BREAKING: In-person proceedings are still the "Gold Standard" - Boards of Appeal start to diverge on ViCo (T 2432/19)

A Board of Appeal decision published today (T 2432/19directly contradicts the previous decisions implementing G1/21. The Board of Appeal in T 2432/19 applies the clear direction from G1/21 that in-person proceedings should be the default in view of the inadequacies of current ViCo technology. In doing so, the Board of Appeal places itself in direct opposition to previous Boards of Appeal decisions having a more "dynamic" interpretation of G1/21. The decision in T 2432/19 also runs contrary to the view of EPO management, according to which ViCo oral proceedings are now to be considered the new "Gold Standard". 

ViCo oral proceedings catch-up

The mandatory use of ViCo oral proceedings, which was introduced in response to the travel restrictions caused by the COVID-19 pandemic, has now become a key component of the EPO's digital strategy. During the pandemic, the EPO also introduced new Article 15a of the Rules of Procedure of the Boards of Appeal (RPBA), under which Boards of Appeal have the discretion to hold proceedings by ViCo whenever they consider it appropriate to do so.

More lessons in legal fudge
from the EPO?

G1/21 considered the legality of mandatory ViCo oral proceedings under Article 15a RPBA. The EBA found that the mandatory use of ViCo was permissible during a state of general emergency impairing the parties' ability to attend in-person proceedings. However, it was also noted that in-person proceedings should nonetheless remain the "Gold-Standard" due to the inadequacies of ViCo technology (IPKat),

Following G1/21, the EPO was thus faced with the problem of reconciling their digital strategy with the clear stipulation from the EBA that in-person proceedings should remain the default absent a state of general emergency. Since the easing of the travel restrictions imposed by the pandemic, Boards of Appeal have had to find creative ways to reconcile the EPO's institutional cognitive dissonance on this issue. In a classic legal fudge, the Board of Appeals that have thus far implemented G1/21 have concluded that improvements to ViCo technology have effectively rendered G1/21 obsolete. According to these Boards, ViCo can now be considered equivalent to in-person proceedings (see for example T 1158/20 and T 0758/20) (IPKat).

Whilst the ViCo oral proceedings experience has undoubtedly improved, it is still a bit of a stretch to equate the quality of ViCo to that of in-person proceedings. It was therefore only a matter of time before a Board of Appeal disagreed with such a dynamic interpretation of G1/21.

T 2432/19 - ViCo and nappies

T 2432/19 related to the appeal of the Opposition Decision revoking EP2087873. The Patentee requested in their appeal that oral proceedings be held by ViCo. Contrary to the Patentee's request, the Board of Appeal summoned the parties to in-person oral proceedings in Haar. In its decision, the Board of Appeal considered the issue of G1/21 and its implementation

The Board of Appeal in T 2432/19 acknowledged that G1/21 was largely directed to the situation under a state of general emergency (such as the pandemic). However, the Board of Appeal considered the general reasoning provided in G1/21 as directly applicable to the general right for oral proceedings provided in the EPC. The Board of Appeal particularly found that the statements in G1/21 relating to the inadequacies of ViCo "established general criteria which need to be taken into account for the denial of a request for in-person oral proceedings", and that these criteria clearly applied "not only to a situation of general emergency, but are valid also in non-emergency times". The Board of Appeal's view in T 2432/19 is thus directly contrary to that taken in T 0758/20, in which the reasoning in G1/21 was found to be irrelevant to the use of ViCo outside a state of general emergency (IPKat). 

The Board of Appeal in T 2432/19 then proceeded to reference the clear direction from G1/21 that "in-person oral proceedings are the optimum format" (IPKat). In view of the finding in G1/21 that ViCo proceedings are sub-optimal, the Board of Appeal concluded that absent the narrowly defined circumstances of a state of general emergency it is "hardly justifiable" to deny parties the right to in-person oral proceedings" (r. 1.9.2):

"Due to the fact that videoconferences, at least according to current technology, can only provide a suboptimal form of communication, parties have a right to the optimum format for oral proceedings, i.e. in-person oral proceedings, that can only be denied under very limited conditions."

