We are now many years on from the pandemic conditions that initially led to the introduction of oral proceedings by video conferencing for Board of Appeal cases. But what happened to the "Gold Standard" of in-person proceedings promised by the EBA in G 1/21?
Legal Background: ViCo oral proceedings
The COVID-19 pandemic now seems like a bad dream. The pre-pandemic days requiring multiday trips for even examination division oral proceedings are also now a hazy memory. However, to understand its implementation, it is important to remember how the unprecedented shift to ViCo oral proceedings occurred.
In order to keep the important wheels of justice turning during the pandemic, the EPO introduced mandatory ViCo oral proceedings for all departments. However, this move was not without controversy. The backlash against mandatory ViCo oral proceedings eventually led to the referral G 1/21 relating to the legality of the new format for Board of Appeal cases. In its decision, the EBA ordered that during a state of general emergency, ViCo oral proceedings were compatible with the EPC even without the consent of the parties. Following G 1/21, the EPO introduced Article 15a of the Rules of Procedure of the Boards of Appeal (RPBA), granting the Boards discretion to hold proceedings by ViCo whenever they consider it "appropriate to do so".
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| Vico oral proceedings |
However, a look at the detailed reasoning revealed that the EBA had not given the EPO carte blanche to continue with ViCo oral proceedings post-pandemic. Instead, the EBA (in)famously remarked that in-person proceedings should remain the "Gold Standard" and the default option absent a state of general emergency.
In the wake of G 1/21, there thus appeared to be a clear tension between the "Gold Standard" reasoning of G 1/21 and the EPO's self-proclaimed digital strategy, central to which was the new availability of the ViCo format for Board of Appeal oral proceedings. Several Boards of Appeal squared the circle by finding that technology had improved so drastically in the few short months since G 1/21 that the "Gold Standard" reasoning had effectively become obsolete, see T 1158/20 (IPKat) and T 0758/20 (IPKat). Other Boards of Appeal rejected this dynamic interpretation of G 1/21, finding that in-person proceedings should remain the default (T 1501/20, IPKat).
With the pandemic now a distant memory, what has become of the Gold Standard of G 1/21? A look at the recent case law highlights some ongoing divergence in approach from different Boards of Appeal. The decisions can be broadly categorised into those embracing "the new digital reality" and those still faithful to the Gold Standard.
The "new normal"? ViCo as the default
The Boards of Appeal appear more than happy to exercise their discretion under Article 15a RPBA to order ViCo proceedings. These Boards place a significant burden on the party requesting an in-person hearing to justify why screens are insufficient.
In T 0745/23, after the Board of Appeal initially summoned the parties to in-person proceedings, the Patentee requested a switch to ViCo, citing environmental benefits and cost reductions. The Opponent objected, arguing that in-person proceedings were the optimum form and that G 1/21 dictated they should be the default absent pandemic measures. They further requested a referral to the EBA regarding the legality of Article 15a RPBA outside of an emergency.
The Board of Appeal refused the referral and ordered ViCo proceedings. In its reasoning, the Board stated that Article 15a RPBA provides a broad discretion not limited to pandemics. The Board noted that the Opponent had failed to provide any specific, objective reasons why this particular case was unsuitable for ViCo. The Patentee, conversely, had provided valid reasons regarding sustainability and efficiency. The Board found that: "the suitability and appropriateness of the format [...] is not the only criterion adopted in the exercise of discretion".
For the Board of Appeal, subjective reasons and the perception of the parties mattered. Since the Opponent could not point to any specific disadvantage, such as a lack of technical equipment or complex physical evidence, the Board felt justified in deviating from the "Gold Standard".
A similar approach was followed by the Board of Appeal in T 1523/23. In this appeal, the Opponent requested that the decision of the Opposition Division be set aside and the case remitted, solely because the Opposition Division had held oral proceedings by ViCo against the Opponent's will. The Opponent argued this infringed their right to be heard, relying heavily on G 1/21.
The Board of Appeal was entirely unpersuaded by this argument. It held that holding oral proceedings by ViCo does not, in itself, infringe the right to be heard. Citing G 1/21, the Board reminded the parties that the Enlarged Board had found ViCo to be a "suitable format" that does not inherently impair fair proceedings. Again, the Board of Appeal found that the Opponent had failed to demonstrate any specific detriment caused by the format in the proceedings below. Consequently, the Board of Appeal found no fundamental deficiency that would warrant a remittal on this basis.
