According to even the most recent decisions from the Boards of Appeal of the EPO, we are still in a state of general emergency justifying holding oral proceedings by ViCo without the consent of all parties. However, as the heightened threat of COVID-19 slowly diminishes, the Boards' justifications for continuing to enforce ViCo proceedings on users without their consent are becoming increasingly tenuous.
Legal Background: ViCo oral proceedings
Article 15a RPBA 2020, which entered into force on 1 April 2021, explicitly provides that a Board may hold oral proceedings whenever it considers it appropriate to do so (IPKat). In G 1/21, the EBA provided a lukewarm and heavily caveated acceptance of new Article 15a RPBA 2020 (IPKat). The EBA particularly established that holding oral proceedings by ViCo is acceptable during a state of general emergency impairing the parties' ability to attend proceedings in-person. However, the EBA also observed that the current standard of ViCo technology is suboptimal. As such, in-person proceedings should be the default form of proceedings in the absence of special circumstances such as travel restrictions imposed during a global pandemic.
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Implementation of G1/21
T 2791/19 related to an appeal of the decision to maintain the patent as granted. The appellant requested that oral proceedings be held in-person and not by ViCo. The appellant argued that the pandemic no longer constituted a state of general emergency impairing the parties' ability to attend proceedings in-person. The appellant further argued that COVID-19 should now be regarded as a general life risk. The appellant also pointed out that there were no longer any significant restrictions on travel to the EPO.
The Board of Appeal rejected the request for in-person proceedings, and proceedings were held by ViCo without the appellant's consent on 26 July 2022. The Board of Appeal argued that the risk of COVID-19 infection in the Munich Region was still high enough such that the special circumstances outlined in G1/21 still applied:
"From the board's point of view, this risk constituted an obstacle that objectively prevents a party from attending oral proceedings in person at the EPO's premises [...] [C]ontrary to the complainant's assertion, an infection with the coronavirus cannot be regarded as a harmless disease, but on the one hand can result in a lengthy loss of work for the sick person. On the other hand, serious, sometimes even life-threatening courses cannot be ruled out - even if the representative of the opponent is not aware of any such cases in his personal environment." (machine translation).
When will the general emergency end?
The decision in G1/21 amounted to an invitation to Boards of Appeals and disgruntled parties to argue at length on whether there is still "a general emergency impairing the parties' possibilities to attend in-person oral proceedings". In this regard, the Boards of Appeal have adopted an increasingly broad definition of "general emergency" (T 2817/19, T 2791/19, T 2526/19, T 250/19). Even in the absence of specific travel restrictions, Boards of Appeal point to the impossibility of predicting whether there might be future restrictions by time of the scheduled date of proceedings (T 2817/19).
There is a clear tension between the decision of the EBA in G1/21 that in-person proceedings are the gold standard, and the EPO's obvious desire to hold more proceedings by ViCo. According to the Annual Report of the Boards of Appeal 2021, an "impressive" 76% of oral proceedings were held by ViCo in 2021. No statistics are provided on how many of these proceedings were held by ViCo without the consent of all the parties.
The EPO has indicated that there will be a user consultation in Autumn 2022 on how new Article 15a RPBA 2020 is operating in practice, although the EPO has been known to sugar-coat the results of similar consultations rather than address user's concerns. Nonetheless, when it comes to direct requests for in-person proceedings from appellants, the Boards of Appeal will not be able to avoid the guidance of G1/21 forever.
Further reading
- The inexorable rise of EPO oral proceedings by video conference (18 Jan 2021)
- The legality of Board of Appeal oral proceedings by video conference has been referred to the EBA (9 Feb 2021)
- Board of Appeal in T1807/15 continues with ViCo oral proceedings referral (16 March 2021)
- Chairman and Enlarged Board criticised for lack of impartiality in ViCo oral proceedings referral (G1/21) (29 March 2021)
- EPO responds to accusations of perceived bias in G1/21 (ViCo oral proceedings) (21 May 2021)
- Oral proceedings in G1/21 (ViCo) rescheduled due to procedural technicality (28 May 2021)
- ViCo oral proceedings on the legality of ViCo oral proceedings - G1/21, The Sequel (6 July 2021)
- EBA dodges the question in G1/21 (ViCo oral proceedings) (17 July 2021)
- Are parties still impaired from attending in-person proceedings? G1/21 (ViCo) applied by the Boards of Appeal (T 1197/18) (3 Sep 2021)
- EBA decision in G1/21 (ViCo): "In-person proceedings should be the default" (1 Nov 2021)
- EPO user survey: ViCo oral proceedings continue (to divide opinion) (7 Dec 2021)
- Applying G1/21 (ViCo oral proceedings): The real test is yet to come (23 Feb 2022)
Reviewed by Rose Hughes
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Monday, August 15, 2022
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Posts
in a recent comment on my blog, I dealt with T 2791/19.
ReplyDeletehttps://blog.ipappify.de/t-2791-19-op-in-july-2022-held-in-form-of-a-vico-against-the-wish-of-the-opponent-is-this-reasonable-diverging-case-law-in-matters-of-form-of-an-op/
In the comments I suggested two ways of dealing with the problem:
- Establish a mechanism by which, the EPO in general and the BA in particular, aligns itself with the sanitary requirements in places where the EPO has offices
- Revise Art 15a(1) to bring it in line with the reasons given in G 1/21.
The RPBA20 have given the boards a great amount of discretion. The discretion in matters of OP should not end up with decisions going into different directions as it is already the case with deletion of claims or combination of claims as granted.
