The Enlarged Board of Appeal has now issued its long-awaited full decision in case G 1/21. Readers can access it here. The decision deserves a few comments.

The Enlarged Board’s advance publication of the order of the decision in July was viewed by many as a sort of cliffhanger. This was because the question answered by the Board was not a particularly controversial one. Even the overwhelming majority of the opponents of video proceedings agreed that special measures may be necessary during a pandemic. The big question always was what would happen when the pandemic has finally come to an end. The order did not answer this question, and the EBA’s spokespersons even raised the tension further by explicitly stating what the EBA’s order does not address:

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.

Cliffhangers are well known as literary devices in several medieval works and are routinely used in modern TV series. In One Thousand and One Nights Scheherazade narrated a series of stories to her King for 1,001 nights, with each night ending on a cliffhanger in order to save herself from execution. Before this background, I am relieved to report that the EBA’s full decision does not end with a further cliffhanger, but indeed sheds some light on the critical questions.

The EBA first turned to the referral question, finding it both too general and too specific. Too general for two reasons: Firstly, the case at stake was an appeal case, so the EBA concluded they had no need to also rule on oral proceedings before Opposition and Examination Divisions. Secondly, the case at stake clearly was a case during a pandemic where the referring Board only had the choice to hold oral proceedings by videoconference, or not at all (i.e. postponing the oral proceedings). The EBA thought that the situation after the end of the pandemic will be quite different, so there was no need to issue an “order” addressing this situation. Nonetheless, the EBA’s reasons allow, at least in my opinion, solid conclusions for both scenarios. The EBA also found the referral question too narrow, because it only focussed on Art. 116 EPC, whereas the EBA (and many of the amici curiae) thought that Art. 113 EPC also deserves a discussion. The EBA therefore reformulated the referral question by expanding it to all provisions of the EPC.

Having stated that, the EBA’s opinion can perhaps be summarized in five sentences as follows:

1. Video proceedings are oral proceedings within the meaning of Art. 116 EPC.
2. Video proceedings are currently not yet equivalent to in-person oral proceedings.
3. In-person oral proceedings are for now the optimum format (the “gold standard”).
4. Nonetheless, this does not mean that the right to be heard or the right to fair proceedings cannot be respected when oral proceedings are held by videoconference.
5. Parties have the right to choose the format of the oral proceedings.

The EBA concludes the following from the above:

45. The Enlarged Board holds that the parties have a fundamental right to oral proceedings that provide them with the opportunity to be heard in accordance with Article 113 EPC and Article 6 ECHR. Without doubt, in-person oral proceedings provide such an opportunity. As stated earlier, a hearing in person is the optimum format or, to use a term well known in the field of European patent law, it is the gold standard. It definitely fulfils the requirements of Article 113 EPC and Article 6 ECHR. It is also the format that the legislator had in mind when drafting Article 116 EPC. Therefore, in-person hearings should be the default option. Parties can only be denied this option for good reasons.

The EBA is also perfectly clear that EPO-internal administrative reasons do not qualify as such “good reasons”:

49. Secondly, there must also be circumstances specific to the case that justify the decision not to hold the oral proceedings in person. These circumstances should relate to limitations and impairments affecting the parties’ ability to attend oral proceedings in person at the premises of the EPO. In the case of a pandemic, such circumstances could be general travel restrictions or disruptions of travel possibilities, quarantine obligations, access restrictions at the EPO premises, and other health-related measures aimed at preventing the spread of the disease.This decision should not be influenced by administrative issues such as the availability of conference rooms and interpretation facilities or intended efficiency gains. It is the EPO’s responsibility to make available the necessary resources for facilitating the conduct of proceedings provided for in the EPC.

I must admit that I admire the EBA’s decision for this paragraph in particular. It has been a while since I last read a communication from an organ of the EPO that concedes certain rights to the parties and imposes certain obligations on the EPO management.

What will happen next?

While predictions are notoriously difficult to the extent they concern the future, I venture assuming that the Boards of Appeal will return to in-person oral proceedings as the rule after the pandemic. The EBA’s reasons are persuasive. Besides, many Boards have already resumed summoning the parties to in-person oral proceedings even before G1/21 came out.

This does of course not preclude oral proceedings by videoconference or hybrid proceedings at the request or with the consent of the parties. Volenti non fit iniuria.