Another case that followed similar reasoning was the Petition for Review decision R 7/22. The Petitioner (the Patentee) claimed a fundamental procedural defect because the Board of Appeal had changed the format to ViCo without sufficient reasoning, which they argued was arbitrary and a violation of Article 113 EPC. The EBA dismissed the petition as manifestly unfounded. In particular, the EBA reiterated its reasoning from G 1/21 that ViCo is generally compatible with the right to be heard. The EBA further noted that unless a party can show they were unable to present their case due to technical failures, and had raised a complaint at the time, there is no violation. A mere preference for in-person interaction was not, for the EBA, enough to ground a petition for review.
Clinging to the Gold Standard
However, not all Boards of Appeal are not fully in harmony. A discordant note was struck in T 2609/22. In this case, the Opponent requested ViCo, citing the United Nations Sustainable Development Goals (SDGs), specifically Goal 13 on Climate Action. The Patentee objected and requested in-person proceedings.
However, the Board of Appeal in this case refused the request for ViCo. The Board relied explicitly on the "Gold Standard" reasoning of G 1/21, stating that where a party requests in-person proceedings, there must be "circumstances specific to the case which justify a different format". The Board held that general arguments about UN SDGs were not specific to the case at hand. Consequently, the Board could see "no good reason to force the proprietor to attend the oral proceedings via videoconference". T 2609/22 nonetheless appears to be an outlier.
Hybrid hearings: The worst of all worlds?
A middle ground was found in T 0939/23. In this case, the Opponent requested ViCo for cost and environmental reasons, whilst the Patentee preferred in-person. The Board of Appeal solved this conundrum by ordering mixed-mode oral proceedings. The Board stated that the leading criterion for exercising its discretion was "offering the respective party the opportunity to be heard in the oral proceedings format of their choice". By allowing the Patentee to come to Munich and the Opponent to stay home, the Board felt that equal treatment was respected, as each party made a deliberate choice with full awareness of the implications. The appeal was dismissed, but the procedural handling offers a potential template for resolving future impasses. On the other hand, hybrid hearings are perhaps the most controversial format of all, in view of the argument it creates an unequal footing for the parties (a view that CIPA has been quite vocal about, see IPKat).
Final thoughts
It appears that the "Gold Standard" of G 1/21 is therefore (mostly) quietly being forgotten. The clear trend across the majority of these decisions is that the Boards of Appeal are increasingly comfortable with ViCo as the default operational mode, regardless of the "emergency" status of the world.
Nonetheless there remains some residual divergence between Boards of Appeal such as that in T 0745/23, where general sustainability arguments for ViCo were accepted and those decisions such as T 2609/22 where general sustainability arguments for ViCo were rejected. It highlights that the "discretion" under Article 15a RPBA is being applied somewhat inconsistently. The mixed-mode approach of T 0939/23 is unlikely to be a popular compromise.
The question also remains, what do parties actually prefer? There was a cynical view that patentees could be generally expected to be in favour of in-person proceedings (as the most likely to prolong proceedings to their advantage). However, curiously, the opposite was actually the case in the referring case to G 1/21, in which the patentee was the party requesting ViCo proceedings. To this Kat, the (financial) importance of the case is one of the factors most likely to influence a party's preference. One does not want to be forced to justify to a client in the US why one did not think it necessary to take the trip to Munich to defend a patent in the wake of a surprise loss. This consideration applies doubly to hybrid proceedings...On the other hand, ViCo oral proceedings have the substantial advantage of allowing clients from far afield to observe proceedings whilst also significantly reducing costs for cash-strapped clients.
It is difficult to know where the line should be drawn with respect to mandatory ViCo oral proceedings when there is a disagreement between the parties. Are the Boards of Appeal striking the right balance? What do readers think?
Further reading
- EBA decision in G 1/21 (ViCo): "In-person proceedings should be the default"(Nov 2021)
- Latest EPO user survey on ViCo oral proceedings (Nov 2022)
- 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) (March 2023)
- ViCo oral proceedings: True gold or fool's gold? (T 0758/20) (April 2023)
- In-person proceedings are still the "Gold Standard" - Boards of Appeal start to diverge on ViCo (May 2023)
- Keeping a digital poker face: Assessing witness credibility in the ViCo age (T 423/22) (Jun 2023)
- Boards of Appeal confirm lack of legal basis for mandatory ViCo proceedings absent a state of general emergency (T 1501/20) (Aug 2023)
Reviewed by Dr Rose Hughes
on
Tuesday, December 09, 2025
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Posts
Let's play spot the difference!
ReplyDeleteG1/21, Reasons 43:
"All in all, the Enlarged Board considers that the limitations currently inherent in the use of video technology can make it suboptimal as a format for oral proceedings, either objectively or in the perception of the participants, but normally not to such a degree that a party’s right to be heard or right to fair proceedings is seriously impaired".
