separate case, the Board of Appeal in T 1197/18 considered whether the order of the EBA could still be said to actually apply, now that the most stringent of the travel restrictions in Europe have been lifted. Oral proceedings in T 1197/18 by ViCo were held in July 2021, without the consent of the Opponent. The Board considered the Opponents request that the proceedings should be postponed until they could be held in-person.   

The Opponent in T 1197/18 argued that the proceedings should be conducted in-person because the conditions specified by the EBA in G1/21 did not apply. The Opponent particular argued that, although there was still a general state of emergency in the form of the COVID-19 pandemic, this was not necessarily a "general state of emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises", as specified by the EBA order. The Opponent argued that it was clear from the wording of the EBA order that the decision was only intended to apply in situations where travel to the EPO was practically impossible or subject to quarantine. 

The Patentee had previously responded that they were impaired from travelling from Paris to Munich, noting the large number of flight cancellations and the uncertainty surrounding a surge in cases of the delta variant of COVID-19 in France and Germany. In response the Opponent noted that during the actual week of the hearing, flights between Munich and Paris had been available. The Opponent also noted that the Patentee's representative had, in fact, attended the EPO premises for a different case only a few days before for the ViCo hearing for T 1197/18. 

However, the Board of Appeal in the case (3.2.05) did not agree with the Opponent's narrow interpretation of the EBA order in G/21 of what constituted "a state of general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises". The Board found that "impaired" did not require in-person attendance to be impossible, merely that a party's ability to attend was "compromised". As such, the Board found that the Opponent's argument, that there had been flights the patentee could have taken, to be irrelevant (r. 1.2). What mattered was that the Patentee had faced difficulties in attending and that the Opponent had failed to show that these difficulties were not real. 

The Board of Appeal also found irrelevant the attendance of the Patentee at the EPO a few days before the ViCo oral proceedings. The Boards of Appeal, it was argued, could not be expected to continually monitor changes in the travel restrictions throughout Europe in order that ViCo proceedings might be converted to in-person proceedings. The Opponent's request that the proceedings be delayed until they could be held in-person was therefore refused. 

Final thoughts

Given the current state of the pandemic in Europe, and the difficulties in travel that persist, the decision in the Board of Appeal in T 1197/18 seems a fair outcome for the case in question. However, the decision does leave open the question of how broadly "impaired" should be construed. Would attendance at ViCo oral proceedings currently be considered "impaired" if, for example, all parties were based in Munich or Germany? 

The qualification in the EBA order that the decision only applies to states of general emergency "that impairs a parties possibility to attend in-person", also means that we are unlikely to have a clear cut-off date for the applicability of the order in G/21 (such as the end of the pandemic as determined by the WHO). Instead, the reasoning in T 1197/18 implies that the question of whether a party is impaired from attending the EPO in-person will be decided on a case-by-case basis. It also seems unlikely that a new referral to the EBA on whether mandatory ViCo oral proceedings are permitted post-pandemic will be considered before the pandemic is well and truly behind us. 

Further reading

18 January 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

29 March 2021: Chairman and Enlarged Board criticised for lack of impartiality in ViCo oral proceedings referral (G1/21)

21 May 2021: EPO responds to accusations of perceived bias in G1/21 (ViCo oral proceedings)

28 May 2021: Oral proceedings in G1/21 (ViCo) rescheduled due to procedural technicality

6 July 2021: ViCo oral proceedings on the legality of ViCo oral proceedings - G1/21, The Sequel

17 July 2021: EBA dodges the question in G1/21 (ViCo oral proceedings)