In its much-awaited decision in case G 1/21, the Enlarged Board of Appeal (EBA) of the EPO has evaded to answer the high-profile question whether videoconferencing against the will of (one of) the parties is compatible with the right to oral proceedings.

Last March (case T 1807/15), a technical board of the EPO had referred the question to the Enlarged Board of Appeal, the highest judicial authority under the European Patent Convention (EPC). It was: “Is the conduct of oral proceedings in the form of a videoconference compatible with the right to oral proceedings as enshrined in Article 116(1) EPC if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference?”

The case has drawn a lot of attention. Many law firms, lawyers associations and companies argue that it is incompatible with the EPC that oral proceedings by videoconference can be imposed by EPO Boards even if the parties don’t want it, as a new Article 15a of the Rules of Procedure of the Boards of Appeal (RPBA) provides. The Article entered into force on 1 April 2021.

No less than 47 amicus curiae briefs were filed in case G 1/21 (see this earlier post), many of them criticizing Article 15a RPBA and also the hasty way a ‘new normal’ was introduced by the EPO management without clear explanation. Oral proceedings by videoconference have become much more common due to the Covid-19 pandemic, but this doesn’t mean a general rule allowing the EPO to impose videoconferences  can be introduced, they argue.

Some also questioned the impartiality of the EBA, as its chairman Carl Josefsson and other members were involved in the introduction of the very Article 15a they had to decide upon. By interlocutory decision of 17 May 2021, Josefsson and another member of the EBA were replaced.

In today’s decision, the EBA circumvented the fundamental question of the compatibility of article 15a with article 116(1) EPC, and restricted itself to a decision concerning a situation of oral proceedings during a ‘general emergency’. In a press release it stated:

“In G 1/21 the Enlarged Board of Appeal limited the scope of its answer to the more broadly formulated question referred by Technical Board 3.5.02, by confining its order to oral proceedings that are held during a period of general emergency impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises and moreover are conducted specifically before the Boards of Appeal.

Accordingly, in its order the Enlarged Board did not address the question whether oral proceedings by videoconference may be held without the consent of the parties in the absence of a period of general emergency. Nor did the order address the question whether oral proceedings by videoconference may be held without the consent of the parties in examination or opposition proceedings before the EPO’s departments of first instance.”

And this more restricted question was answered in the affirmative:

During a general emergency impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference.”

The decision means the ‘hot potato’ and the uncertainty are still there. One wonders why the EBA, whose main task is to ensure the uniform application of the EPC, chose to restrict its judgment instead of grasping the opportunity to create clarity about this important issue. In its press release, the EBA said that the “reasons for the decision will be issued in writing in due course and will subsequently be publicly available in the decisions database of the Boards of Appeal”.


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18 comments

  1. I would not be as negative for the time being and would wait for the reasons.
    As I am an optimist, for the time being, I rather feel the glass is half-full rather than half-empty.

    It is clear that EPO’s management will be making any move in order to keep mandatory OP by ViCo as otherwise the New Normal cannot be implemented.

    What is however annoying is the recent tendency of the EBA to rewrite the questions so as to not answer the referred questions. This propensity should brought to an end so that it does not end up by sanctuarising “dynamic interpretations”.

    Dynamic interpretations can change with time and instead of giving legal certainty they increase legal uncertainty. The founders of the EPC wanted to help legal certainty, but this aim seems to have disappeared.

  2. Unfortunately the EBA´s decision on a restricted issue only might leave the suspicion that the Board actually had an opinion on the broader issue – as actually raised by the generic wording of new Article 15a RPBA – which would not have met the Office management´s obvious expectations and that it simply did not dare to confront the latter.
    One more blow at the Boards independence?

  3. There is however another aspect which also plays an important role. According to Art 15a(3) RPBA20, when holding an OP by ViCo, or even on the premises, the deciding BA does not have to sit together at the same location. The problem at stake is thus broader and concerns as well Art 15a(3) RPBA20.

