Parties should not be forced to accept oral proceedings via videoconference before the EPO Board of Appeals. That is the clear feedback, at least in the responses that have been published, on the EPO’s user consultation regarding a proposed new Article 15a RPBA concerning oral proceedings by videoconference.

The consultation closed on 27 November. In the explanatory remarks, the EPO doesn’t give any reason for the proposal, but it is clear that the corona pandemic has given a boost to videoconferencing. ‘From May to October 2020, oral proceedings were held by videoconference in over 120 appeal cases. Initially, they were held by videoconference only if all parties to the proceedings agreed. This enabled the parties and the members of the Board to become accustomed to oral proceedings being conducted in the new format. It is envisaged that in the near future the Boards of Appeal will extend their practice by holding oral proceedings by videoconference without requiring the parties’ agreement to this format.’

The proposed Article 15a RPBA reads:

Oral proceedings by videoconference
(1) The Board may decide to hold oral proceedings pursuant to Article 116 EPC by videoconference if the Board considers it appropriate to do so, either upon request by a party or of its own motion.
(2) Where oral proceedings are scheduled to be held in person, the Chair may allow a party, representative or accompanying person to attend by videoconference. In exceptional circumstances, the Chair may decide that a party, representative or accompanying person shall attend by videoconference.
(3) The Chair may allow any member of the Board in the particular appeal to participate by videoconference.

Business Europe

Business Europe, in its own words ‘the leading advocate for growth and competitiveness at European level, standing up for companies across the continent’ is one of the organisations that has published its response to the consultation and opposes the introduction of Article 15a. Some excerpts:

‘After the current pandemic, oral hearings should go back to the default on-site presence set-up. It should be the parties’ decision to ask for VICO, and not for the Boards of Appeal. In particular, in inter partes proceedings the patent owner and the opposition party should be a remain the “master” of the proceedings.

BUSINESSEUROPE has also strong concerns on the proposal that the Board of Appeal may decide to hold the oral proceedings by VICO on “its own motion”. Face-to-face oral proceedings are one of the fundamental elements of European legal proceedings and this should not be changed unilaterally by Board of Appeal in charge of a particular case.’

‘c. Explanatory notes required

‘The applicability of the proposed Article 15a would depend on a proper application of “discretion” to new, untested circumstances, and a proper formulation and application of a new test for “appropriateness”, which is a completely new and unelaborated criterion. This new “discretion” and “appropriateness” test should be guided by accompanying explanatory notes to any such provision setting the stage for appropriate interpretation. In particular, the criteria for determining when videoconference is appropriate should be the consent of the parties, and face-to-face hearings remain the default.’

‘e. Recording

BUSINESSEUROPE stresses that the prohibition of sound recordings during oral proceedings by VICO is difficult to enforce. Although professional representatives may be expected to comply with this prohibition, the disadvantages that may be incurred by recordings made by parties or the public need further consideration’

‘h. Comparative study

BUSINESSEUROPE recommends the Boards of Appeal to conduct a comparative analysis of the outcomes from the oral proceedings by VICO conducted since May 2020 with respect to face-to-face oral hearings, before any final decision on the proposed Article 15a RPBA is taken. For instance, this comparative study should focus on the impact of VICO on the adherence to preliminary opinions.’

European Patent Litigators Association (EPLIT)

‘EPLIT is (…) against introducing Art. 15a in the proposed form. Instead, Art. 15a should be amended in such a way that each party has the choice of attending an oral hearing in person or by videoconference.’

That is the central message of the European Patent Litigators Association in its response to the consultation. In order to be able to consider the opinion of its members and their experience with video conferences, EPLIT even conducted a member survey at very short notice, the results of which can be found on its website. EPLIT summarised them in key points, which have partly been copied below.

‘a. Our members expressly welcome the possibility of holding oral proceedings before the Boards of Appeal as video conferences. It is seen as an advantage that time and costs can be saved and, in particular, that the impact on the environment can also be reduced.

b. However, a very large majority (75%) of our members oppose the possibility of Boards of Appeal being able to determine, against the will of a party, that oral proceedings should take place in the form of a videoconference. Oral proceedings should only take place as a video conference if all parties agree.

c. Members’ experience with the technical process varies. A typical positive statement is: Technology works fine, and it may help to save considerable time and costs, which the client may appreciate as the case may be.

Other members have had problems with the technology. Again for a typical statement: The proceedings were frequently disrupted because opposing counsel had difficulties with the internet connection. Although our bandwidth was excellent, we also in a few instances had difficulties understanding some of the arguments and it seemed impolite to repeatedly ask the chairman or the other party to repeat their argument.

With introducing Skype for Business, the quality of the video transmission became very poor because of a very low frame rate; the Members of the Division often have a seating arrangement such that two members can only be seen from the side; the camera at the EPO is usually far away from the members of the division and their mimics can hardly be seen.

d. This last point is crucial in explaining why many members refuse to be forced to use videoconferencing. Indeed, while verbal communication is considered more or less satisfactory, most members who have already taken part in an oral hearing via videoconference complain about the largely or even practically complete loss of non-verbal communication.’

‘e. One aspect of proceedings before the EPO is that for applicants and patentees, the Boards of Appeal are the last resort if they lose. (…) the fact that this is the final instance at the EPO, the lack of non-verbal communication and the limited possibilities to use visual aids in the presentation are even more prominent.’

‘g. The participants of the survey do not only see problems in communicating with the board, but also with communicating with their own clients when they are in a different location than the attorney attending the video conference.’

EPLIT stresses the ‘majority of our members are very concerned that the right to be heard will be affected by being compelled to participate in a video conference, even if the party has objected to it.’

‘According to our members, an oral hearing by videoconference is more similar to a written procedure than a real oral hearing. Since, as the Enlarged Board of Appeal rightly observes, the oral hearing takes place at a critical stage of the decisionmaking process, it is a clear violation of Art. 113(1) EPC if an oral hearing takes place by videoconference against the will of the party.’

Bardehle Pagenberg

Law firm Bardehle Pagenberg filed a response as well refuting the new article 15a. Some quotes of their reaction (my translation, original text in German here):

‘As is not clear how long the pandemic will go on, it appears necessary that oral hearings before the Boards of Appeal are held as VICO even without the consent of the parties, in order to avoid a standstill in the administration of justice, especially in cases that have already been in process for a long time, but also in cases in which one party has an interest in delaying the matter.

However, if there is no (longer) such a risk, there are practical reasons not to consider VICOs as a full substitute for oral proceedings.’

‘For times without a pandemic, other means are available to use the advantages of the VICO technology in the context of oral negotiations, without abandoning the core of the oral hearing – a place for the exchange of oral arguments and the clarification of open questions. The current practice of the Federal Court of Justice (Bundesgerichtshof) could serve as a model for such a regulation. In a “hybrid form”, the judges are together in the court room, as well as a limited number of participants, usually the leading representative(s), while other participants, e.g. representatives who have in-depth knowledge of individual points, or in-house representatives of the parties, also from overseas, connect via VICO. The essential character of the oral proceeding is thus retained, while time taking advantage of the VICO technology.’

CIPA

Half November, before the consultation started, the Chartered Institute of Patent Attorneys (CIPA) welcomed an announcement by the EPO that all hearings below appeal would shift to videoconferencing until at least mid-September next year.

Richard Mair, CIPA President, said: “The experience of our members has largely been that EPO proceedings of all kinds are very well-suited to videoconference. Not only that, we have also found that it can dramatically improve accessibility and deliver better results, more speedily, and at a lower cost for everyone. In-conference functions such as screen sharing and simultaneous side channels for communications have shown that the technology has come of age and in most respects now provides a real and improved alternative to in-person hearings.”

However, it seems that CIPA didn’t participate in the EPO consultation regarding the proposed new Article 15a RPBA; at least it didn’t publish any consultation response. So it remains unclear what CIPA’s view is regarding the proposed new power of the Board of Appeal to decide to hold oral proceedings by videoconference, even if (one of) the parties opposes this.