The most interesting question will likely be what the EPO will do with first instance proceedings after the end of the pandemic. This remains to be seen. I am pretty convinced that the EPO management were planning to establish video proceedings as the “new normal” after Corona. The Enlarged Board’s order does not explicitly prohibit this, yet the reasons of the decisions are clear and general enough to allow for the conclusion that they likewise apply to first instance proceedings. Besides, there is no basis anywhere in Art. 116 or Art. 113 EPC that would support a distinction between first instance and appeal proceedings, and the ECHR should apply to all EPO proceedings as a matter of course. For each of these reasons, a “new normal” including oral proceedings by video conference even against the will of one of the parties does not appear to me as compatible with the reasoning of G 1/21.

And if oral proceedings by videoconference are so great and have convinced so many reticent users in the recent past, as the EPO has claimed in one of its communications, oral proceedings by videoconference may still have a great future, because parties will actively ask for them. This might be the best of all worlds.


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17 comments

  1. I guess we shall never know, but I will continue to wonder what part the external judge members of the EBA played, in the deliberations of the Board which were the foundation of this Decision. What a pity there are no such external members of the EPO’s Administrative Council, the employer of the EPO’s President and his management team.

    1. I would not underestimate the role of the Chairman, Mr Blumer, as well as of Mr Bokor and the rapporteur, Mr van der Eijk.

  2. Dear Thorsten,
    Thanks for your clear and thorough analysis of G 1/21.
    You come to the a similar conclusion as I do in my comments on LinkedIn.
    I would add the following:
    The EPO is a service organisation which is actually paid by its users. And within the EPC and G 1/21 there is no room for mandatory OP by ViCo in first instance as default setting outside the pandemic.
    That conclusions for the first instance will have to be drawn following G 1/21 is manifest.
    The president’s representatives insisted heavily during the OP in July that the answer to the question referred will have an effect for the whole office and not just for the BA. It is now for EPO’s management to act accordingly to what it has claimed during the OP.
    The choice of the format of OP should be left to the parties.
    The default setting outside the pandemic is in-person OP. This applies as well to OP in first instance or before the BA as Art 116 does not distinguish between the two.
    The EPO should thus offer the possibility to hold OP by ViCo for the parties if one or both wish so but not to force parties in this form of OP.
    I would add a further point: the deciding body should sit together during OP and not be scattered around during OP by ViCo. The EPC might be actually silent on this, but it is so manifestly clear that the deciding body should be sitting together that the founders of the EPC did not bother to specify it.
    Contrary to what the president’s representatives claimed during the OP in G 1/21 there is a right for in-person OP and this right cannot be dispensed with for the convenience of the EPO.
    Some people might have felt that in G 1/21, the EBA missed an opportunity to decide for the whole office. I do not think so. I would rather think that the EBA as triggered a time bomb which will force the EPO to review and amend its position on OP by ViCo to the benefit of its users.

  3. Dear Max Drei,
    I claim that the decision would have looked quite differently with the original composition of the EBA. The well known quartet would have most probably answered in the sense wished by EPO’s management.
    Probably at the price of a dynamic interpretation as in G 3/19!!
    At the same time you can guess why the answer was limited to the BA.
    As long as the AC tolerates to be a mere rubber stamping body for the decisions taken by EPO’s management the situation at the EPO will not improve

  4. What happens next is indeed the crucial question. Will it be like a Shakespearean comedy, where plenty of errors are made by the principal actors, but by happy accident those errors ultimately cause no harm? Or will it be more like a Shakespearean tragedy, where sinister plots hatched by malign characters end up wreaking havoc for all concerned?

    We shall have to wait and see. In the meantime, the (lack of) immediate reaction from the EPO perhaps suggests that there is still some doubt about how this will all play out.

    Checking the EPO’s website, it is still impossible to discern whether G 1/21 has had any impact upon the EPO’s practice. Indeed, the EPO’s Coronavirus web page (https://www.epo.org/news-events/covid-19.html) still points to practice on VICOs that is now highly suspect in the light of G 1/21 (for example, “Oral proceedings in examination will continue to be held by VICO in accordance with the Decision of the President of the EPO dated 17 December 2020”).

    I find the delay a little puzzling. By contrast, the EPO was VERY quick to issue, on the same day as the EBA’s order (https://www.epo.org/news-events/news/2021/20210716.html), a communication which indicated that “given that the pandemic situation in the EPO Contracting States and worldwide still persists, the Office will continue with the conduct of oral proceedings by VICO in accordance with its present practice”.

    To be fair, however, the 16 July communication did indicate that, when the EBA’s written decision issued, the EPO would “carefully analyse the reasoning to assess any potential indirect implications on oral proceedings held by VICO before the EPO’s departments of first instance”.