Reasons 2.5 of T1523/23:
"The Enlarged Board of Appeal considered that, while suboptimal, oral proceedings by videoconference as such do not impair the right to be heard and the right to fair proceedings (Reasons 40 and 43). A videoconference is a suitable format for oral proceedings (Reasons 48). A violation of the right to be heard may nevertheless occur in individual cases (Reasons 43). However, it is clear that the Enlarged Board of Appeal did not regard the format of a videoconference as such to constitute a violation of the right to be heard".
The difference is, of course, the omission of the qualifier ("seriously") used by the EBA. This poses a number of questions.
Is the qualifier inserted by the EBA in Reasons 43 significant to the meaning of the ruling in G 1/21?
Is the Board of Appeal entitled to interpret the ruling in G 1/21 by effectively reading Reasons 43 in a manner that omits the qualifier inserted by the EBA?
Even if arguably permissible, does the Board's reading of Reasons 43 of G 1/21 overcome the need to demonstrate:
- "good reasons" (Reasons 50 of G1/21); and
- "circumstances specific to the case that justify the decision not to hold the oral proceedings in person" (Reasons 49 of G1/21)?
Even if it does overcome that hurdle, does the Board's reading of Reasons 43 of G 1/21 justify a reversal of the burden of proof (such that those objecting to VICO now required to demonstrate case-specific "good reasons" for not using the VICO format)?
The answer to the first question is a very clear "yes". Not seriously impairing means that there is impairment. This clearly ties to the EBA's comments about the optimum format for OPs, as well as the need to have "good reasons" which justify the impairment (to a party’s right to be heard or right to fair proceedings).
This means that the answers to the second question is a clear "no". The same applies to the third and fourth questions. Which all gives rise to a final question: absent a further referral to the EBA (from a Board of Appeal which actually gives a fig about its obligations under Art 21 RPBA), what is to prevent the principles evident in the ruling in G 1/21 being more honoured in the breach than the observance?
Apart from the interesting legal discussion (thanks Rose and pudding for that), it is my personal view that VICOs are cheaper, better for the environment, allow clients more easily to attend OP and do not impair the right to fair proceedings (neither seriously nor non-seriously). All the VICOs I attended took any connection issue very seriously and have not been a deterioration in any aspect compared to the OP I attended pre-COVID.
ReplyDeleteWhen you have the Enlarged Board summoning parties to oral proceedings via video conference, see R 16/23, then the importance of the word 'substantially' is probably rather low in their eyes.
ReplyDeleteKant, might I suggest that this could have something to do with the absence of external legal members on the Enlarged Board in a composition according to Rule 109 EPC? It certainly has nothing to do with any kind of logical analysis / interpretation of G 1/21.
DeleteArguments against Vico are just raging against the dying of the light. In 5 years time people won't even believe this was an issue. The world has moved on. EPO case law has turned first and second instance into a completely written procedure, as ambushing is no longer possible. At oral proceedings the parties just quote from whatever was previously filed in writing (and if they go beyond this they are in trouble), and so I believe most contentious oral proceedings are just a waste of time now. Advocacy is a skill that patent attorneys don't need any more, and that is a good thing because decisions should be made on novelty, inventive step, etc and not the dramatic performance on the day. It's been fun, but time to be more like accountants now and be quietely efficient in writing.
ReplyDeleteWell, then I guess that it is also now time to amend the EPC to change it to match how it is currently being (mis)interpreted.
DeleteVICOs can be OK, and can even have certain (relative) advantages. They are just not quite the same as in-person proceedings. Frankly, they are a bit of a pale imitation.
I do know precisely the moment that I can be persuaded that those advocating strongly for VICO are doing so for completely unbiased reasons (ie reasons having nothing to do with self-interest). That moment will be when those same attorneys agree to conduct all of their business development activities by VICO, on the grounds of equivalence between VICO and in-person meetings.
I really have not noticed any drop-off whatsoever in the number of attorneys attending in-person events that are important for business development. I can therefore conclude that it will be some time yet before I am persuaded that there is nothing wrong parties being denied their right to in-person proceedings.
Thank you Proof of the Pudding. Some of the senior patent attorneys I know lament the passing of the old days when the day before the oral proceedings they had the expert to themselves in a hotel conference room to prep, and they also had the client and expert sitting next to them at the oral proceedings and yellow sticky notes with comments were passed around as each issue was discussed. All this has ended with VICO, and they are not happy about it. And I completely sympathise with them, but times do change. We have many more attorneys with complicated child care arrangements, looking after elderly or disable relatives, etc, and so for example working at home is now normal in the profession. Use of Vico by the EPO is simply keeping up with the times and evolution of work place practices, and progress can never be stopped. Not even by the EPO
DeletePedros, you appear to be missing the point. Times and work practices may change but the text of the EPC has not changed in almost two decades.