In an article of JUVE Patent, most IP professionals react with understanding to the EPO’s temporary extension of videoconferencing to prevent the build-up of further backlogs, and taking into account the problems caused by the corona pandemic. But many say they hope that video hearings ‘will not replace all hearings for good’.

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73 comments

  1. My understanding is that CIPA did submit a response to the consultation. It is just that the response has not yet been made publicly available and so very few people are aware of its content. To my knowledge, the views of CIPA’s membership were not surveyed prior to preparation and submission of the response. Make of that what you will.

    1. EPI also did not survey its membership before submitting its response. This is a perfectly normal way for institutes to work.

  2. From the responses is also evident that until the Covid emergency is over, VICOs can be mandatory

  3. I was wondering whether and when all the responses to the consultation will be made available to the public; my firm also submitted comments but, as of today, I do not even know whether they were correctly received.

  4. Presumably, the EPO President, the Administrative Council, the BOAC ,the EPO’s Boards of Appeal and the UK Chartered Institute of Patent Attorneys (CIPA) all share the opinion of the Rules of Civil Procedure of the Civil Courts of England and Wales, Rule 1.1, that the over-riding objective of any court system is to enable the court to deal with cases “justly”. Such an over-riding objective is correctly placed at para 1.1 of the Rules. Compare Article 1 of the Basic Law in Germany, which itself recites what one might describe as an over-riding objective.

    Reflect on what Adam Smith argued: that any human society needs ONLY two absolute imperatives if it is to survive and prosper. Everything else follows, provided these two essentials are adhered to. First, a system of “easy” taxes. By “easy” I take him to mean a system that commands broad acceptance and is perceived as fair.

    The second imperative for a stable society is a functioning system for dispensing justice fairly. Smith wrote that in the 18th century. Not much change then, from then till the end of the 20th century, when Lord Woolf drew up the reformed CPR with its “over-riding objective”.

    http://www.justice.gov.uk/courts/procedure-rules/civil/rules/part01#:~:text=%20The%20overriding%20objective%20%201%20%281%29%20These,so%20far%20as%20is%20practicable%20%E2%80%93%20More%20

    The question arises, to what extent is it compatible with such an over-riding objective to allow a TBA to decide, in its infinite wisdom, unrestrained by any other impediment, to decree that the decisive Oral Proceedings shall take place as a video conference. One gathers that CIPA sees absolutely no problem with allowing an individual Board such discretion. So who does? Anybody here?

    1. I also see no problem and I am not a CIPA member.

      There is nothing in the EPA imposing oral proceedings to be held in person.

  5. It is a pity that epi’s contribution to the discussion on Art 14aRPBA20 was not mentioned in the blog. The position of epi is reasonable and acceptable.

    From most of the comments published up to know, it becomes clear that Art 15a should at most be valid during the pandemic. I would even claim that not only after the pandemic, but as well during it, OP should only be held in form of ViCo if the parties agree.

    Do not tell me that there is a major problem and justice would be denied. This is a fig leaf to justify discretionary measures which have the only purpose to get files done at any cost and at any rate.

    The BA have been understaffed for many years and this was not the wish of the users, but only due to the former head of the EPO who considered the members of the BA a bunch of lazy people.

    The throughput of files in DG1 has increased tremendously in the last years simply in order for the cash to flow in as quickly as possible. Examiners should grant as quickly as possible, so that the member states can get their annual fees as quickly as possible. Now we are even told that the EPO is nearly broke. I am awaiting this reason to be given to force OP in form of ViCo before the first instance.

    That CIPA is in favour of OP as ViCo is not surprising. Some UK firms of representatives have been advertising for instance in LinkedIn about their capacity to hold OP in form of ViCo. It is for UK firms a possibility of gaining ground over firms sitting in Munich or having opened branches in Munich. In any case this should not be determining in whether OP can only be held in form of ViCo.

    The argument of reducing the carbon foot footprint by not coming to Munich is at best fallacious. For parties not residing or having a place of business within the member states of the EPC they have to be represented by a qualified representative. Strictly speaking, there is thus only the necessity for a party to send one representative to any OP. This also apply to parties having residing or having a place of business within an EPC member state.

    It is therefore not necessary for a party to come to Europe or from the far end of it. All the costs linked with the travel of for instance non-EPC patent attorneys and the various staff members of companies cannot be determining in whether OP can only be held in form of ViCo. In any case those persons can at best be accompanying persons in the meaning of G 4/95, as they have no procedural right to speak.

    Be it in presence or in ViCo, the bare minimum should be that the parties are sitting in front of full deciding body, be it a first instance division or a BA. Sitting in front of three individual images of members of the deciding body all sitting in different locations cannot be considered as holding a proper OP, whatever the management of the EPO or of the BA want us to believe.

    Last but not least, what is valid before the BA should be mutatis mutandis valid for divisions of first instance. If the EPO and the BA want to force the parties to only have OP inform of ViCo, they should have the decency to amend the EPC, not just its rules of procedure. Only holding OP in form of ViCo is a major change of the letter and the spirit of the EPC.

    Neither the president of the office, nor the chairman of the BA or of the BOAC have the legitimacy to alter the EPC in the way they are presently forcing upon the users of the EP system.

    I very much doubt that the BA will publish the responses to the consultation. We might get a total number of entries, but no more. If the vast majority of the replies is negative, they will certainly not publish them or give a figure. Should the vast majority of the replies be positive, we might see them and get a figure.

    When introducing the obligation for parties to consult the register before coming to OP before OD, the president claimed that it was to answer the wish of the users. It would be interesting to know which users were meant. I do not know any. When doing the same for forcing people to check whether the location of an OP on the premises of the EPO, the BA did not even try to hide behind the users.

    In the early days of the EPO “Anmelderfreundlichkeit”, best translated by “user friendliness”, was a key objective and contributed greatly to the success of the EPO. Nowadays the users of the EP system have been degraded to fee contributors whereby the management of the EPO and of the BA decides ex-officio what is good for them. Enough is enough!

  6. To Attentive Observer:

    Why does mandatory ViCo “alter the EPC”?

    The EPC requires “oral proceedings”, but it doesn’t say “face-to-face”. ViCo are proceedings, and they are oral.

    1. It “alters the EPC” because it changes the interpretation afforded to Article 116 EPC in the case law of the Boards of Appeal.

      The Boards are afforded interpretative supremacy with regard to the provisions of the EPC. The President has no power to overturn interpretations of the EPC established in the case law of the Boards of Appeal. Whilst G 3/19 may have muddied the waters, the same is true for the AC, except in the circumstances where they are exercising their quasi-legislative function under Article 33(1)(b) EPC (to bring the EPC into line with an international or EU law relating to patents … which exception very obviously does not apply in these circumstances).

      I trust that this answers your question. I would like to pose questions in return:

      In theory, do you believe that mandatory TELEconference proceedings would satisfy the “oral proceedings” requirement of Article 116 EPC? And if not, why not?

      Based upon my experience, when technical issues arise (which is relatively common), VICOs can end up resembling something much closer to a teleconference than a face-to-face meeting.

      1. With a videoconference you see exactly the same parts of the body of all participants you would see in OPs in person.
        You also hear exactly the same words.
        Actually, videoconferences in opposition are even better, since you can see all participants (OD and representatives) at the same time, which is not possible in person, unless you have four eyes.

        1. Robot, it seems that you do not wish to provide direct answers to my questions. Why is that?

          Indirectly, you have provided an answer (of sorts). That is, it seems that you view participation by VICO as providing an advantage over participation in person. Can I therefore presume that you would be perfectly happy to participate by VICO in opposition (appeal) proceedings conducted in the “hybrid” mode, where (according to their wishes) the other side participates in person?

          Also, can I presume that, at least after the end of the pandemic, you would have no problem with a set-up in which any party who wishes to do so can participate EITHER in person OR by VICO? If not, why not?

          1. I thought that I responded to all your questions. If I am wrong, please repeat your questions, thanks.

            I also confirm you that I am happy with “hybrid” OPs.