    Perhaps this means that the EPO is taking its time to fully absorb the implications of the written decision in G 1/21. However, I do not know what is so hard to understand about the EPO needing to have “good reasons” to use VICO against the wishes of a party to the proceedings.

    I would therefore suggest that, if it needs more time to fully digest the EBA’s ruling, the EPO should issue a brief communication indicating that the onus is no longer on parties to the proceedings to demonstrate “serious reasons” AGAINST the use of VICO. This is not least because of the risk that the now outdated Decisions of the President of the EPO could be argued to give rise to “legitimate expectations” for one party (eg an opponent keen to use VICOs) that could conflict with the rights of another party (eg a patent proprietor intent upon in-person proceedings) that have now been confirmed by the ruling in G 1/21.

  5. It is quite fortunate that the Enlarged Board has declined (at least for now) to allow the EPO to force parties to attend oral proceedings via ViCo under any and all circumstances for all time.

    Some paragraphs of the reasons even let me think that any provision with this effect would not be upheld under the Enlarged Board’s reasoning. Like a certain Article 15a RPBA2020, for instance…

    1. Even under their self-imposed narrow remit, the EBA was perfectly capable of finding Art 15a RPBA to be unlawful. Having seen their reasoning, one has to question why they did not do so.

  6. @ Concerned Observer,

    You might have heard what the president published under the “new normal”. The way it was envisaged initially is that the members of staff can even stay in their country of origin and work remotely. For tax reasons this was not really possible, but the idea of teleworking is still on the table.

    When you know that the president intends to reinforce teleworking it becomes immediately clear that OP by ViCo are an absolute necessity and can only become the default setting for the first instance.

    EPO is not taking its time to fully absorb the implications of the written decision in G 1/21. I think it rather intends to see how it can overcome the implications of the written decision in G 1/21.

    I agree with you that it is not hard to understand that following G 1/21 the EPO is needing to have “good reasons” to use VICO against the wishes of a party to the proceedings.

    Knowing what is in the pipeline in matters of teleworking, it is possible to understand the vehemence with which the presidents representatives acted during the OP in G 1/21 and actually wanted the EBA to decide that mandatory OP by ViCo, that is irrespective of the wishes of the parties, should be the outcome of G 1/21 and become the new standard.

    I do not wish to offend anyone, but I might not be wrong in thinking that the with the original composition of the EBA the president might have achieved this goal.

    He has certainly not given up this goal, and he will act in all possible ways in order to achieve this goal.

    On the other hand it is interesting to note that a Search Pilot for National Offices has been launched. In a first step over 100 examiners in 8 national offices (UK, France, Sweden, Czech Republic, Switzerland, Spain, Denmark and Austria) over an initial period of six months will be trained in search with EPO’s modern ANSERA search system. This system is meant to eventually replace the current EPOQUENET system.

    https://www.epo.org/news-events/news/2021/20211015.html

    The search could thus eventually be given to certain national offices and the EPO be completely virtual.

    Whatever the future of the EPO will be in the mind of the present president, in-person OP are a big nuisance which has to be avoided at any costs.

    Whether such a configuration is in conformity with the EPC as it stands does not seem to bother the present tenant of the 10th floor. His representatives have claimed loud and clear that the EPC can be amended by secondary legislation during the OP in G 1/21. So it is best to start with mandatory OP by ViCo.

  7. DX Thomas above writes to Dr Bausch that the deciding body ought not to be scattered around. I haven’t thought about it for more than a moment, but it seems to me that , given the purpose of oral procedings, the attendance of a member of the Board (or Division) at OP’s via a video link would be as much a violation of the EBA’s concept of “oral” proceedings as if one of the Parties in dispute were to be appearing by video.

    I mean, the communication that is supposed to take place at OP’s is not between the Parties but between each of the Parties (in turn) and the members of the tribunal. For the tribunal members not to be there, in person, is to deny the Parties justice, that is to say, a chance to present their case to living, breathing judges, face-to-face.

  8. To me Art 15a(3) RPBA20 needs a referral as much as Art 15(1) RPBA.
    A lot has been read into the EPC by the present EPO management, like there has never been a right to in-person OP, but should it claim that nowhere is it said that members of the deciding body have to sit together it would go more than a trifle too far.
    It was so pretty obvious that the fathers of the EPC would have felt stupid by stating expressis verbis.
    In view of the apparent wish to transform the EPC into a huge teleworking institution (by secondary legislation) there are clear mechanisms for this Art 72 and Art 164(1).
    Yes to amending the EPC, but not like this.