DeleteI know that some within EPO management may favour "dynamic" interpretations of the EPC, but even that interpretative method has its limits when it comes to an issue that has already been decided by the EBA. The limit is crystallised in Art 21 RPBA: only the EBA can decide when it is possible to diverge from an interpretation provided in one of their prior rulings.
Also, even if times and working practices have changed, why does this necessarily mean that a right to in-person proceedings should be stripped away from those who wish to assert that right? I am all for taking advantage of the flexibilities offered by VICO, but surely there is a way to strike a more reasonable balance. One compromise that springs immediately to mind is hybrid (in-person / VICO) proceedings. If VICO really does not have any disadvantages compared to in-person attendance, who could possibly object to that compromise?
In essence, what you are suggesting amounts to a situation where parties to proceedings concerning the validity of EP patents would:
- have the right to demand in-person attendance before the UPC and national courts; but
- would not have any such right for proceedings at the EPO.
That is a situation that is impossible to justify from any perspective. Validity proceedings at the EPO have more (commercial) impact than validity proceedings before any court. So why should parties to such important proceedings be denied the opportunity to argue their case in what they believe is the most effective manner?
I get that the EPO has a lot to gain from imposing VICO on all parties in all circumstances. However, the EPC does not afford the EPO carte blanche to ignore the rights of parties to proceedings at the EPO. Arts 113 and 116 EPC are there for a reason.
Thank you Proof of the Pudding. I agree in principle with what you are saying, and everything you are saying should be taken into account in how we move forward. But how the EPC is interpreted and how the EPO behaves needs to always be handled in the broader context of what society is going through. If society as a whole thinks parents should be with their children in the evenings, especially where that is a single parent family, then the EPC needs to be interpreted accordingly. I know of UK-based patent attorneys previously forced to attend many OPs in Munich because they were too afraid of their bosses to refuse, and their family life suffered. We do not want to create the conditions where those attorneys cannot be in the profession or do not get promotion in their companies because of a reluctance to go to Munich. You might say that the EPC does not (or should not) address these issues, but I would say that a certain amount of compassion towards the reality of the challenges attorneys and EPO staff face is a good thing, and promoting Vico is a small step to making people's lives better.
DeletePedros, the answer to the problem of work-life balance for attorneys who are parents of young children cannot be to strip away the right to in-person proceedings (for those who wish to exercise that right).
DeleteFirstly, that would place the needs and interests of (some) patent attorneys over the needs and interests of their clients. That's not really something that squares with any attorney code of conduct of which I am aware.
Secondly, only for a small percentage of attorneys will OPs be such a regular occurrence as to pose serious parenting challenges.
Thirdly, the fact that the EPO issues Summons to OPs many months in advance really ought to help with arranging cover for a trip that usually lasts no more than a day or two.
That is not to say that work-life balance is not a serious issue for many attorneys. It most certainly is. But in-person OPs are neither the root cause of, nor a significant contributor to, that particular problem. Indeed, if you are looking to identify where to make changes that would have the biggest impact, then you need look no further than the culture of the workplace of the attorneys in question.
Thank you for responding in detail, and I appreciate all your points. I don't have the time to respond properly due to work pressures, but am very grateful to hear your views. Wishing you a wonderful festive season if we don't interact again before the end of the year
Delete@Anonymous of Tuesday, 9 December 2025 at 12:38:00 GMT+0
ReplyDeleteI also participate in OP by VICO, and I broadly agree with you, but I would not go as far as to say that OP by VICO do not impair anything. I think it cannot be denied that interpersonal communication via VICO is possible, yet not fully equivalent to interpersonal communication in person. Subtle cues are harder to spot; the discussion is not as fluid; and perhaps more importantly, everything takes more time. (One OP by VICO I attended had multiple opponents, the proprietor, and interpreters on top of that. It took nearly an hour to distribute three late-filed requests from the proprietor...)
On this basis, I think OP in person should not be denied, if this goes against one party's wishes and there are no overriding reasons that prevent OP in person.
Some national supreme courts have held as much during Covid. I know some of these decisions were in the criminal context, but in my view this difference is immaterial. Whenever a legal right is at stake, the interested party must have the opportunity to present their case in person if they wish, except when this is not possible for overriding reasons.