        2. Robot, I am surprised that you do not realise why you failed to answer my questions. To repeat the questions: Do you believe that mandatory teleconference proceedings would satisfy the “oral proceedings” requirement of Article 116 EPC? And if not, why not?

          Pointing to what you perceive as benefits of VICOs (or to similarities between VICOs and in-person proceedings) is no answer to these questions. To be clear, I am interested in how far you believe it is permissible to stretch (in an Article of the RPBA) the interpretation of the phrase “oral proceedings” in Article 116 EPC.

          I am glad to hear that you would be happy with “hybrid” proceedings. However, I note that you did not answer my further question about in-person proceedings being available to those who want them. Perhaps you would like to do that now.

          1. “Do you believe that mandatory teleconference proceedings would satisfy the “oral proceedings” requirement of Article 116 EPC?”: Yes but hearings via Vico or in person are preferable since you can see who is speaking.
            “I am interested in how far you believe it is permissible to stretch (in an Article of the RPBA) the interpretation of the phrase “oral proceedings” in Article 116 EPC.”: I already wrote that Art. 116 EPC does not explicitly impose OPs in person
            “I note that you did not answer my further question about in-person proceedings being available to those who want them.”: IMHO all participants (EPO/BoA members included) should be free to attend by ViCo or in person

        3. With a videoconference you see exactly the same parts of the body of all participants you would see in OPs in person.
          You also hear exactly the same words.

          Nope.
          I don’ hear what a party and the client discuss among themselves, microphone off.
          Nope, I do not see the same parts.
          A lot of the body language is invisible in the Video Conference.
          On top, as examiner, I am too busy making notes, or checking the passages in documents referred to, and therefore cannot see the parties AT ALL, not even in the corner of my eyes.
          I have all documents on screen only, in a multitude of different windows for the application as filed, amended claims, current request, preliminary opinion, and any filed arguments with the latest request and since then, plus a program to take notes of the arguments in.

          Nope, I prefer to see the parties (and my colleagues) in person, also because often the parties use the breaks to discuss among themselves, and often come to an agreement both parties can live with.
          I fear that last element is totally lost now.

          And no, I don’t write that because I know a local hotel owner..

      2. Concerned Observer:- “… it changes the interpretation afforded to Article 116 EPC in the case law of the Boards of Appeal.”

        Whereabouts in the case law of the Boards of Appeal?

        And by the way, this thread is in response to changes proposed by the Boards of Appeal themselves.

        1. See, for example, T677/08:
          “According to Article 116 EPC, an applicant has a right to oral proceedings which means he has A RIGHT TO APPEAR IN PERSON before the Examining Division in order to discuss the case”; and
          “Article 116 EPC gives the applicant the right to present his case orally before the Examining Division but does NOT give him the right to do so in the form of a video conference”.

          To be precise, the proposal to amend the RPBA does NOT come from the Boards of Appeal (ie the EPO’s judiciary). Instead, it comes from the Boards of Appeal Committee (BoAC) and the President of the Boards of Appeal.

          BoAC is “a subsidiary body of the Administrative Council”:
          https://www.epo.org/about-us/governance/administrative-council/bodies/boards-of-appeal-committee.html

          As set out in Rule 12a EPC, the President of the Boards of Appeal is appointed by the AC on a joint proposal made by the BoAC and the EPO President.

          Neither BoAC nor the President of the Boards of Appeal has the authority to overturn an interpretation of the EPC established by the EPO’s judiciary.

          1. One further question: would a literal understanding of Art 116 EPC possibly even allow to skip the video-part? After all, for “oral” proceedings a telephone is sufficient… 😉

  7. Attentive, can you clarify your remark “Do not tell me that…justice would be denied”? I read it as a rebuff to my comment of December 3rd, in which I write of the over-riding objective to decide cases justly and I am surprised that you feel this way. Have I misunderstood your comment, perhaps?

    In England, the Court Service is making heavy use of ViCo but I cannot imagine a full trial of the action being performed in England by ViCo, if only because of the centrality to that trial of the cross-examination of witnesses in front of the eyes of the judge. One shudders to think of the opportunities for putting words in the mouth of the witness, if that witness is visible to the judge only over a video link.

    Now I know that oral proceedings at the EPO are not like a full trial of the action in England. Cases at the EPO are supposed to be written proceedings. Nevertheless, I’m still sceptical whether ViCo is up to the task of rendering “justly” the ultimate decision, in a hard-fought and legally complex case which is going to settle the fate of the patent across the whole of Europe.

    But if the RPBA were to be amended to include from the get go a mandatory requirement with as much detail as Section 1.1 of the English CPR, that might be enough to give Board Chairpersons serious reasons to pause, hesitate, think carefully, weigh up the consequences before they “decide” that the oral proceedings must be done by ViCo.

    Of course, given the pressure from management, it will require Boards to “grow a pair” as the saying goes, to grasp “where their duty lies”. But hey, that’s not something special to BoA members. These days, most every doctor has to choose, every day, between honouring his (or her) Oath and keeping on the right side of “management”. And, I know, it’s all very well for patent attorneys in private practice to preach: they aren’t sitting in the hot seat, required to “decide” cases with decisions that can destroy their career prospects.

    1. This year I personally attended (I was the applicant, not in a patent case) several virtual hearings, including a final hearing, in England, where judges, parties, barristers, solicitors, experts and witnesses were all connected by videoconference (Google Meet).
      Nobody even thought that the right to be heard was at stake.

      1. Interesting comment from Patent Robot. Of course, if we are all blessed with his facility, to read with 100% accuracy what every other ViCo participant was thinking, that does change the assessment.

        I hope to hear from others with profound and wide-ranging experience of ViCo when used in final trials of patent validity in England. Can they corroborate what Robot asserts?

        1. In England I also attended several hearings in person and I can guarantee you that it was more difficult to hear and see the participants, first of all beacuse I could only see the face of the judge and the shoulders of all other participants.
          Also the audio quality is better via ViCo, since you can adjust the volume.

    1. Most patent attorneys don’t fear innovation, however, many of them run their practices near an EPO site and the location gives them competitive benefit over the ones living abroad. It is a benefit that I wouldn’t be willing to give away without a battle. German (near Munich) and Dutch attorneys don’t have anything to win in this battle.

      I don’t say that this is the only reason, however, it is a significant reason. After all, we European patent attorneys, are running our own businesses too.

      1. I understand that EPAs working in Munich and Den Haag lose their benefit because of videoconferences but their fight seems to me as those done in the past by the producers of coaches, gas lamps, telegraphs, slide rules, etc.
        Videoconferences put all EPAs at the same level, without any unwarranted advantage.

    2. Well, instead of making ad hominem comments like that (which, let’s face it, represent a tactic of “playing the man and not the ball”), how about contributing a little light to the debate?

      For example, would you be able to elucidate readers of this blog about where they can find the necessary legal basis for the new interpretation of Article 116 EPC that is evident in proposed Article 15a RPBA? Or would you care to explain why Business Europe is wrong to be concerned about other aspects of the proposed change (such as issues regarding public access, possible recording and company security policies relating to software)?

      1. Art. 116 EPC does not state that oral proceedings shall be held “at the premises of the EPO”, so that the interpretation given by the Boards of Appeal is IMHO correct.
        All technical issues of videoconferencing raised by BusinessEurope can be easily solved in the short term and the improvements during the last 8 months in this fieald are already substantial.
        I also do not see any issue in videorecordings of all public hearings.

