Oral proceedings at the EPO

The European Patent Convention (EPC) requires that parties, when they request it, have the right to "oral proceedings" before a final decision can be taken.  Historically those oral proceedings have been held in-person at the premises of the EPO, either in private with the examining division during examination, or publicly with the opposition division during opposition proceedings.  Comparable rules exist for appeals.  In recent years examining division oral proceedings were commonly held by video conference and that was working well, but opposition proceedings and appeals were solely in person.

Travel restrictions due to the pandemic made holding in-person oral proceedings impossible, and so from late February 2020 all in-person oral proceedings were stopped.  The EPO's rules have evolved over the last year to allow oral proceeding to continue during the pandemic, and thoughts are now turning to what the rules should be once we are back to normal and travel is possible.  The situation is different for the various types of oral proceedings.  Below we have set out some notes on the current position and our thoughts on what should happen in the future.

Examining Division

All examining division oral proceedings are held by video conference, and only very serious reasons from the applicant will allow in-person proceedings.  This is a system which is working well (and has done for some time).   We see no reason for this to change in the future and consider that video conferencing is the best approach for examining division oral proceedings, in all situations except the most complex of cases or where there is the need for some form of physical examination of samples.

Examining Division Appeals

These proceedings have now moved to video conferencing, and this appears to be the most appropriate format for such proceedings.  The Board of Appeal procedures are defined by the Rules of Procedure of the Boards of Appeal (RPBA) which were recently amended to permit oral proceedings to be held by video conference even without the consent of the party.  The terminology is slightly different to that for the Examining Division as it permits the Board of Appeal to specify a video conference, rather than that format being the default.  A referral has been made to the Enlarged Board of Appeal as to whether forcing parties to attend by video conference is allowable under the EPC, which could in theory lead to the consent of parties being required.  The appeal is to be heard in May and it will be interesting to see how the Enlarged Board treat the rules defined by their own organisation.

We anticipate video conferences will become the standard approach for appeals from the examining division, except in exceptional circumstances, and this appears appropriate.

Opposition Division

Prior to the pandemic all opposition oral proceedings were held in-person, and there was no ability to hold them by video conference.  Initially all proceedings were therefore cancelled, but during 2020 the EPO moved to allow oral proceedings by video conference provided the parties consented.  This served as a useful test-bed as a fairly small number of parties consented, but based on that experience the EPO made video conferencing the default from January 2021 to September 2021 as a pilot programme.

The pilot programme appears to be going well and having conducted nearly 15 oral proceedings by video conference we have not experienced any major problems.  It is therefore absolutely correct that this format is used until travel restrictions are lifted.  However, although the experience is "OK" it is our belief it is not as good as an in-person hearing.  Having said that, the restrictions do not seem to favour one party or the other, so there should be no unfairness, it is a case that all arguments seem to be diluted somewhat. This is particularly the case for complex issues involving multiple documents where body language is a valuable tool in communicating one's position.

What will happen after September is currently being debated and there seems to be no clear view.  There are good arguments on both sides, but a recent EPi survey showed a significant majority favoured returning to in-person proceedings when possible.  My personal view is that the EPO should seek to provide flexibility and freedom to the parties to attend in their preferred manner.  This will enable parties who wish to attend in person to do so, but those who prefer to attend remotely to also do so; this approach avoids any feeling a party has been disadvantaged by being forced to attend by video conference (or in person).  Opposition proceedings can be extremely significant in the commercial sense, and hence it is vital that parties feel they have full access to justice.  Presuming the EPO maintains that quality is not affected by how one attends there would seem to be no reason not to allow such "hybrid" hearings.

Opposition Appeals

As with examination appeals the Boards of Appeal have amended their rules to permit appeals to be heard by video conference where the board considers it appropriate.  As with opposition oral proceedings our experience is that these are also working OK, albeit being technically limited by the use of Skype for Business as a platform (which is now changing to Zoom).

Our view here is the same as for opposition division oral proceedings - parties should be given the freedom to choose how to attend the oral proceedings to give maximum freedom and perception of access to justice.

Summary

The EPO have adapted well to the challenging circumstances over the last year and the adoption of video conferencing has enabled oral proceedings to continue while travel has been impossible.  It is hoped that as global restrictions are eased the rules will again be modified to give parties freedom to choose how they attend.

This article is a part of our EPO Practice and Peculiarities series. Click here to explore.