Now, as I have said in the comments section of another blog, it is not hard to guess why the Boards of Appeal have drastically different approaches to the matter. The EPO allows its employees to work remotely from within the country of their duty station, and up to 60 days per year from any EPC member state, provided that they have a minimum presence at the office of 60 days per year. If these conditions apply to Board members (and I do not see why they would not), then in some Boards, the members are rarely -- if ever -- physically present together in Munich. But during OP by VICO, you do not know whether or not the members are sitting in the same room. From this, the conclusion comes easily: the Boards which systemically summon to OP by VICO, are those whose members do not often sit in the same room in Munich.
Part I
ReplyDeleteI can only agree with Dr. Rose Hughes that the necessity of OP by ViCo outside an emergency period impairing travel of the parties is not manifest. The notion of gold standard for OP in person has not been set aside by another decision of the EBA.
For a start, there is no legal basis as such in the EPC for OP by ViCo. The possibility of holding OP by ViCo should at least be enshrined as such in the Implementing Regulations and not just mentioned in passing in R 117+118.
The choice of the form of OP should be given to the parties and not be imposed by the EPO for its convenience.
In T 1807/15, leading to G 1/21, the referring board did not make any difference between the OP before the first instance and before the boards. In its order published shortly after the hearing decided that its decision was only applicable to the boards. I do however fail to see any difference in the status of an OP between the first instance and the boards when reading Art 116 or R 115+16.
Whilst Art 15a RPBA could be considered as a necessity during the pandemic, it should have been rescinded or amended after the end of it. There was not political will to amend Art 15a and to align it with the notion of gold standard for OP in person. This has become very convenient to the boards. If examiners are allowed to hold OP by ViCo, why should they be excluded of this benefit?
This allowed for instance the board in T 758/20, and even more in T 1158/20, to claim that “Holding oral proceedings by videoconference can meanwhile be often considered an equivalent alternative to oral proceedings in person because the boards and the parties have gained such extensive experience with videoconferencing and using the tools involved since G1/21. Holding oral proceedings by videoconference is hence no longer that disadvantageous as it was when the decision G1/21 was issued.”
I would have thought that according to Art 21 RPBA, if a board intends to deviate from a decision of the EBA, it should refer the question to the EBA.
Some boards take the notion of OP in person in high esteem and refuse OP by ViCo for the convenience of the parties, e.g. T 939/23, T 1497/23, T 3277/19 or T 274/20.
Other go as far as requiring from the parties to show that the OP by ViCo is not suitable for the case at stake. I could not find in the Implementing Regulations or the RPBA any requirement of this kind.
As for many procedural decisions, each board decides on the form of OP at it discretion, cf. Art 15a(1) RPBA. The only conclusion is that OP by Vico are decided at the convenience of the board. This was not what was to expected with the reasons in G 1/21 and Art 15a RPBA. In T 2526/19 the board held that Article 15a RPBA is applicable, without any qualification, to the present and future appeal proceedings.
In T 1523/23, T 1095/23, T 1625/22 boards found nothing against holding OP by ViCo before first instance divisions. The right to be heard was respected. To me those decisions are problematic as they ignore the absence of differentiation of OP between first and second instance.
Hearing of witnesses by ViCo is also an important aspect to query. Hearing witnesses by ViCo does not give any guarantee that a witness is not listening into the OP before being heard. This is a great problem, even if in T 423/22, the board found it normal that witnesses can be heard by ViCo. In T 2250/21, the proprietor also questioned the hearing of witnesses by ViCo, and even suggested a referral to the EBA on this question. The chair of the bord made clear during the OP that a referral was out of the question Hearing of witnesses by ViCo is a question which should be dealt with by the EBA.
Part II
ReplyDeleteHolding OP by ViCo allows the members of first instance divisions or of a board to sit scattered around EPC contracting states.
This raises a fundamental question which overrides any other question brought forward above here.
I might be mistaken, but I do not know any administrative and legal system in force in an EPC contracting state, in which an administrative or judicial body composed of a plurality of members can decide a case without sitting together.
That parties can be heard by ViCo is acquired, but a deciding body not sitting physically together is unknown to me.
This situation is highly problematic and is actually not tolerable. I doubt that even the VCLT would allow such an interpretation of the EPC.
So, in answer to the question "What do readers think" here goes.
ReplyDeleteProceedings at the EPO are primarily "written proceedings". The "right to be heard" is an echo of the administration of justice in the Middle Ages "Has the Defendant anything to say, before I pass sentence?" If you can't convince the tribunal in writing, you probably deserve to lose the case, don't you?
Currently, the debate in England is about whether to abolish "Trial by Jury" in the most serious criminal cases. How serious a debate is that then? The need to dispense justice fairly but without delay is these days almost impossible to achieve. Meanwhile, if at the EPO ViCo takes over completely, so what?