    3. Personally, I would prefer Vicos as an option (alas, at the DPMA we don’t have this option, yet(?)).
      Making Vicos mandatory does not leave room to have in-person oral proceedings, when necessary. After all, as an engineer I plan for the worst case….
      A few years back there were opposition proceedings for one of the high stakes IPcom-patents. One of the office’s largest rooms was booked for 4 days, there were at least 5 opponents. Such proceedings are a nightmare, even if you assume there are no witnesses to hear. I don’t think a Vico would be helpful there, so the format should be left to the discretion of the OD and the participants. I could imagine as well, that in opposition proceedings one party is on location with the OD, the other party is connected by Vico…

      1. I attended hearings (not at the EPO) with more than ten participants in person and by ViCo and, provided that the judge is able to mute participants, ViCos are better, since you can see all participants de visu, you have less background noise, more space, more oxygen, cleaner air and you can also easily communicate with colleagues and clients

        1. Well, then apparently the ViCo-systems you are using are better than the ones I know. From the systems I know, I would not say it is possible to see 3 (before the DPMA up to 5, including legal member and “Schriftführer”) members of the OD plus at least one participant per opponent in a meaningful way…

          1. I know both of them and also MS Teams. My expereince so fa has been underwhelming (at least at my home connection with 50 Mb/s).

  8. I think the ViCos will be in particular a problem if we have witnesses or other evidence that is not a patent document. I think a fair assessment of such evidence in a ViCo is simply not possible. Granted, this does not happen too often, but the number of cases with such evidence is also not insignificant.

    1. You can hear and see witnesses perfectly well also via ViCos (they are used even in criminal cases).
      I agree instead that OPs must be held in person when a sample must be examined live (e.g. manipulation). However, in this case, if the sample cannot be brought to the EPO, e.g. if the sample is a big machine, then OPs should be held where the sample is located.

  9. Dear Max Drei,

    I am in full agreement with you thoughts about the over-riding objective to decide cases justly. What I meant is that justice cannot be denied when a file takes a year more to be dealt with. Mentioning that the necessity of justice requires OP to be held mandatorily in the form of ViCos boils down to an insult when such a thought is uttered by the actual head of the EPO. At the EPO, be it in appeal or in first instance, the aim is to increase the throughput of files and nothing else.

    I can share your doubts that an OP in form of a ViCo is up to the task of rendering “justly” the ultimate decision, in a hard-fought and legally complex case which is going to settle the fate of the patent across the whole of Europe”.

    In view of the self-imposed restrictions of the BA in their RPBA, the battle has been transferred to the first instance. This is forgotten much too often. It is very hard to get a decision set aside by a BA if you have not done everything possible in the first instance. And in some cases it is difficult to achieve this goal. In view of their production objectives, it is very rare that a BA allows a change in the proceedings. And yet sometimes one cannot refrain the feeling that the RPBA are simply misused in order to get read of a file.

    Concentrating on the BA as they are the final step of the procedure is forgetting that the track is laid in first instance. That is why it is so important to have proper OP and not a substitute in form of a ViCo, be it in first instance or in appeal.

    I have great respect towards the statements in Section 1.1 of the English CPR, but thinking that such a text will be adopted by the BA, or even apply in first instance is for me no more than a dream. As said above, at the EPO, be it in appeal or in first instance, the aim is to increase the throughput of files and nothing else. Nothing “just” can be seen in this aim.

    I agree with you that the BA should “grow a pair”, but in view of the pressure to get read of the backlog, this will remain a wish. They could do so if they were really independent. But it is a matter of fact that the changes brought about with the reform of 2016 has not even increased the perception of their independence….

    On the other hand, I fear that all the replies to the public inquiry not being in favour of OP in form of a ViCo will be like water flowing from a duck’s back. The management of the EPO and of the BA will only take into account positive replies like the one of CIPA. In this respect I feel that CIPA is antagonising the rest of the profession in Europe best represented by epi. Solidarity with the rest of Europe is however not something to be expected from the UK in this time of Brexit.

    What is a disgrace is that the deciding body, be it in appeal or in first instance is not sitting together. If there is a three person body to act, a reasonable interpretation of Art 18, 19 and 21 requires that those three person sit together. Anything else boils down to discussing with the first member or the rapporteur. The grant procedure has already be degraded to a one man procedure, and if you were thinking that this will not become the case in the BA, you are simply not realistic enough.

    Patent Robot (btw what a strange name) might be satisfied with using what is technically possible without thinking any further. There are plenty of other who beg to differ and want something better.

    It is not only when a sample is to be examined that OP in person are required. This is also very rare and mostly useless as the time print of the sample is not known.

    When taking part in OP in person there is always a certain atmosphere in the room. That the situation is tense between proprietor and opponent is one thing, and even sometimes in case of a plurality of opponents they might have a common aim that is to kill the patent, but they are also competitors and act accordingly. All this in not something to be felt in a ViCo. An OP in ViCo is no more than a bad substitute for a proper OP. The pandemic might force us to do so, but once the pandemic is over, OP in form of ViCo should remain an exception for which all parties have to agree.

    It is for ViCo like for lots of other things, what is technically feasible is far from optimum. One aspect which should never be forgotten: if people have not met before a ViCo, it might end up with all parties being frustrated as there is no real communication, but even having met before is not a guaranty of success. I have witnessed this times and times.

    This has nothing to do with the ViCo as such, but is elementary psychology. Denying this aspect can backfire. On paper all is OK, but reality can take a different turn. And in patents we have to do nearly only with paper, so for once let’s face reality.

    1. “Patent Robot (btw what a strange name) might be satisfied with using what is technically possible without thinking any further.”: well, since we are in a Covid emergency, I think that Vico is the only technical possible way to have oral proceedings for the next years, do you agree?

  10. I share the misgivings of many of the commenters here about making ViCo proceedings the default and granting the various instances of the EPO the power to mandate parties (against their will) to participate remotely. The possibility of ViCo proceedings is to be welcomed, and is surely a historical inevitability. But to dispense with in-person hearings almost altogether, and to remove the element of choice from parties in this regard, is not welcome.

    However, I really do not feel there is any mileage in an argument based on Article 116 EPC. “Oral proceedings” are surely just that: proceedings in which submissions are made orally, in contrast to “written proceedings”. ViCo or indeed telephone conferences surely meet the requirement of being “oral proceedings” in that regard. I struggle to see how it can be seriously argued otherwise. I think arguments based on Article 113 EPC are on similarly shaky ground except in the case of severe connection difficulties which can be proven appropriately.

    Whether the EPO *can* impose this change (insofar as the EPC does not explicitly prohibit it) is a different question from whether the EPO *should* do so.

  11. @Patent robot :

    Re your assertion “(they [ViCos] are used even in criminal cases)”: at least one supreme court of a European country has just curtailed their use.

    That supreme court is the French Council of State, which just last Friday has granted an emergency request to stay the use of ViCos in criminal trials. The ruling states that allowing the use of ViCos in a criminal trial “seriously and manifestly violate the rights of the defense and the right to a fair trial.”

    Source (in French) : https://www.conseil-etat.fr/actualites/actualites/le-juge-des-referes-suspend-la-possibilite-d-utiliser-la-visio-conference-lors-des-audiences-devant-les-cours-d-assises-et-les-cours-criminelles

    Of course, the equivalent in the EPC of the “right to a fair trial” is the right to be heard referred to in Article 113 EPC.

    This, at the very least, should incite everyone to pause for more than a moment before enacting an amendment to the RPBA which allows a ViCo to be forced on the parties without their consent.

    As others have already stated, it is another matter when all the parties ask for, and agree to, a ViCo. In essence, by doing so, they waive their right to a physical hearing.

    1. Just copied from the ECHR website…

      On account of the Covid-19 health crisis the Court has had to introduce special measures for holding its public hearings, valid until further notice. All oral submissions will be made by videoconference, and hearings at the Human Rights Building will not be open to the public. However, since all hearings are filmed in their entirety, the video recording will be available on the Court’s website the day after each hearing.

      P.S.: revoking a valid patent is the same as sending an innocent to jail?

  12. Thanks Attentive. You and I know who each other is, but neither of us knows who “Patent Robot” is. For the time being, I am assuming he is a shill, bought and paid for by EPO management.

    His comments on attending proceedings in England make no sense to me. I renew my invitation to any English litigators reading this thread to comment on the notion of imposing on the parties in dispute a final trial done wholly by ViCo technology. My suspicion that it interferes with justice by allowing witnesses to be manipulated by persons outside the field of view of the camera, while they are giving evidence. Crib sheets, teleprompters, hand-written key words on pieces of paper. I don’t know. You tell me.