    Without mandatory OP by ViCo and the possibility of a BA to decide without sitting together, a similar measure cannot be put in place in the first instance. Without this double possibility, there is no New Normal!

    The problem is that it is difficult to find a proper basis in the EPC for this New Normal.

    This is a point of view which has been mentioned by two former VP1 in a publication of “Le Blog.du Droit Européen des Brevets”

    https://europeanpatentcaselaw.blogspot.com/2021/04/vers-une-nouvelle-normalite.html

    A “satisfactory” reply of the EBA in G 1/21 is thus of prime importance for the management of the EPO.

    Such a New Normal could however be established after amending the EPC according to Art 172, taking duly into account that Art 164(2) which provides that in case of conflict between Rules and EPC, the latter prevails. So the AC is, in principle, not free to amend the Rules at will.

    Last but not least, there is no trace of OP by ViCo, and even less in mandatory form, in the EPC and its Rules of Implementation. This makes things even more complicated.

    During the OP of 02.07., the president’s representatives claimed that it was possible to amend the EPC by secondary legislation as exemplified in G 3/19. This argument is neither convincing nor compelling, as there exists a proper mechanism to amend the EPC.

  4. Once upon a time I was told, by a person very much in the know with decades of experience within the European institutions, that part of the reason that CJEU judgments are often so brief and/or so impenetrable is that, in the absence of a tradition of allowing different judges to give dissenting opinions (or even opinions which agree with the conclusion but disagree as to the reasoning), any points which are not the consistent view of the majority of judges are excluded. Thus, the overall judgment reflects only the essentials of the points on which a majority of the panel could agree. This tends to make the decisions very fact-specific, and makes the rationale behind the decisions quite impenetrable, never mind establishing a clear test or broad principle that could be applied to future cases.

    I wonder whether something similar is at work in recent EBA decisions at the EPO, and in particular in this one. That the order is so notably limited to approving something which hardly anyone had questioned, when the discussion at the hearing and the questioning from the EBA members was so wide-ranging, makes me wonder whether the members of the EBA simply could not agree among themselves on how to address the broader points that were at stake.

  5. @AnonY.Mouse,
    When looking at Art 18(2) RPEBA the possibility of a dissenting opinion of a minority of members of a panel is foreseen. However the dissenting opinion will only be published if the majority agrees.
    Neither the names nor the extent of the minority will be published.
    When looking at Art 16(1) RPEBA only members of the panel may be participate in the deliberations, but other officers(?) can be present if authorized by the chair of the panel. I understand that the registrar might be present, but the wording does not exclude the presence of other members of the BA.
    As the present chair of the panel is a subordinate it cannot be excluded that the chairman’s arm might be twisted to accept the presence of more than the Registrar.
    In view of the history of the case anything could this happen.
    It is clear that with the original quatuor there was no surprise as to what the decision will be.
    The power of nuisance of the remaining duet is not be ignored, and the present order is probably the result of a compromise.
    We really have to wait for the reasons to know what is the real opinion of the EBA.

  6. It is very likely that as suggested by previous commenters, there was no consensus within the EBA for a position addressing the full scope of the referral and the restriction of the scope allowed common ground to be found.

    It should be no surprise for the issue of compulsory VICOs to be very divisive. Looking at the national courts competent on patent issues, there is a clear divergence in particular between UK and French judges, see this excerpt from « Patent cases decline across Europe but courts report increasing complexity » by K. Richter, JUVE Patent –July 12, 2021 :
    “In the UK, Colin Birss – at the time still at the High Court – had already conducted the first patent hearing via Skype at the end of March. As the lockdown eased last summer, the court also introduced a hybrid system. In Germany, Munich Regional Court held video hearings at an early stage. The 7th Civil Chamber conducted its first case at the end of April 2020.
    In France, however, this type of hearing has not become established for patent cases. In an interview with JUVE Patent, first president and judge at the Tribunal judiciaire de Paris, Nathalie Sabotier, acknowledged that judging a case purely by written submissions is, for patent cases, inadequate.
    However, in large proceedings where only a limited number of people are allowed in the courtroom, involved parties that are not actively part of the oral proceedings can join via video. For example, the two-day opening hearing in the dispute between Intellectual Ventures against Orange and Bouygues Telecom utilised this function.”