Discretion or not, it cannot be that a board decides on its own sanitary standard.This is not an acceptable situation.
In that Art 116 does not distinguish between OP before the first instance and before the boards, what applies to the boards should also apply to the first instance.
The choice of the form of OP should be left to the parties and not to the EPO or the boards.
Exceptions in case of a “general emergency” (whatever that means) impairing the parties to assist at in-person OP are however perfectly acceptable.
Regarding the upcoming consultation:
ReplyDeleteI note that after every Oral Proceedings before the Examining Division I am asked whether the ViCo has proceeded acceptably. I always reply yes, but with the caveat that I have never attended Oral Proceedings in person and therefore have nothing to compare it to. It is my prediction that the EPO will use this type of "data" to conclude that there is no problem with holding Oral Proceedings via ViCo. However, for many cases, particularly high value cases, I (and my clients) would prefer to attend in person. Do we not have data from the many schools and universities that moved classes online during the pandemic that ViCo presents a not insignificant barrier to teaching? Many times, Oral Proceedings have an element of attempting to "teach" the Examining Division about the invention. If this is leading to an increased refusal rate (and I would like to see these statistics as well), then in my opinion an in-person Hearing should always be available to the Applicant, except in genuine emergency situations.
The "reasoning" of the Board in this case is not just unconvincing, it is laughably so.
ReplyDeleteIn a nutshell, the only "impediment" to the in-person attendance of parties was the Board's view on the relative risk of infection. Strikingly absent from the Board's reasoning is any attempt to explain why that risk objectively constitutes a "general emergency" situation.
Still, looking at the conditions imposed by the Boards on in-person attendees (https://www.epo.org/law-practice/case-law-appeals/communications/2022/20220719.html), it is hard to escape the conclusion that, in EPOnia, the only factor that really counts towards whether in-person proceedings can be conducted is the view of the EPO's senior management on the extent to which it is prepared to relinquish the power to impose the use of VICOs (or at least to throw up as many practical hurdles as possible for parties wishing to attend in-person proceedings).
It was always clear to me that the EPO's senior management would seek out excuses for avoiding a proper implementation of the interpretation of Art 116 EPC set out in G1/21. I just did not expect that their excuses would be so pathetic.
I wonder if we will still be able to request OPs in person with a valid reason. I wonder how many would request OPs in person because they wish to use a flip chart!
ReplyDeleteIt is interesting to compare the EPO's continued insistence upon rather strict measures for combating the spread of COVID-19 with the much more relaxed approach adopted by national courts, such as those in the UK:
ReplyDeletehttps://www.gov.uk/guidance/courts-and-tribunals-living-with-covid-19#coming-to-a-court-or-tribunal
Compared to the national courts, the EPO appears to be an outlier, at least with regard to the requirement for in-person attendees to present a negative COVID-19 test. So why did the EPO decide to adopt such an exceptionally cautious approach?
Especially for the vaccinated, the (relative) risks posed by COVID-19 have substantially declined since the EBA's decision in G 1/21. The remaining risks can be further reduced by the use of effective ventilation and social distancing. So long as this trend (of declining risk) continues, there will come a time when there will be absolutely no objective justification whatsoever for the EPO's current restrictions upon in-person attendance at OPs. Indeed, it is possible that the time has already arrived.
But when the time comes, will the EPO either drop or relax its measures against COVID-19? If not, could those measures be challenged as disguised impediments to the exercise of the right to in-person oral proceedings?
There may well be personal issues behind decisions of individual boards to hold oral proceedings by ViCo which are not disclosed in the decision. For example, a board member may have a medical condition or live with a person having a medical condition such that they consider that the risk of exposure to the virus should be minimised as far as possible. The fact that the representatives are prepared to accept the risk should not be a determining factor.
ReplyDeleteKant, I have no doubt that you are correct. However, is it an acceptable situation where a request for in-person OPs is either granted or denied, depending upon no factor other than the identity of the individuals selected to form the Board for an appeal?
DeleteAlso, in connection with requests for in-person OPs, would not Art 24(1) EPC apply to all "vulnerable" Board members who, quite understandably, would have a personal interest in denying all such requests?
Remember that, in G 1/21, the EBA emphasised that "It is the EPO’s responsibility to make available the necessary resources for facilitating the conduct of proceedings provided for in the EPC". Would this not point to a need for "vulnerable" Board members to self-recuse (or to be replaced) in cases where a party requests in-person proceedings?
Kant, I should also point out that it is hardly in keeping with the rule of law for a key factor affecting a decision of a Board of Appeal to not be fully explained in the Board's written decision. Any such decision would clearly lack adequate (ie full and frank) reasoning.
DeleteViCos have levelled the playing field that unfairly benefitted Munich since the EPO opened its doors. Long may they continue.
ReplyDeleteSo, in essence, your argument is that compulsory VICOs are a "good" thing because they are commercially beneficial to patent attorney firms that are located a substantial distance away from Munich?
DeleteForgive me, but that is hardly the most compelling argument when the topic under discussion is whether the Boards of Appeal are correctly interpreting (the EBA's ruling regarding) Art 116 EPC. You may as well be arguing that conducting in-person OPs in London would be perfectly acceptable under Art 116 EPC ... because doing so would be financially beneficial to London-based patent attorney firms. The relevance of your argument to the underlying legal principles would be no different in such a case.
Levelling the playing field is a good idea in principle. I just happen to think that it is not an end that justifies the use of any means, and particularly not means that involve trampling over the rule of law.