The Board of Appeal also disagreed with the finding of previous decisions that ViCo technology had improved sufficiently to render the reasoning in G1/21 obsolete: 

"the Board cannot recognise any improvements that can be said to provide the level of communication which is possible when all participants are physically present in the same room [...] the parties rely on the same kind of hardware and software as were available at the time of G 1/21, i.e. the picture and sound quality is basically the same. The Board cannot recognize any significant improvement in the oral or visual level of communication between the parties that would result, for example, in an increased "immediacy" to the level of oral proceedings in person. The technological developments in telecommunications which may bring about this level of communication are still awaited...The advantages of the gold standard thus remain as they were at the time of decision G 1/21.

The Board of Appeal thus concluded by directly rejecting the position that ViCo oral proceedings should be considered the new "Gold Standard". The Board of Appeal further noted that a Board of Appeal cannot be forced to hold oral proceedings by ViCo solely because this is requested by one of the parties. The Board of Appeal therefore proceeded to retain an in-person format for the proceedings in the case in question. 

Final thoughts

It is important not to conflate the controversy surrounding the correct interpretation of G1/21 with the question of the benefits or otherwise of ViCo. The question at issue in G1/21 was not whether Boards of Appeal may hold oral proceedings by ViCo, but whether Boards of Appeal may hold proceedings by ViCo without the consent of both parties. 

Instead, the decisions from the Boards of Appeal implementing G1/21 raise questions over the extent to which Boards of Appeal may use "dynamic interpretation" to ignore an unequivocal finding of the EBA. Given the explicit rejection of G1/21 in the earlier decisions, it is unsurprising that we now have a contrary decision in the form of T 2432/19. Where does the EPO and its new "Gold Standard" go from here? 

Further reading

Lessons in legal fudge from the EBA in Pepper (G3/19) (19 May 2020)

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

Board of Appeal finds ViCo is now equivalent to in-person proceedings, and that G 1/21 "gold-standard" no longer applies (T 1158/20) (6 March 2023)

ViCo oral proceedings: True gold or fool's gold? (T 0758/20) (17 April 2023)

BREAKING: In-person proceedings are still the "Gold Standard" - Boards of Appeal start to diverge on ViCo (T 2432/19) BREAKING: In-person proceedings are still the "Gold Standard" - Boards of Appeal start to diverge on ViCo (T 2432/19) Reviewed by Rose Hughes on Tuesday, May 09, 2023 Rating: 5

15 comments:

  1. What's good for the goose is good for the ganderTuesday 9 May 2023 at 17:11:00 GMT+1

    The EBA in G 3/19 provided a dynamic interpretation of Article 53(b) EPC. If the EBA was willing to show such contempt for the rule of law, it cannot come as a surprise that TBA's also show such contempt for the rule of law. It is manifest that the structure of the EPO and the BoAs does not provide adequate checks and balances. It is applaudable that the TBA in T 2432/19 dared to give what the EPO management would surely consider the wrong answer.

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  2. Yes, it can go worse! See T 618/21.

    It has to be specified that T 2432/19 is in direct opposition not only with T 758/20 and T 1158/20 but also to T 618/21 from the same chair and rapporteur.

    https://www.epo.org/law-practice/case-law-appeals/recent/t210618du1.html

    in this decision the board claimed that Art 15aRPBA20 is not in contradiction with G 1/21 and it reiterated its view that OP by ViCo are now equivalent to in-person OP, thereby superbly ignoring Art 21 RPBBA20.

    In this decision, the board further considered that OP by ViCo allows the parties to participate in the OP from their regular place of work. This avoids the need to travel to and from the BA’s premises.

    This also allows the parties to spend the travel time that would otherwise be required more wisely. It also allows the parties to save the costs of travel and any necessary overnight accommodation. It can also prevent the means of transport used for the journey from causing environmental damage. Furthermore, unnecessary CO2 emissions can also be prevented.

    It is touching to see how the board is worried about the environment and the correct use of their time by the parties. I fail to see any reference to such considerations in G 1/21. T 618/21 is thus more than a mere dynamic interpretation of G 1/21 as it brings forward arguments not at all found in G 1/21. It is clear that the own convenience of the board plays a major role when deciding on OP by ViCo.