    1. Looking at paragraph 32 of the EBA’s decision, it may already be too late to make much of this point:
      “The question of geographical location does not arise in the case of a videoconference. No party is obliged to appear in a particular place, nor therefore in a place that would be detrimental to its right to be heard”.

      Whilst the second sentence may be interpreted as relating only to the parties (and not to members of the Board), I doubt that the same could be said for the first sentence.

      Personally, I find the EBA’s approach to interpreting Art 116 EPC (in both of G 1/21 and G 2/19) to be a little troubling. This is because, in both instances, the EBA has made it clear that compliance with Art 113 EPC effectively trumps any doubts about strict compliance with Art 116. However, this approach effectively strips parts of Art 116 EPC of any meaning, and in particular the implicit requirement for oral proceedings to take place at a LAWFUL location.

      As far as I can see, there is no conflict between Art 113 EPC and Art 116 EPC. This really ought to mean that both provisions should be FULLY respected, rather than effectively deeming one to be subservient to the other.

  9. Quoted from the report of the167th meeting of the Administrative Council of the European Patent Organisation (Munich, 29 and 30 June 2021) :
    The Office presented an orientation document “Towards a New Normal”, outlining how it can adjust to the new normal to continue delivering on its commitment to excellence. The document contains strategic orientations for increasing flexibility, collaboration and a sense of community at the EPO. After a lively debate in which some member states called for a cautious approach, the Council gave a unanimously favourable opinion. The Council also discussed and noted the Office’s approach to revising its medium-term building investment strategy in the light of the new normal.

    A “lively debate in which some member states called for a cautious approach” : doesn’t this mean that some member states expressed sharp criticism of the “new normal” orientation ?

    1. One should not forget the Protocol on the Staff Complement of the European Patent Office at The Hague which guarantees that the duty station at The Hague has a always a number of posts as defined under the 2000 establishment plan and table of posts that remains substantially unchanged. Maximum deviation 10%.
      Any change can only be carried out after consultation with the Governments of the Federal Republic of Germany and the Kingdom of the Netherlands.
      The new normal also found the criticism of two former VP1.

      According to a note from the Central Staff Committee, the new normal should enter into force on 01.02.2022 after having been adopted by the AC in December.

      http://techrights.org/wp-content/uploads/2021/11/EPO-Central-Staf-Committee-sc21127cp.pdf

      It is very clear that the president is trying to sell the new normal in that first he claims that the staff member want full teleworking and secondly in that it would allow big savings on the buildings of the EPO and hence more money for the member states.

      Since Lichtenstein and Monaco weigh as much as France, Germany or the UK it is easy to convince the AC. You add some money for cooperation into the balance and the AC eats in the president’s hand.
      The present tenant of the 10th floor is simply continuing what was started by its predecessor: the tail wagging the dog.

      That the whole teleworking scheme is actually contrary to the EPC as it stands is not a hindrance for the president and its minions, but will have been made gullible to an AC in which most of the delegates do not have a clue on what they actually decide.

    2. “Lively debate” sounds rather close to the wording “vigorous exchange of views” or even “full and frank exchange of views”, which are British political euphemisms for “bad-tempered shouting match”

    1. In what way is it non-compliant? Does the French constitution control how an international organisation should arrange its affairs?

  10. I found in Techrights (which I do not support) a document from the Central Staff Committee about teleworking as envisaged by the president. It is worth reading the document!

    http://techrights.org/wp-content/uploads/2021/11/EPO-Central-Staf-Committee-sc21127cp.pdf

    Full teleworking is envisaged to start on 01.02.2022.

    The pilot in opposition was never a pilot which would come to an end should it not be successful.
    At the EPO a “pilot” is a mere information of what will happen irrespective of the outcome of the so-called “pilot”and simply announces on a small scale what will be generalised in the future.

    It is thus very clear that the EPO management will ignore G 1/21 and its possible implications for the first instance.

    The draft Circular on teleworking is supposed to be subject to approval by the Member States in the Administrative Council of December. Knowing how the tail is wagging the dog there is no doubt that the AC will approve the circular.

    That teleworking as it is envisaged is not in accordance with the EPC appears irrelevant to EPO’s management. The president’s representatives insisted heavily during the OP in G 1/21 that the EPC can be amended at will by secondary legislation. In G 3/19 the EBA in a different composition than in G 1/21 paved the way.

    It does not bode well should the EBA in the composition of G 3/19 would decide on potential referrals which should come. The question is even whether a BA will accept to refer a question about OP in first instance.
    After all the reappointment of members of the BA depends on the “performance” they show during their appointment.

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