If, at the EPO, VICO takes over completely based upon the current EPC, then this would show a blatant disregard for the rule of law. I'm sorry, but I really cannot shrug my shoulders at that outcome.
DeleteI think that the comparison to the situation in the UK is not apposite. The EPO is awash with money provided by applicants. It can therefore afford to employ a sufficient number of examiners to achieve the aim of dispensing justice both promptly and fairly. Even if this were not the case, the EPO has the option of adjusting its fee income in order to make it so.
On matters such as speed vs cost and the format of oral proceedings, the EPO really ought to be deferring to the view of the parties to proceedings before the EPO. After all, those parties are the ones who provide all of the funding for those proceedings.
Dear Max Drei,
DeleteFor once I have to disagree with you.
Proceedings at the EPO are indeed written proceedings, but the necessity of an actual discussion between the applicant and/or the parties in opposition is not to be neglected. I have seen cases in which everything had been brought forward in writing, but the OP allowed to separate the wheat from the chaff.
The "right to be heard" might come from the Middle Ages, but is an important issue which does not deserve to be belittled. OP at the EPO are the best expression of this right to be heard.
In France criminal courts with jury have been replaced to a large extent by criminal courts exclusively comprising LQJ. Those new courts have been set up in order to speed up proceedings. A society which does not spend enough on the judiciary is a society which might end up in a jungle.
At the EPO, the format of the EPO should be left to the parties and not to the discretion of the EPO. This is also part of the right to be heard.
@Proof of the pudding,
DeleteFor once, I can agree with you, when it comes to the format of the OP.
The choice of the format of OP should be left to the parties and not to the discretion, read convenience, of the boards. If both parties want a ViCo, then let it be. If both parties want OP in person, then it is not for the board to insist upon OP by ViCo. If the parties do not agree on the format, mixed mode OP should be possible.
In any case, the board members, as well as all members of first instance divisions, should all sit together in one and the same room.
Having read through the answers to my comment, I am left with the following thoughts.
Delete1. Parties that demand in person oral proceedings should foot the bill, carry the costs (whereby the costs do not fall on everybody else).The likelihood of a demand for in person oral proceedings will increase with the depth of the pocket of the demanding party. In other words, the party causing the expense and delay ends up paying for the cost and delay.
2. In consequence, however, the tribunal is going to be marginally more sceptical about the motives of that party and therefore slightly more likely to be sceptical about lines of argument advanced by that party. Courts tend to have a way to adjust, and compensate, when one of the opposing parties is rich and the other is not.
3. Accordingly, in a pay-as-you-go system, think carefully before you demand oral proceedings, lest you increase the chances that the other side wins, even though it is poorer.
4. Little do I know of litigation, in practice. Perhaps thoughts 1 to 3 are pure fantasy.
Max, there is ample evidence to support the view that attending proceedings in person makes a (positive) difference - see, for example, the evidence cited in the 8 April 2021 amicus brief from VESPA in connection with G 1/21. So why would a court or tribunal be inherently suspicious of a party who believes that it is worthwhile footing the costs of attending in person?
DeleteAlso, why should a party who wishes to attend in person foot the bill for the other party or parties to the proceedings? Is that suggestion on your part not based upon the implicit assumption that the other parties would attend in person in order to "level the playing field"? Does this assumption not contradict your suggestion that courts might be sceptical about the motives of those requesting in-person proceedings? And why would you implicitly disregard the possibility of "hybrid" proceedings?
Let's be realistic here. Some attorneys prefer VICO proceedings because they are convenient for them. Other attorneys, particularly those working far away from Munich and the Hague, prefer VICO proceedings because they remove a relative commercial advantage (ie either lower or non-existent travel / accommodation costs) for competitors based close to Munich or the Hague. The EPO also prefers VICO proceedings for a similar mix of personal and cost-saving considerations. What is much less clear is whether clients prefer VICO proceedings.
No doubt some clients appreciate the possibility of viewing the proceedings via VICO. But that benefit can also be achieved by the "hybrid" format. So, putting aside cost issues for certain attorneys, what is there to recommend the VICO format to clients? It is the clients who ultimately pay the EPO's fees, and who are afforded the right to in-person proceedings. So we really ought to be discussing this issue solely from their perspective.
Dear Max Drei,
DeleteI cannot agree with your comments.
As far as opposition procedures are concerned, Art 104(1) provides expressis verbis that in opposition each party bears its own costs. Only for reasons of equity a different apportionment of costs can be decided by the EPO.
Oral Proceedings are the way of expressing the right to be heard of a party. In G 1/21, the EBA made clear that the gold standard for Oral Proceedings is in-person Oral Proceedings.