    It is ironic that the EBA’s response can be depicted – and criticised – as « infra petita » i.e. a a failure of the judge in civil proceedings to address an issue raised by a party. This is commonly expressed in EPO proceedings as a failure to satisfy a party’s « right to be heard ». Apparently BOAs are not entitled to such « right to be heard » in their referrals…
    Hopefully the reasons of the decision will bring insights and at least a modicum of predictability to EPO users.

    Regarding the contribution by former DG1 VPs Jacques Michel and Willy Minnoye on the “New Normal” cited by DXThomas, readers are advised that an English translation is available in T. Bausch’s blog post of May 11, 2021.

    1. In referral proceedings before the Enlarged Board of Appeal, the referring Board cannot raise issues at will. Rather, a decision on the referred question has to be required for deciding the case underlying the referral. Even less does the principle of party disposition govern the obligation of the EBA to answer referred questions. In its order, the EBA answered the question as required by the case pending in T 1807/15 and, at the same time, justified what was done in referral proceedings, i.e. holding oral proceedings by VICO. Otherwise, at least one of the external members of the EBA would presumably have been prevented from taking part.
      Nevertheless, the fundamental question will continue to exist after the pandemic and it may be expected that the reasons to be given for the order in G 1/21 will assist the Boards and the users in this respect. According to EBA case law, the Boards are not only bound under Article 21 RPBA to the order of an EBA decision but also to its essential reasoning. There may be good reasons why the EBA did not issue its reasoned decision within a few days. It is to be hoped that the Board finds a well-balanced solution which does not leave it to the EPO to decide what is good for the parties, as the President of the EPO seems to wish.

  7. If compulsory VICOs are compatible with the EPC during the pandemic, then they must also be compatible with the EPC after the pandemic, since the EPC does not distinguish the two situations, does it?

    1. No, that is certainly not true. Desperate times may require desperate measures. Think of it as an exception to a rule.

      1. The EPC contains some exceptions. So, which article of the EPC are you referring to? Which “rule” of the EPC are you also referring to ?

  8. Not sure whether they washed their hands like Pilate or whether they displayed wisdom like Solomn with this ruling. Time will tell.

  9. Based upon the letter from the opponent today, the wording of the EBA’s order may be even less helpful than it appeared at first sight.

    In essence the opponent interprets the phrase “a period of general emergency impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises” as meaning that it is only lawful to conduct “without consent” VICO oral proceedings before the Boards of Appeal when (1) there is a period of “general emergency” AND (2) the ability of the parties to attend in-person proceedings is actually impaired. Whilst it is certain that the EPO President will not agree with this interpretation, who (in the absence of the EBA’s detailed reasoning) can say that it is wrong?

    There are many, many other problems with the wording of the EBA’s order. My personal favourite is that it appears to explicitly permit “without consent” VICO oral proceedings only when THE ORAL PROCEEDINGS are conducted during “a period of general emergency impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises”. Thus, when issuing a Summons to oral proceedings, it appears that the EPO Boards of Appeal will need to know in advance whether the date set for the proceedings will still fall within a “period of general emergency …”. Crystal balls to the ready, it seems!

      1. Even a mind willing to understand would struggle to apply the EBA’s order to a wide range of different cases.

        For example, how should the beginning and end dates of a “period of general emergency” be determined? And even during such a period, why should what appears to be an exception to a normal rule (of in-person proceedings) be applied to parties who are, to all intents and purposes, completely unaffected by that emergency?

        I would imagine that many Munich-based attorneys would be perfectly willing and able to attend in-person hearings in connection with appeals against decisions of Examining Divisions. If the only party confirms that their ability to attend the proceedings is not impaired, I really do not see how a Board of Appeal can impose the use of VICO.

