Oppositions (5) – Oral proceedings

Assuming at least one party has requested oral proceedings, and their main request is not allowable, the EPO will call oral proceedings to reach a final decision.  In the context of oppositions oral proceedings are inter-partes hearings in front of the generally three-member opposition division who will reach a final (first-instance) decision on the opposition - that is, to maintain the patent as granted, maintain the patent in amended form, or revoke the patent.  Occasionally, where the subject matter is particularly complex or time consuming, or there are a lot of opponents (multiple oppositions are combined into one oral proceedings) the oral proceedings may be scheduled over more than one day.

The oral proceedings are based on the preliminary opinion and requests of the parties on file immediately prior to the oral proceedings, starting with the patentee's main request. An unusual feature of EPO oral proceedings is that each point is discussed in turn, with interruptions throughout the proceedings for the division to privately deliberate and return to announce decisions on each point.

The order in which issues are decided can vary between cases, but is usually chosen by the opposition division to be the order which provides the most efficient way through the issues.  Often this means sufficiency & added matter first, and then moving to novelty & inventive step.  If the Patentee wins an issue the proceedings move to the next ground of opposition, and if the opponent wins an issue the proceedings move to the Patentee's next auxiliary request.  The sequential nature means some issues may never be discussed. If added matter is discussed first, and no request is found to meet these requirements, sufficiency, novelty, and inventive step may never be discussed.

Oral proceedings can be very dynamic as the course taken is not known until a decision on each issue is taken.  This is particularly the case since the preliminary opinion is not binding and often changes on the day, both in terms of the outcome and the reasons.  A completely unexpected argument can arise during the oral proceedings leading the proceedings in a different direction.

Once all requests have been considered the final decision is announced.  The duration of oral proceedings varies wildly - I have experience proceedings of less than an hour, through to still arguing at 1:30am having starting at 9am the previous day.  The decision is announced verbally, but without any substantive reasons. The detailed reasons are given in the written decision which is issued sometime later, but cannot change the decision which becomes final when it is announced verbally.

Oral proceedings are very focussed on the issues at hand and the representatives are expected to address the points succinctly and without hyperbole.  Appealing to the EPO's better nature, discursive discussions on the brilliancy of an invention, or the commercial importance of a claim will get a representative no-where, other than a stern telling off.  The opposition divisions are only interested in the facts in relation to the issue at hand. Bearing in mind each issue is taken in turn oral proceedings tend to be a collection of short exchanges, rather than lengthy speeches.  Generally the opposition divisions are well prepared and fully familiar with all the written submissions so there is no need to repeat everything said in writing, but rather verbal submission should focus on issues which the parties and opposition division feel are important, or not clear-cut.

Each side will receive an opportunity to comment on an issue, and a chance to reply. After that the number and length of submissions will depend on how the discussion develops - sometimes each side will only speak once, other times the discussion will go through many rounds.  The opposition division often challenges one or both sides to guide the discussion and to expand on points they are interested in; this can extend to raising their own objections.

The discussions are almost always very "British" in their nature with each side taking it in turns to speak when invited. Interruptions are frowned-upon, although the chair may interject if a party is going off-topic or is repeating arguments.  The most effective oral advocacy at the EPO advances a positive case focussed on the facts, rather than criticises the other side's case (or the other side). 

Due to the dynamic nature of oral proceedings it can be the case that the Patentee's auxiliary requests on file do not attend to a decision that turns against them.  In such cases it is usually possible to prepare and file new auxiliary requests dealing with the issue.  This needs quick-thinking from the representative as it is necessary to prepare new amendments to the claims which meet all the requirements for grant, and to prepare arguments in support of them, in a short interruption of proceedings.

Oral proceedings are conducted in the language of the proceedings (the language in which the application was filed), but each party can speak and listen in any of the EPO's official languages (English, French, or German).  Where a party wishes to use a different language to that of the proceedings the EPO provide simultaneous interpretation between the languages.  The interpreters contracted by the EPO are truly exceptional - they deal with complex legal and technical language, generally flawlessly, and the translations rarely cause any slowing of the proceedings or loss of information.

I could write a book of tips on advocacy and strategy, but this is not the forum for that.  Suffice it to say that EPO oral proceedings are a forum full of opportunity for a skilled advocate, but equally full of risk. It is an arena in which a specialist representative really can make a difference to the outcome of a case. 

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