There is thus no legal basis whatsoever to force a party to pay for the costs of the other party if it requests Oral Proceedings in person. One possibility is to hold Oral Proceedings in mixed mode, cf. T 0385/23. Comment 1 is to be answered by the negative.
At least at the EPO, all your theory about the court tending to have a way to adjust, and compensate, when one of the opposing parties is rich and the other is not, is without merit. Comment 2 is thus also to be answered by the negative.
In view of the answers to comments 1 and 2, an answer to comment 3 is superfluous, but to mention the fact that in civil courts dealing with infringement or validity, the losing party has to pay the costs of the winning party, at least up to a certain level.
The divergence between Boards of Appeal on the VICO issue illustrates the weak authority of the EBA decisions over the Boards, in the name of the BOAs’ freedom to provide « dynamic interpretations » of an EBA’s decision. This is not quite surprising, the EBA is not an appeal court but can rather be depicted as an en banc panel. This explains why the EBA gives sometimes incomplete and/or ambiguous answers to the questions of the referring decision.
ReplyDeleteA recent example is G 1/24, in which the EBA declined to answer question 3 (whether the patent can be its own dictionary). It is for each BOA confronted with the issue to decide, based on its interpretation of what « consulting the description » means. Which is not conducive to predictability of the case law.
Francis, the authority of the EBA is supposedly reinforced by Art 21 RPBA. Thus, the willingness of certain Boards to either (wilfully) misinterpret or "dynamically" interpret EBA decisions stems not so much from the absence of an enforcement provision but the blatant disregard for that provision.
DeleteAnd what is to stop the Boards in question from disregarding their obligations under Art 21 RPBA? It is not as if they are going to get into any trouble if they are simply advancing an improbable interpretation of an EBA decision which just so happens to be supported by EPO management.
Looking at how the "gold standard" set out in G 1/21 has been systematically ignored by the EBA in petitions for review, it is pretty clear that the "in-house" members of the EBA are perfectly happy with any interpretation of G 1/21 which does away with that gold standard (or which goes even further, by reversing the burden of proof re: suitability).
Which all begs the question: in cases where EPO management has a clear view on which is their preferred interpretation of the law (or of an EBA decision), are we really to believe that all members of all Boards of Appeal which address the relevant points of law always ensure that they honour their Art 23 EPC obligation not to be bound by any instructions and to comply only with the provisions of the EPC?
Mr Hagel,
DeleteIt is not that the EBA’s decisions have a weak authority over the boards, it is Art 15a(1+3) RPBA which causes problems when it comes to OP by ViCo. Art 15a was set up before the reasons of G 1/21 were published. In the absence of a political will, Art 15a was not revised after the publication of the reasons of G 1/21. When Art 15a(1) speaks about “discretion” of the boards in scheduling OP by ViCo, one should read “convenience” of the boards.
Another problem is that in recent years, the EBA has taken decisions which are politically tainted and not following a true legal reasoning.
This is particularly the case for G 3/19 and its famous “dynamic interpretation”. This decision was taken without any decision of the CJEU beforehand, but just after a paper of the commission. At lest the result of G 3/19 is predictable.
G 1/21 is a further political decision, whereby the EBA wanted to please the president, and quickly published an order limiting the effect of its decision to the boards of appeal, against the plain wording of Art 116.
G 2/19 is also a political decision, in order to please the then president when the latter decided the exile of the boards to a Munich suburb. The then president was never made accountable of the huge expense created by the transfer of the boards outside the city centre.
As far as G 1/24 is concerned, I understand that you would have preferred if the EBA had said that the patent can be its own directory. I do have great sympathy with the position of the EBA in this matter, as it limits the possibility of the applicant/proprietor to change the interpretation of its claims as he thinks fit.
When you look at board’s decisions following G 1/24, case law has become very predictable. If there is a discrepancy between claims and description, the claim ought to be amended so as to eliminate the discrepancy. This is also favouring a common interpretation of the claims between the EPO and courts acting in post-grant proceedings. One clear conclusion is that with G 1/24, the patent cannot any longer be its own dictionary.
G 1/23, and especially Reasons 96, confront each TBA with the issue to decide, based on its interpretation of the EBA’s decision. This is also to be seen in view of the long list of case law, according to which a non-enabled product/composition cannot be used as prior art.
However, neither G 1/23 nor G 1/24 are political decisions.
I can agree with you that the EBA is not a revision instance in the ordinary meaning of the term. In order for the EBA to be more independent, it would have been necessary that ordinary members of the BA should not be members of the EBA. There is however no political will to be seen in this direction.