    But perhaps even now, in conventional oral proceedings, witnesses are being fitted up with in-ear hearing aids? I don’t know, I’m not a litigator, or an expert in preparing witnesses to testify in “open” court. Is anybody there?

    Where you and I, Attentive, might differ is on the importance of the “atmosphere” in the room where oral proceedings are held. I would hope that Boards and Divisions are not prejudiced by their subjective feelings that one party is confident of winning and the other side is scared. This is not a good thing. Such prejudice is lessened, when the proceedings are conducted by ViCo.

    The point about trials in England is, of course, that the judge comes to the bench after 20+ years of serving as an advocate. No advocate pulls the wool over the eyes of a judge in England. The judge knows full well all the psychological tricks played by clever lawyers. That’s one of the most important factors that enable a court to decide a case “justly”. Then, of course, there’s the point that, in England, on appeal, the facts are more or less sacred, and not reviewable on appeal. The debate at appeal level is dry and legal, there aren’t any witnesses, and for those very reasons, few cases go to appeal. All very different though, at the EPO. To be frank, I’m sceptical whether judges at the EPO will be alive to all the tricks that lawyers can play, in rooms hundreds of Km distant from where the TBA members are sitting, during the course of a ViCo.

    1. Max, your comment regarding another poster is beneath contempt.
      On the point of the UK judge requiring the prescence of the witnesses, please read https://www.bailii.org/ew/cases/EWHC/Patents/2020/2562.html

      As another aflicted by declining hearing, the use of the volume control in ViCos is a godsend, on a level of having simultaneous translation provided but listening to the original language through the headphones.

      1. Blue, you amaze me. As somebody on one of the U.S. patent law blogs pointed out to me many moods ago, everybody has an agenda. Read Robot and ponder (like I did) what their agenda might be. With your “beneath contempt” dismissal of my words you risk being thought of as a workmate of Robot.
        As for your Link to the case in England, it notes that the number of persons representing each party, physically in the room with the judge, was capped at six. What is your point?

        1. An earlier comment:
          “In England, the Court Service is making heavy use of ViCo but I cannot imagine a full trial of the action being performed in England by ViCo, if only because of the centrality to that trial of the cross-examination of witnesses in front of the eyes of the judge. One shudders to think of the opportunities for putting words in the mouth of the witness, if that witness is visible to the judge only over a video link.”
          The judgement of Colin Birss:
          “Two witnesses attended in person to be cross-examined and the other four attended by the video conference system. Some participants were physically situated in England and Wales and others were overseas, including in the USA. The four remote witnesses were all in the USA.”

        2. Just copied from the ECHR website…

          On account of the Covid-19 health crisis the Court has had to introduce special measures for holding its public hearings, valid until further notice. All oral submissions will be made by videoconference, and hearings at the Human Rights Building will not be open to the public. However, since all hearings are filmed in their entirety, the video recording will be available on the Court’s website the day after each hearing.

    2. Thanks Attentive. You and I know who each other is, but neither of us knows who “Patent Robot” is. For the time being, I am assuming he is a shill, bought and paid for by EPO management…But perhaps even now, in conventional oral proceedings, witnesses are being fitted up with in-ear hearing aids? I don’t know, I’m not a litigator, or an expert in preparing witnesses to testify in “open” court. Is anybody there?

      MaxDrei, pleas consider that the EPO just deals with patent validity and has only two instances (I do not consider petitions as a real third instance), flawed because of art. 15 EPC. Outside the EPO there are real tribunals dealing also with patent infringement, trade secrets, copyright, designs, etc., even in criminal cases, where oral proceedings last a few hours, not days as at the EPO.

      I cannot see a better “court” where ViCo should be compulsory.

      1. Well, Robot, that’s certainly revealing of your position. At the EPO, you assert, because of the presence within the EPC of its Article 15, henceforth it should be made compulsory to hold ALL oral proceedings by video conference. Are you envisaging an Executive Order order from the Office of the President, directed at the BoAC?

        Might you give me a reply to my question to you on the Edwards case in England? You cited it as evidence for imposing ViCo on full trials and I pointed out in reply that the judge in that case capped at 6 the number of persons from each party that could be physically present with him in the room.

        My position is that ViCo is OK, but only to the extent that it does not prejudice the over-riding objective of dealing with cases justly. See the English Rules of Civil Procedure and the attendant case law, to find out what “justly” means. Speed is one factor, which is why C19 is hastening the use of ViCo. But compulsory, for all proceedings, now and for ever? Is that what you argue? It makes me even more sceptical about your “agenda” here, and who is driving it.

        1. As I wrote several times here, I think that ViCOs should be compulsory until the Covid emergency is over, after which all participants (including EPO/BoA members) should be free to choose whether to attend in person or by ViCo.

  13. To add my two cents to ViCo hearings from a national – Dutch – perspective…

    Dutch patent litigation, taking the continental approach, is very much a written procedure. Filing briefs and evidence according to fixed deadlines, culminating in a court hearing of half a day (shorter or longer, depending on the cases). In these COVID-19 times, nothing changed, except for the hearing. And, I would add, in some aspects for the better. The hearing used to include 1 1/2 hour for each party to recapitulate their case, often just pleading their written notes, followed by some back and forth with the court (and – if matters were particularly in dispute – some subdued but, often, polite yelling). Now, the Dutch patent court having switched to ViCo, the hearings are reduced to a Q&A of the court only and a short reply and rejoinder from the parties. The 1 1/2 hour written notes are filed two days before the hearing, while the defendant can file a written reply to the plaintiff’s notes before the hearing (though this has not been the rule in all cases; the procedure has been evolving).

    Some pros? At the hearing the court seems – in my, granted, limited ViCo experience – to get to the heart of the matter (at least how they see it) more openly and quickly. Skipping the 2x 1 1/2 oral pleadings, and putting their finger on where it hurts. It reminds me of the German style hearings, where the court starts to provide its – ‘preliminary’ – view on the case, and sets a hurdle for the party who did not convince them in the written part of the proceedings. A good presiding judge will make sure all parties are given sufficient time to answer the court’s questions, argue- within procedural limits – any remaining points, and finish the hearing within a reasonable time (and shorter then pre-ViCo).

    Some cons? Aside from the (self-serving) interest of a litigator wanting to plead his/her case to the fullest extent, the hearing does become static. One cannot look the judges ‘in the eye’ or really see their response to the arguments pleaded (sometimes simply because the camera set-up results in small black robes without distinguishable faces). A fair hearing (or, in crudely translated Dutch/English, a hear and rebuttal) should not be limited to what is expressed orally, but also include what is expressed physically. The latter can be hard to read in the technological translation of a ViCo. Is this a minor point (procedurally speaking)? It seems, but I think not, at least not so much as to make ViCo’s mandatory (e.g. even if one party wants a hearing in person) in a post-COVID era.

    That being said, these times have shown the Dutch court to be flexible and willing to ‘innovate’ in the interest of parties getting a decision within a reasonable time. And, some of the current experiences may be used if we can get back to normal. For example, continue with filing written pleading notes, start the – physical – hearing with a Q&A, but maybe provide the parties with some more time to make their arguments then in these ViCo-settings.

    So much for the Dutch experience…and all of this depends on having a good ViCo connection. Not pleading your case from your home office while your kid is draining the bandwidth with playing some multi-person shooter game. I have seen the disadvantage of a bad connection – not-gaming related, probably – in a recent EPO case. It does mess up the flow of your argument and your case.

  14. Is anyone aware of an appeal case where an applicant – in response to summons to hold oral proceedings by video-conference – has unsuccessfully requested to hold face-to-face oral proceedings and questions the competence of the president to impose oral proceedings by ViCo / alleges a violation of the right to be heard?

