Applying G1/21 (ViCo oral proceedings): The real test is yet to come

At the tail end of last year, the Enlarged Board of Appeal (EBA) reached its decision in G 1/21 on the legality of mandatory video conferencing (ViCo) oral proceedings. The EBA found that the mandatory use of ViCo was appropriate during a state of general emergency impairing the parties' ability to attend in-person proceedings. So far, applying G 1/21 has been reasonably straightforward for the Boards of Appeal, given the rise of the Omicron variant and the consequent continued state of general emergency into 2022. However, the real test for G 1/21 is its implications for the continued use of ViCo oral proceedings in appeal cases post-pandemic. 

Cat on Zoom

Legal Background: ViCo oral proceedings are suboptimal

In 2021, the EPO introduced a new Rule of Procedure of the Boards of Appeal (RPBA), Article 15a. This new rule permits a Board of Appeal to hold oral proceedings by ViCo whenever "the Board considers it appropriate to do so". The continued use of mandatory ViCo oral proceedings sparked a referral to the EBA on the legality of the new provision, G 1/21.

Whilst the originally referred question related to the legality of mandatory ViCo oral proceedings in general, the EBA chose to reformulate the question such that it related only to the mandatory use of ViCo during "a general emergency impairing the parties' possibilities to attend in-person oral proceedings" (e.g. the COVID-19 pandemic).  In their decision, the EBA found that the mandatory use of ViCo during appeal hearings was permitted during a state of general emergency, as ViCo did not fall below the threshold required by the right to be heard (Article 113 EPC). Nonetheless, the EBA's decision also included some pointed remarks on the limitations of ViCo, and went so far to say that in-person proceedings should be preferred in the absence of a general state of emergency impairing the parties' ability to attend. 

Applying G 1/21

The EBA in G 1/21 found a clear distinction between normal times and a state of general emergency, in terms of whether the mandatory use of ViCo is appropriate. It was thus not long before Boards of Appeal were faced with determining what did and did not constitute "a general emergency impairing the parties' possibilities to attend in-person oral proceedings" (IPKat). 

A representative example of such a recent decision applying G 1/21 is that of T 1259/17. This appeal case related to a Procter & Gamble's patent (EP1712610) for laundry detergent. One of the opponents in the case requested that oral proceedings be held by ViCo in view of the impairment to travel caused by the COVID-19 pandemic. The patentee objected to the use of ViCo and instead requested that oral proceedings be delayed so that they could be held in-person.

Citing the reasoning in G 1/21 (Reasons 44), the Board of Appeal noted that, whilst suboptimal, the use of ViCo was "normally sufficient to comply with the principles of fairness of proceedings and the right to be heard". However, the Board of Appeal also interpreted the EBA decision in G 1/21 as providing that a party's request for in-person proceedings can only be denied if ViCo is a suitable format for a particular case and if there are circumstances affecting the parties' ability to attend (Reasons, point 1.4). Both parties had provided reasons as to why they could not attend proceedings (e.g. restrictions to travel and quarantine obligations). The question then became whether the ViCo format was suitable for the particular case. 

The patentee argued that the case at issue was highly complex, given that it involved multiple opponents and a large number of objections and cited documents, including experimental data. The Board of Appeal dismissed these arguments, finding that the number of documents and opponents did not make the use of ViCo inappropriate, noting that ViCo software (Zoom) could easily deal with multiple participants. The Board of Appeal even went so far to suggest that Zoom offered an improved experience, given that "it is even easier to look at multiple presenters as all of them are shown in frontal view", and that users "have the possibility of highlighting the speaker by individually choosing the 'speaker view' in Zoom".  

A factor that also clearly influenced the Board of Appeal decision in this case was the fact that oral proceedings had already been postponed four times, resulting in a delay of almost two years. The first instance decision dated back to 2017, more than 4 years before the scheduled ViCo oral proceedings. The Board of Appeal concluded that the use of ViCo oral proceedings was justified case (Reason, point 1.9). After the appeal hearing, the patent was revoked. 

Other decisions applying G 1/21 include T 0158/19, T 2817/19, T 1197/18 (IPKat), T 2030/18, T 1499/16, T 1870/16, T 2186/17, T 2474/17, T 0779/18. The Boards of Appeal in all of these decisions denied a party's request for in-person proceedings (and/or a postponement of proceedings) on the basis of the final order of the EBA in G 1/21. In an unexpected turn of events, however, the Board of Appeal in the very case from which the referral in G 1/21 arose (T 1807/15), chose to grant the parties their request for in-person proceedings. Importantly, a Board's power to require oral proceedings to be conducted by ViCo provided by Article 15a EBA is discretionary. Furthermore, in this case, in contrast to the other decisions applying G 1/21, both parties requested in-person proceedings in preference to ViCo. The Board agreed to these requests. Oral proceedings are scheduled to take place in Haar in December 2022. 

Final thoughts

As we approach spring 2022, we are finally beginning to see a gradual relaxation of COVID-19 related restrictions across Europe (the UK government for example has just announced plans to shortly remove all restrictions in England). The real test for G 1/21 is thus yet to come. How far will Boards of Appeal take their new power under Article 15a RPBA to hold oral proceedings at their own discretion? Once the state of general emergency has passed, should we expect another referral to the EBA on the unanswered question as to the legality of Article 15a RPBA, absent a state of general emergency? If the decision of the Board of Appeal in T 1807/15 is anything to go by, it may be that most Boards of Appeal will be perfectly willing to acquiesce to a party's request for in-person proceedings in most cases. The question will become how far the EPO wishes to push its digital strategy in this area, and how much pressure will be placed on the Boards to adopt widespread use of ViCo post-pandemic. 

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)

3 Sep 2021: Are parties still impaired from attending in-person proceedings? G1/21 (ViCo) applied by the Boards of Appeal (T 1197/18)

1 Nov 2021: EBA decision in G1/21 (ViCo): "In-person proceedings should be the default"

7 Dec 2021: EPO user survey: ViCo oral proceedings continue (to divide opinion)