G 4/19 is another political decision (violating art. 52(1) EPC)
Delete@ Patent Robot,
DeleteYou are free to consider that G 4/19 on double patenting is another political decision.
I do not share this view
In Reasons 76, the EBA noted that “The preparatory documents demonstrate with overwhelming certainty that there was a real and effective agreement that the European Patent Office should prohibit double patenting by taking into account principles of procedural law generally recognised in the Contracting States, i.e. by a direct application of Article 125 EPC”.
When on top of this the EBA had recourse to the VCLT, in order to interpret the EPC and to try coming out of the absence of legal provision in the EPC on double patenting, G 4/19 cannot be considered a political decision.
@Proof of the pudding
ReplyDeleteThanks for your comment.
If there is a division of opinion within the EBA panel which the panel members are unable to overcome, there is no solution, or a pseudo-solution which takes both sides, what we call in French "ménager la chèvre et le chou".
In general, the independence of the boards - and the personal independence of board members – is implicitly understood as their independence vis-à-vis the power of the president or of the AC. But they are also independent from each other and sometimes it sounds like this is their major concern.
Mr Thomas,
ReplyDeleteYou misunderstand my position as to the patent being its own dictionary.
I agree with you that the primacy of the claims implies that definitions or statements only found in the description may not be read into the claims esp. to overcome prior art. It is up to the applicant or patent owner to enter them into the claims as explicit limitations if they are to be relied upon to support applicant/patent owner’s arguments.
I think it is only acceptable for definitions of claim terms found in the description to override the ordinary meaning of the claim terms if their language is unmistakably definitional and authoritative and there would be no choice for a skilled person consulting the description but to relate the claim terms to such definitions.
Mr Hagel,
DeleteIf I am not mistaken, the present thread is about OP by ViCo and not about interpretation of claims. I will nevertheless reply to your comment.
To be honest, I have difficulties in following your statement in the second paragraph.
In order to understand exactly what is meant by overriding “the ordinary meaning of the claim terms if their language is unmistakably definitional and authoritative and there would be no choice for a skilled person consulting the description but to relate the claim terms to such definitions”, could you please give an example.
I am sure that I am not the only one desirous to understand what this rather cryptic statement could well mean.
To broaden the perspectve a little bit, here at the DPMA examiners dislike ViCo oral proceedings and will, if possible, avoid them, exactly for the reason that a discussion in ViCo is not as good as one in person.
ReplyDeleteSome applicants will regularly request ViCo during examination proceedings even though they are based in Munich, so cost savings would be fairly small.
In contrast, in opposition proceedings I have yet to see the first ViCo request - apparently most parties prefer in person proceedings.
Even in cases where a ViCo is requested and set up, all parties have the right to appear in person, without prior notice(!). This is possible, as the examiner/divison has to conduct the ViCo from the office and the division has to sit in one room...
The EBoA's comments on the "gold standard" in G 1/21 should stand as a warning to making and relying on obiter dicta. In G 1/21, the matter to be decided was whether the EPO was right to prevent a party who wished to from attending oral proceedings in person having regard to the situation at the time, in particular the existence of a general emergency and the (somewhat and relative) novelty of videoconference technology. The answer was yes. It was not necessary, nor was it wise, for the EBoA to take a view on what the legal position would be in the absence of a general emergency or once videoconferencing technology was more established and familiar.
ReplyDeleteInteresting comment.
DeleteAt Reasons 16 of G 1/21, the EBA stated that "the Enlarged Board finds it justified to limit the scope of the referral to oral proceedings before the Boards of Appeal and to take the specific context of the referral, the COVID-19 pandemic, into account". Does this not imply that the EBA's subsequent comments, including those relating to the "gold standard" for oral proceedings, should be viewed in that context? If so, then the EBA's comments and ruling would not appear to go beyond what was necessary in the circumstances.
On the other hand, it is clear that certain principles can be deduced from the EBA's ruling, and that those principle are applicable beyond the specific context of G 1/21. There is nothing unusual about that. What is unusual, however, is a Board of Appeal trying to argue its way around principles which can clearly be deduced from G 1/21 and thereby evading its obligations under Art 21 RPBA.
Reasonable minds might differ on certain issues, but it is not reasonable to claim either that a lower (Art 113 / Art 116) standard applies outside of an emergency situation or that transformative improvements have been made in VICO technology since G 1/21 was handed down. The first claim defies logic and the second claim is just fanciful (and entirely unsubstantiated). Even if a Board of Appeal were to believe that such claims might be justified, they could not depart from the ruling in G 1/21 without first making their case to the EBA (in a referral under Art 112 EPC) and receiving the EBA's blessing to use VICO in situations that are not clearly permitted under G 1/21.