  15. Dear Max Drei,

    Please do not be mistaken. When I have been talking about the atmosphere, I never inferred that a BA or a Division would or should be prejudiced by subjective feelings about the parties. This would be totally wrong! After all, whether for a BA or a division, its members will get their money whatever the outcome will be. A BA or a division should simply make everything possible to come to a reasonable and defendable decision. And as they are not a machine, even if everything else is identical, the coin might fall on another side and it is good so.

    In all OP I could witness, there was always a certain tension palpable but this is to be noticed and should not influence the decision taken. This is what I call “atmosphere”. May be the word is not right, but I cannot find a better one. The tension is due to the presence of the parties and the interests they represent. The fact that one is not present in a ViCo such an atmosphere is absent. This is my own perception in all ViCos I have participated. Even when teaching you do not come to the same involvement of all, be it teacher or pupils.

    What seems more important, and nobody has commented on this point, is that the members of the deciding body should sit together and not sit in totally different locations. Such a dematerialised set up does by no means reflect the proper functioning of a division or of a BA. At the beginning of examination in The Hague, there were divisions sitting in both locations. If there was no reason to meet face-to-face the dealings within the divisions were extremely limited, not to say inexistent. When people met in person things were totally different. And by making ViCo mandatory, this trend will increase. Just have a look at what the girl from Ipanema has written as comment in Mr Bausch’s blog dated 24.11.2020.

    If Anon Y. Mouse thinks that there is nothing in Art 116 which makes the presence of the parties and of the deciding body in one of the same room, then he should look at the “Travaux Preparatoires” ending in Art 116 as we know it.

    Even if ViCo were something (like the Internet) not foreseeable in 1973, a normal and reasonable interpretation according to the Vienna Convention on the Law of Treaties by taking into account said “Travaux Preparatoires” means that parties and deciding body sit all together in the same room. In a ViCo you can be listened to and seen, but will you really be heard? I have my doubts.

    If parties wish OP in form of ViCo it is their right, but at least the deciding body should sit together. This is the guaranty that the parties are not merely listened to but also heard.

    It is clear that we are in an emergency situation, but even then Vico are not “the only technical possible way to have oral proceedings for the next years”. I therefore still disagree with Patent Robot. The overall time to deal with a file might be extended if the file is not dealt with swiftly, but if this the wish of a party, who is the EPO to say we know what is good for you and everything is to be done immediately.

    Nothing against OP in form of ViCo if the parties wish so, but the members of the deciding body should sit together. It does not mean to be against progress when requesting such measures. Nobody want to be an Amish in the patent world, but the checks and balances should be there.

    Once again, if the philosophy of the EPC is to be changed in such a way that the EPO and the procedure before it should actually be dematerialised, this is a decision to be taken by the member states of the EPC and not the management of the EPO or of the BA.

    It is too easy to take the opportunity of a real health crisis to actually dismantle the EP system. If this the hidden agenda of some people, who should eventually profit from it? We all know that for a while the tail has been wagging the dog, but time has come to stop this nonsense!

    1. “It is clear that we are in an emergency situation, but even then Vico are not “the only technical possible way to have oral proceedings for the next years”. I therefore still disagree with Patent Robot. ”

      Ok, so if a party refuses the use of ViCo what should the BoA do? Wait until the Covid emergency is over?

  16. To Anon Y. Mouse and Patent Robot: before making unsupported (ie unreasoned), sweeping statements about interpretations of Article 116 EPC that you consider to be perfectly reasonable, please do me a favour and conduct a thorough analysis of the results of the various methods (under the EPC) for interpreting that article.

    You may, for example, wish to consider the context of the phrase “oral proceedings” (eg in that those should be “before” the EPO department in question). Teleological and historical considerations will be important too. You may also wish to consider the impact of prior Board of Appeal interpretations of Article 116 EPC.

    Whilst interpretations based upon a “not expressly forbidden” standard may now be all the rage at the EPO, I would also encourage you to consider whether that standard has any legal basis under the EPC or the Vienna Convention.

    1. Since you certainly know the Travaux Préparatoires and the Vienna Convention better than me, could you please explain me according to which articles/pages thereof oral proceedings should be interpreted as being proceedings held in person? Thank you!

  17. To the two Observers:

    I am more on your side than you seem to think. Please do not resort to high-handed condescension or personal abuse.

    My point is that oral proceedings by ViCo should not be imposed against the will of parties to proceedings, nor should they become the default. On that we seem to agree. However, I think there is a role for ViCo proceedings *for parties who are willing to agree to them*.

    My remarks concerning Art. 116 are merely that – contrary to you – I do not see a strong rationale for interpreting the EPC itself in such a manner as to exclude ViCo. Whether based on the literal wording “oral proceedings”, or based on the Travaux Preparatoires, it seems that no definitive conclusion can be drawn on this matter. Nor do previous (pre-pandemic) rulings of the Boards excluding the possibility of ViCo establish a precedent meaning that ViCo must always be excluded. Were the EPC so rigid as you propose, or the Boards’ previous rulings so binding, then surely the conclusion would have to be that *all* ViCo hearings that have taken place throughout the pandemic are illegal. I do not believe that either of you would endorse that conclusion, but it is nevertheless the logical conclusion of your arguments.

    Legal arguments around the interpretation of Article 116 EPC appear to me to be a dead end in the absence of a clear-cut answer. Is it not better to argue to the EPO and the Boards that mandatory ViCo should be resisted on pragmatic grounds such as those so persuasively articulated by the submissions detailed in this post, and by the collected commenters here?

    1. I agree with you, with the substantial difference that in my opinion ViCos should be imposed during the current emergency.

    2. Anon Y. Mouse: if my frustration (at the lack of attention to detail that I perceived on your part) came across as condescension, then I apologise.

      I would point out, however, that you do appear (at least to me) to have a continuing problem regarding lack of attention to detail. My position is not, and has never been, that Article 116 EPC excludes the possibility of conducting OPs by using VICOs. Instead, it is that Article 116 EPC confers upon a party to proceedings before the EPO an ABSOLUTE RIGHT to appear in person in order to present their case orally. In this regard, please see my comments above quoting from T677/08. (For more context to the background to my concerns, see my comments from 30 November on a different thread: http://patentblog.kluweriplaw.com/2020/11/27/oral-proceedings-by-videoconference-some-light-reading-at-the-end-of-a-hot-debate/)

      Of course, a right held by a party can be waived by that party. I therefore see absolutely no problem with VICOs being conducted with the CONSENT of the relevant parties to the proceedings (though, in common with Attentive Observer, I have concerns about different members of the ED, OD or Board of Appeal participating in such proceedings from different locations that are remote from the official location of the department or Board in question).

      On the other hand, I have a BIG problem with the EPO acting ex officio to effectively waive rights held by parties to oral proceedings. There is simply no legal basis for this.

      From your comments, it seems that our respective positions on this issue may not be that far apart. The most significant difference between us seems to be that, because of the pandemic, you are less concerned about the EPO imposing the use of VICOs against the wishes of one or more parties to oral proceedings. Whether “emergency” measures, such as the imposition of VICOs, can be justified DURING the pandemic is a potentially arguable point (though I note that it is a bit rich for the EPO to now worry so much about the duration of appeal proceedings when, for so many years, the (previous) EPO President deliberately prevented the Boards from reaching a full complement of members). However, I would point out that the proposed amendment to Article 15a RPBA does not include any explicit or implicit limit on its period of validity. This means that the change is intended to be PERMANENT. If you believe otherwise, then you have simply not been paying enough attention to the EPO’s actions in recent years.

      Patent Robot: he who asserts bears the burden of proof. Frankly, I cannot believe that you are cheeky enough to ask me to do your homework for you. What a wind-up merchant!

      1. Here is my homework: Art. 116 EPC does not impose oral proceedings to be held in person so that compulsory videoconferences do not violate Art. 116 EPC. There is also no G decision on this.

        Also the ECHR imposes now videconferences: do you think that they are violating human rights?