        If, on the other hand, you believe that impairment of the ability to travel should not be assessed on a party-by-party basis, then other problems of interpretation arise. For example, which countries are relevant to consider in connection with travel restrictions? Is it only Germany, or is it instead any EPC Contracting State? Or perhaps it is any country from which a party to any proceedings might, in theory, wish to travel from? Also, is the ability to travel “impaired” only by self-isolation / quarantine rules, or also by insurance / health risk issues?

        From this perspective, the EBA’s order is about as clear as mud.

  10. …and since the EPC does not stipulate that dogs cannot partipate in oral proceedings, I can take my dog with me to my next hearing. Your logic is unbeatable.

  11. The EBA has really taken us for a ride!
    It will be interesting to see what reasons this bunch of pseudo lawyers will bring to explain that the order only applies to OP before the Boards.
    When reading Art 116 I fail to see that it makes a difference between first instance and boards of appeal.
    The area of dynamic, i.e. politically wished interpretation, had made inroads at the EBA.
    It is tragic to see the how people meant to protect the EPC have become puppets on the strings of EPO’s management!
    Is it the price the BA have to pay to be allowed to come back to Munich?
    The EPO stinks to high heaven be it in first instance or at the boards. Shame on you all!
    The founding fathers of the EPC must turn like a gyroscope in their tombs!

  12. This comment sinks to the level so far known only from Techrights. Is it asked too much to wait for the reasons of G 1/21 before insulting the members of the EBA and the Boards in general in this way?

    1. It is, of course, important to await the full reasoning for the order in G 1/21 before reaching a conclusion upon whether the EBA has done a good job in interpreting the relevant provisions of the EPC. However, whilst I would not go so far as to insult its members, I think that, even without knowing the reasoning for the decision, there are a number of important points upon which it is perfectly reasonable to criticise the performance of the EBA.

      Firstly, the participation of the President of the Boards of Appeal at the beginning of the proceedings in G 1/21 was an outrage, not only because of his clear personal (ie career) interest in reaching a positive conclusion on the lawfulness of a provision whose creation and passing he masterminded, but also because it totally disrespected the separation of powers principle.

      Secondly, the EBA handled the Article 24 EPC objections very poorly. The first interlocutory proceedings should have been held in the presence of the parties and the information upon which the EBA based its decisions should have been shared with the parties in advance of the hearing on the matter. It is frankly unacceptable for a decision following an ex parte hearing to contain new (yet incomplete) information that points to possible new reasons to suspect partiality. It is even worse for the EBA to conclude that there is “nothing to see here” upon the basis of information that was not made available to the parties (or the public).

      Another failing in connection with Article 24 EPC is that the EBA only considered the objections of the opponent, despite being aware of numerous (differently reasoned) objections from amicus briefs. Those other objections should have been addressed. Even if one considers that the objections under Article 24(3) EPC were rendered moot by the exclusions of Josefsson and Beckedorf, the EBA should definitely have addressed the arguments that were raised under Article 24(1) EPC … not least because it is settled case law that ANY party can raise an objection under that ground.

      Then, of course, there was the procedural slip-up that led to the need for a second hearing on the merits. Being given lessons on procedure by a party to the proceedings is not a good look for the EBA.

      Finally, there is the wording of the order, which, as I have previously explained, is as clear as mud. For many parties seeking clarity upon whether their particular oral proceedings can take place in person, that order is about as much use as a chocolate teapot. On the other hand, the order’s lack of clarity (as well as its extremely narrow scope) will be a huge gift for the EPO President … as I have no doubt that he will take the approach that, for VICOs, anything is permissible so long as it has not been explicitly forbidden by the EBA.

      It is notable that all of the above-described failings of the EBA could easily be interpreted as being motivated by an inclination not to disrupt the EPO President’s “New Normal” agenda (or to displease either him or the President of the Boards). This could of course be ascribed to coincidence. Alternatively, one could question what the chances are of a truly independent EBA making so many (perceived) errors of judgement that all happen to favour the EPO President’s agenda.

      Against this background, it will (at least for me) take a truly impressive reasoned order from the EBA in order to dispel the bad smell that has clung to G 1/21 from day one.

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