    ReplyDelete
  3. It is interesting to note that the same board has already ignored a decision of the EBA. In T 1731/20, it allowed a correction of the name of the appellant, a man of straw, well beyond the time limit set in G 1/12.

    https://www.epo.org/law-practice/case-law-appeals/recent/t201371eu1.html

    By accepting the correction under R 139, it considered the auxiliary request for re-establishment to be moot and not needing to be decided. This was also very convenient for the board.

    According to reasons 1.5, the corresponding fee will be reimbursed to the appellant (opponent). There is however no trace in the order of a reimbursement of the fee for re-establishment.

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  4. Where does the EPO and its new "Gold Standard" go from here? A good question.

    The EPO's direction of travel is already clear. One need only consider, for example, the Decisions of the EPO President for first instance proceedings (making VICO the default in all but exceptional cases) and the rather limited space allocated to the Boards once they relocate to central Munich.

    So will this be the case of a clash between an irresistible force (the EPO's direction of travel) and an immovable object (the rule of law, as enforced by the Boards, and the EBA in particular)? If so, my money is on the irresistible force. I have studied the form of the immovable object and am starting to suspect that they can sometimes be persuaded to take a dive.

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  5. Talking about "Gold" standards, lt's face it: for the Patent Office in any given jurisdiction to create any "Gold Standard" of jurisprudence is an affront to the community of lawyers and jurists who make their living in the world of litigation before the courts. Always has been. Since 1978. Who does the EPO think it is, they cry? The courts, and NOT the Patent Office, should make the law.

    But at last it's now "Pay Back Time" isn't it?

    We have seen how effective the powerful litigation community have been, in recent years, to force through the UPC. Now all that remains to be done is to destroy the reputation of the EPO as a reliable creator of the law of patent validity. One way to do that is to generate G Decisions which the Boards then proceed to disparage. Another way is to generate disagreements between TBA's. That old adage "If you can't beat them, join them" applies to a lot of people inside the EPO, it seems to me.

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  6. Did anybody realize that the WHO declared COVID-19 an established and ongoing health issue which no longer constritutes a public health emergency of international concern? https://www.who.int/news/item/05-05-2023-statement-on-the-fifteenth-meeting-of-the-international-health-regulations-(2005)-emergency-committee-regarding-the-coronavirus-disease-(covid-19)-pandemic?gclid=EAIaIQobChMI-7-viZnt_gIVFfbVCh2cHQhLEAAYASABEgI6vfD_BwE
    To my knowledge, none of the EPC member states regards COVID-19 as an emergy situation anymore. So why do we practioners not use this argument if we want to appear in person?

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    Replies
    1. Nice try. The "pro-VICO" Boards already have an answer to that kind of argument: see, for example T 0758/20.

      At the EPO, it seems, VICO proceedings are like the Borg. Resistance is futile.

      Delete
    2. @ Proof of the pudding

      T 758/20 stems from the same chair and rapporteur as in T 1158/20, both scheduled for the end of November 2022. The odd thing is that the same chair and rapporteur accepted to hold in person OP at the beginning of November 2022, cf. T 996/20.

      The same applies to T 618/21. In this decision the board has introduced notions of sustainability and carbon footprint, which, in themselves, are very honourable, but of which there is no trace in G 1/21. It also considered that, not having to travel, the parties could use their time more wisely. I don't think the RPBA ever gave a board the discretion to decide how the parties should use their time.

      The conclusion that the form of OP is merely depending of the own convenience of the board is therefore difficult to dismiss.

      Delete
  7. @ Anonymous of Wednesday, 10 May 2023 at 09:18:00 GMT

    That in common law countries only the courts can define a gold standard is not at stake. However, besides the UK and Ireland no member state of the EPC is a common law country. The BA and the EBA are acting like courts of last instance. What would then withhold them to define gold standards? Such apodictic views about the EPO are not necessarily useful.

    It is indeed a pity that the upper management of the EPO appears to have its fingers in the pie of the BA/EBA. G 2/19, G 3/19 and G 1/21 are highly political decisions which actually help the upper management of the EPO.