  18. Travaux Préparatoires, IV/6514/61-D, page 83:

    “Die Gruppe erklärt sich mit einer mündlichen Verhandlung grundsätzlich einverstanden. Sie wird vom Präsidenten aufgefordert, zu der Frage Stellung zu nehmen, ob diese Verhandlung obligatorisch oder fakultativ sein soll. […]
    Die Gruppe genehmigt einstimmig die fakultative Lösung. Die obligatorische Lösung scheitert nämlich an den Schwierigkeiten, die such aus den grossen Entfernungen im Geltungsbereich des europäischen Patents, aus den hohen Kosten und aus den Sprachproblemen ergeben”

    Could this reference to the large distances / costs involved with oral proceedings been seen as a clear indicator that during the Travaux Préparatoires oral proceedings have always been considered to be face-to-face meetings?

  19. @ Patent Robot

    Try to use common sense when reflecting on the meaning of “oral proceedings”. Stating in an apodictic way that nowhere it is said that it should be in person is beside the point and not helpful.

    It is not if case is held back for a year or so that the whole system will collapse. And if a party is once proprietor it can become later opponent. I therefore think that a fair balance of the interests of the parties can be given.

    @ Anon Y. Mouse

    There is from my side no “high-handed condescension or personal abuse”. If you think this I am sorry.

    If parties agree to have OP as ViCo, who am I to decide differently? However even if form of a ViCo, the deciding body ought to sit together and decide collectively on the spot. That in case of single judge, a ViCo is possible is not at stake.

    When the body is necessarily composed of three members, even five in some cases in appeal, having all the members disseminated in different locations is not what one would understand as a collective deciding body. The exchanges cannot be the same as if all members sit together. One of the comments one hears regularly is that the dealings in ViCos are mainly with the examiner in charge or the rapporteur. This is inevitable, but is the negation of the notion of collective discussion.

    What I insist upon is that we leave in a legal environment and if the procedure before the EPC is to be changed in the drastic way presently pushed by the management of the EPO and of the BA, it needs a solid legal basis. This basis is presently absent for the new procedures the EPO and the BA want to push upon the users of the system.

    If all parties agree to have OP in form of ViCo, there is nothing against such a move provided the legal basis to do so is there. Art 10 and Art 116 do however not give the powers to the head of the EPO to take such far reaching decisions. Those decisions change the whole philosophy of the EPC when looked at the light of the Vienna Convention of the Law of Treaties. The same applies to the management of the BA. Nothing allows the BoAC to decide such changes on its own.

    The problem induced by those changes is that it eventually ends up with a complete dematerialisation of the EPO. Is this was the users want? Members of first instance divisions and of boards sit in different locations all linked electronically. Nothing against using modern means of communication, but the legal basis has to be there.

    Nobody wants to be called the Amish of the patent world. But all changes have to be correctly reflected and all the pro and cons openly discussed. Here it is a decision which cannot even be discussed from the side of the head of the EPO. At least the BA asked for comments, important is however what they will do with the comments. In full knowledge of what happen with the RPBA20 it have my idea.

    It would be possible to introduce new rules of procedures relating to OP in form of ViCo by adding few articles in the rules of proceedings. However we all know that for quite a while the tail has been wagging the dog and the AC is gullible to anything served to it by the head of the EPO. This way should thus be avoided.

    In order to bring in such a drastic change in the proceedings leading to a complete dematerialisation of the EPO on the way would be to call a diplomatic conference. Before a diplomatic conference it is high time to start with a conference of ministers of the Contracting States responsible for patent matters as provided in Art 4a. EPC 2000 is in force since 2007 and we should be on the verge of the third conference of this kind. How come that in spite of the wording “shall” in Art 4a no such a conference has ever been called? The tail is wagging the dog is the only reply possible.

    A diplomatic conference could also deal with what was called the “second-basket” when closing the Diplomatic Conference. I think here of Art 52(2)-(3) and Art 53, b). This would avoid the EBA to have to come up with a “dynamic interpretation” of its own case law in order to please the head of the EPO and the AC.

    At the EPO the legitimate expectations of parties are well protected. All OP having taken the form of ViCo in the absence of corresponding procedural rules cannot thus not be declared void and null. This would not be fair to the parties, but it does not dispense the EPO and the BA to give those procedures a sound legal basis. I do not think this is asking too much.

    In all contracting members of the EPC when new procedural rules are introduced, they are under the control of the parliament and of the judiciary. Taking the pretext of a real crisis in order to force such new procedures upon the users of the EPO is also not a way to take care of the legitimate expectations of the users.

    Beside CIPA and Patent Robot, I do know very few people who are fully in favour of OP taking mandatorily the form of ViCos even after the pandemic.

    The EPC has been devised for its users, not for the management of the EPO and of the BA.

    1. I never wrote that ViCOs should be compulsory “even after the pandemic”.

      So you propose to stop all OPs until the emergency is over, when a party does not want ViCo?

  20. Being prissy, and English, I’m still obsessed with the over-riding objective to deal with cases “justly”. Suddenly it occurs to me that ViCo might help towards that objective.

    I mean, consider how disputes on the football field are decided, these days. Exhaustive video evidence. A special room, full of screens, where a Fourth Official can replay the disputed facts until sure what Decision to hand down. Now imagine a TBA at the EPO, debating within itself what decision to hand down. Will the video evidence of the proceedings, available to recall and replay at will, help the members of the TBA to deal with the case “justly”. I rather think it might. Any disagreement within the membership can then be resolved by the video evidence rather than by which TBA member (Chair or Rapporteur) has the most forceful personality. The Legal Member can be a more forceful Tie-breaker vote, once they can rely upon the evidence of their own eyes and ears, personally watching the video replay of the key moment, as often as necessary.

    We are patent experts. We of all people should be open to new technology, so long as we remain true to the ideal of justice, not only being done but being seen to be done. Let Europe set an example to the rest of the world. We owe it to ourselves, our jurisdictions and indeed, the rest of the World, to set a good example, to provide in Europe just as good a future-proof procedural beacon to follow as the beacon of the EPC and its case law is, as a beacon, these past 50 years,for the substantive law of patentability.

  21. To those who propose that the meaning of “Oral Proceedings”, interpreted respectively in light of the Travaux Preparatoires, can only mean “oral proceedings with all persons physically present in the same room” –

    from where in the EPC and/or the Travaux Preparatoires does it then emerge that the EPO may deviate from this – apparently strict – interpretation in times of emergency?

    You argue essentially that the absence of any discussion of ViCo in the EPC or the Travaux Preparatoires means that the possibility was not foreseen, and must be excluded. But neither do the EPC or the Travaux contain any discussion of an emergency deviation from this practice, as far as I know. So the same reasoning means that also the use of ViCo in an emergency would not be allowed.

    Either your interpretation is correct, and ViCo oral proceedings shall not be permitted, even in an emergency. Or your interpretation is wrong, and ViCo proceedings shall not be implicitly or explicitly ruled out by the EPC, whether in emergency times or otherwise.

    Please explain how you instead come to the “half-way” position that emergency ViCo is permitted but non-emergency ViCo is forbidden, indeed “alters the EPC”.

  22. I do not exclude oral proceedings in form of a ViCo. Nobody wants tobe the Amish of the patent world, and be opposed as a matter of principle to take into account new ways of communication.

    A number of conditions have however to be fulfilled:
    – they need a legal basis which is presently not there; it cannot be left to the head of the EPO and of the BA to decide such a drastic change in procedure or not;
    – it should be left to the parties whether they want this form of oral proceeding; it cannot be left to the discretionary power of the deciding body;
    – it should not lead to a dematerialisation of the EPO, which inevitably will occur if this form of oral proceedings is mandatory and/or left to the discretion of the deciding body;
    – the deciding body is to sit together in the same room in order for a truly collegial decision to come out.

    Taking pretext of a crisis situation to fundamentally change the procedure before the EPO goes way beyond the powers delegated by the contracting states to the management of the EPO and of the boards.

    This is not too difficult to understand, or does it go beyond the realm of understanding of the readers of this blog? If yes we can only despair.