    Being confronted with opposing decisions in procedural matters is nothing to be happy about. As far a procedure is concerned, filing an appeal has become a lottery. It is already the case when it comes to deleting or combining claims. Users of the EPO do not need another procedural battlefield.

    For the UPC wait and see. The saga of the withdrawal of the UK and its consequences is not yet finished. Just one comment: the UPCA has not foreseen an exit clause and the VCLT applies….. And the AC should amend the UPCA at 8.00 when the UPC opens its doors on the same day at 9.00?

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  8. The divide within the Boards of Appeal over oral proceedings by Vico is seriously concerning not only because BA 3.2.01 openly defies the EBA by violating G 1/21 for the third time in a very short span, but also because this Board’s position that Vico can be imposed against the will of a party is supported both by the President of the EBA, who was disallowed to chair the panel of G 1/21 for justified fear of partiality of bias under Article 24, and by the management of the EPO, eager to make permanent and general the homeworking regime made temporarily necessary by Covid, and reduce the space of EPO premises.

    A party having a case assigned to BA 3.2.01 and concerned that this compromises their right to in-person OP may still raise an objection for fear of partiality under Article 24 and request that their case be assigned to another BA. And why not, publicise this request.


    ReplyDelete
  9. The divide within the Boards of Appeal over oral proceedings by Vico is seriously concerning not only because BA 3.2.01 openly defies the EBA by violating G 1/21 for the third time in a very short span, but also because this Board’s position that Vico can be imposed against the will of a party is supported both by the President of the EBA, who was disallowed to chair the panel of G 1/21 for justified fear of partiality of bias under Article 24, and by the management of the EPO, eager to make permanent and general the homeworking regime made temporarily necessary by Covid, and reduce the space of EPO premises.

    A party having a case assigned to BA 3.2.01 and concerned that this compromises their right to in-person OP may still raise an objection for fear of partiality under Article 24 and request that their case be assigned to another BA. And why not, publicise this request.

    ReplyDelete
    Replies
    1. A good question about objections under Article 24 EPC. Indeed, that question is highly pertinent to every petition for review that, at least in part, is based upon the imposition of VICO as the format for oral proceedings. And yet the President of the Boards has no problem appointing himself to the EBA in respect of such petitions. For example, see the composition of the EBA for R12/22, which has not changed since it was first set almost 1 year ago:
      https://register.epo.org/application?number=EP12766592&lng=en&tab=doclist

      Arguably, the participation of the President as a member of the EBA for cases concerning the validity and/or interpretation of Art 15a RPBA falls foul of Article 24(1) EPC. It is a shame that the EBA in G 1/21 failed to consider that point. However, given that the President was excluded under Article 24(3) EPC from EBA for G 1/21, there is no doubt that, for the same reasons, he MUST be excluded from all other cases concerning Art 15a RPBA. Any other outcome would cause (yet more) serious damage to the perception of independence of the EBA.

      Delete
    2. The damage has been done.

      Delete
    3. Referral to the EBA in 3, 2, 1, .... never.
      As we will never see a referral for the question if and if so, how the description is to be amended if the claims have been amended during examination.

      Because the Office, with the president at the top, probably have set very strict guidelines on this matter. Any risk of the EBA identifying such guidelines as conflicting with the Convention is to be mitigated. So the president will not refer. And every member of the boards knows that if they will ever refer to the EBA, they will not be proposed again as board member after five years. EUR 25k a month is a lot to sacrifice for principles...

      As a result, applicants, proprietors, opponents will remain in doubt what to do as patent attorneys cannot properly advise their clients due to this divide among boards and between Office and boards. Which goes to the detriment of the Office and the European patent system.

      sic transit gloria mundi (Europae)

      Delete
  10. @proof of the pudding
    Your suggestion to preemptively include in any petition dealing with Vico a request to exclude the chair of the BA from EBA panels must be considered. It could even be generalised so that the chair of the BA is 100 % exempted of acting as a judge and can focus on his/her
    managerial duties.

    ReplyDelete

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