    Btw, no need for ViCo to keep a trace of what has been said. The whole proceedings can be recorded in extenso. This is already the case when hearing a witness. It would also clarify what has actually happened during the ViCo. A copy of the tape could be given to the parties and the original kept by the deciding body. It would also save drafting summarised minutes which can be the cause of problems.
    Dear Max Drei, here you have the beacon you are looking for. And this can be implemented at the next meeting of the AC.

  23. As regards the Travaux Préparatoires, document IV/6514/61 summarises on p. 83 the results of the third session of the Working Group “Patents”, held in Brussels from 25 September to 6 October 1961, during which the Working Group discussed Article 96a of the First Preliminary Draft of the Convention, concerning oral proceedings before the Boards of Appeal of the future European Patent Office.
    In response to the question, asked by the President of the Working Group, whether oral proceedings before the Boards of Appeal should be obligatory or optional and whether it could be left to the Boards to decide whether to appoint a hearing, the members of the group took the following position (reference is made to the German version IV/6514/61/D): «Die Gruppe genehmigt einstimmig die facultative Lösung. Die obligatorische Lösung scheitert nämlich an den Schwierigkeiten, die sich aus den grossen Entfernungen im Geltungsbereich des europäischen Patents, aus den hohen Kosten und aus den Sprachproblemen ergeben» (my translation: «The group unanimously approves the optional solution. The compulsory solution fails because of the difficulties arising from the large distances in the territorial ambit of validity of the European patent, the high costs and the linguistic problems»).
    There was thus unanimous agreement, as early as 1961, that oral proceedings before the Boards of Appeal were meant to be proceedings in person, as may be understood from the rejection of the obligatory solution, which would have forced parties and representatives to travel, with attendant high costs.
    However, in the final draft of the Convention approved at the Munich Diplomatic Conference, it was stipulated that oral proceedings must take place (cf. Article 116(1) EPC) if a party requires them: the obligatory solution was thus chosen, which clearly means that the interest of a party to present its case in person was considered to prevail and to have more weigh over the disadvantage of having to travel large distances with the attendant costs.
    As concerns the argument that Article 116 EPC does not specify where oral proceedings should take place, I note the following.
    In the decision T 1012/38, the deciding Board stated that «the various expressions used in paragraphs 1 to 4 of Article 116 EPC, namely “before the same department”, “before the Receiving Section”, “before the Receiving Section, the Examining Divisions and the Legal Division” and “the department before which the proceedings are taking place” can be read as a reference to the function of the department or Division as a deciding body. If the relevant department has to exercise its function in oral proceedings, it follows that the department has to be located at a specific place in order to conduct those oral proceedings. For this purpose, the Divisions have to allocate hearing rooms and they have to be present themselves at the scheduled times. Thus, the word “before” in the above expressions also implies a location “where” the proceedings have to be carried out, namely at least at the place where the relevant department is located […]». Please note the reference to a physical space – hearing rooms.
    On the basis of this analysis of Article 116 EPC, the deciding Board in the decision T 1012/03 concluded, under point 38 of the grounds, that «the term “oral proceedings before the respective department” in Article 116 EPC not only concerns the function of the deciding Division but also the location where oral proceedings are to take place».
    In discussing its interpretation of the word «before» as designating the place where the relevant department is located, the Board stated at the end of point 37: «This interpretation was never questioned when the Receiving Section was set up exclusively in The Hague. It was self-evident that the parties or their representatives would have to travel to The Hague if the Receiving Section summoned them to oral proceedings pursuant to Article 116(2) EPC».
    To maintain, as apparently held by the drafters of the explanatory remarks to new article 15a and in some of the comments here, that since Article 116 does not explicitly define the place where a hearing is to take place, oral proceedings could also be held by video conference, is pretty much the same as stating that, since Article 56 EPC does not specify who the skilled person is, this concept could mean anything; or that, since Article 122 does not say what the notion of “due care” means, one could interpret this concept as it pleases him.
    This is nonsense, from a legal point of view. Legal provisions need to be interpreted and that is precisely what the Boards do and did in T 1012/03.

    1. “To maintain, as apparently held by the drafters of the explanatory remarks to new article 15a and in some of the comments here, that since Article 116 does not explicitly define the place where a hearing is to take place, oral proceedings could also be held by video conference, is pretty much the same as stating that, since Article 56 EPC does not specify who the skilled person is, this concept could mean anything; or that, since Article 122 does not say what the notion of “due care” means, one could interpret this concept as it pleases him. This is nonsense, from a legal point of view. Legal provisions need to be interpreted and that is precisely what the Boards do and did in T 1012/03.”

      Do you mean to imply then that the previous interpretation of the Boards is set in stone? This does not seem in keeping with the general approach under the EPC under which (as you surely know) there is no strict binding precedent as such. Indeed Article 56 (to take your example) does not specify the skilled person. Nor does it specify what is meant by “not obvious”, but at least on this point, the Boards have been allowed to develop their case law on what is “not obvious” over time, even at the expense of changing their interpretation of the EPC in response to new factual situations arising in examination of applications or oppositions.

      Does the new factual situation arising from the pandemic not also, in your view, create the space for a new interpretation of Article 116?

      Perhaps a referral to the Enlarged Board is needed to settle this, though the pandemic situation may already be history by the time it is decided.

    2. Applying your reasoning, ViCo oral proceedings even during the pandemic are contrary to the interpretation which you propose based on document IV/6514/61 and T 1012/03. Does not that then mean such (emergency) ViCo oral proceedings are also forbidden?

      There still remains a fundamental gap in the logic of the position of those who oppose ViCo on purely legal reasoning. Nobody has yet convincingly filled this gap. Either your preferred interpretation is fixed, and ViCo proceedings are not permissible whatsoever, even in pandemic times. Or it is not fixed, and can therefore evolve, even to the extent of permitting ViCo proceedings. In that case the debate then is around the boundaries of when ViCo should and should not be allowed. This is a practical question, not a question of interpretation of the EPC itself. From my side, it seems we are indeed in this latter situation.

  24. The decision I quoted in my previous comment is T 1012/03 (there is obviously no “T 1012/38”)

  25. Debating what “oral” means reminds me of learned debates in England and in the USA. When Justices of the Supreme Court insist on giving the words of the 18th century Constitution of the USA a literal meaning, it makes me feel sick. I prefer the judges of the UK Supreme Court, who adopt a more pragmatic, sensible and useful approach, asking what the writer of the statutory provision was using those particular words to mean.

    For example, when faced with a word in a 19th century Statute, say the Road Traffic Act, and its references to a “carriage”, should we construe it as something horse-drawn (as was envisaged at the time of writing) or can we interpret it as a reference to a passenger-carrying wheeled vehicle, and not of necessity one drawn by horses? In other words, is an automobile a “carriage”?

    Likewise here. I think I know the difference between “written” and “oral” proceedings. Sorry folks; I think it has nothing to do with the place where each speaker happens to be standing.

    My concern lies more with how the EPO reaches its decision. Imagine a jury trial, with each of the 12 members of the jury 500 miles away from every other jury member. No thank you. They MUST be all in the same room.

    The OD and the TBA are just like a jury because they also serve as the mechanism to determine what are the facts. All members MUST be physically in the same room. Justice must not only be done but seen to be done.

  26. Thanks to A. Cossu to once more make things abundantly clear.

    The Travaux Préparatoires are very clear as far Art 116 and Art 18,19 and 21, 22 are concerned. The BA regularly resort to Art 31 and 32 of the VCLT. It was suspicious that for Art 15a RPBA20 no reference to the VCLT was made.
    The reasons for this are obvious: Art 31 and 32 VCLT were not fit for the purpose and would even lead to the conclusion that the justification for Art 15a RPBA20 goes against these articles and are against the spirit and the scope of the EPC.

    The whole justification for Art 15a RPBA20 is to be taken, not just with a pinch of salt, but a whole vat of it.

    What is valid for Art 15aRPBA20 and the BA applies mutatis mutandis to OP in form of ViCo before first instance divisions. There are as little justified than Art 15a RPBA20.

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