Let’s start with a bit of etymology today. The official translation of “European Patent Office” into German is “Europäisches Patentamt”, the latter obviously being a composite of Patent and Amt.The German word “Amt” is derived from medieval German “ambt” or “ambahte“, which means servant. That is, the prime function of an Amt is to serve the people. This is, by the way, also the origin of “office“: Officium in Latin means “service“, but can also be “duty“. A synonym for the German “Amt” is “Behörde“, and this term comes from “hören” (to listen). A person who holds an “Amt” is a “Be-amter” in German. Wikipedia includes a highly illuminating section on the concept of “Beamte” (plural of Beamter):
The conceptual foundation of Beamte is to be found in the “enlightened rule” of monarchs practised in 18th-century Prussia and other German states. These states did not accept “radical” concepts such as democracy or popular sovereignty, but they did struggle to professionalise their public services and to reduce corruption and favouritism. The idea was that whoever represents the state by undertaking official duties which only the state may legally provide (hoheitliche Aufgaben), such as issuing official documents, teaching state-approved curricula to students, preaching in state-approved churches, or making any other kind of official decisions, should have a special legal status and relationship with the state characterised by a higher-than-normal degree of loyalty. At its core, that loyalty is regarded as mutual, with Beamte having a special duty of service (Dienstpflicht) going beyond the duties of salaried workers, with the state having a special duty of seeing to their welfare (Fürsorgepflicht) that likewise goes beyond what would be expected of a commercial employer.
Sometimes I wish that the modern EPO were still a Patentamt in this good, traditional sense. But I am afraid that this ship has sailed a while ago. I would submit that the EPO has, in at least some important respects, meanwhile morphed into an Octroybureau.
I can see my Dutch readers shaking their heads and saying: The Dutch word for patent office is Octrooibureau, so what’s the difference here? Let me explain, using etymology once more. The word “bureau” is doubtlessly of French origin; in the beginning it was apparently borrowed from French bureau, earlier “coarse cloth (as desk cover), baize”, from Old French burel (“woolen cloth”). From there bureau was used to designate the entire desk (usually with compartments underneath) and later the entire room with the desk inside and a writer using this desk. And octroy (Dutch: octrooi) has an even more interesting history. It is derived from French “octroyer” and means “to grant (a privilege etc., by government etc.). While this still sounds pretty innocent and “patent-like”, the German word “oktroyieren“, while also derived from French octroyer experienced an almost modern political shift in meaning: “oktroyieren” in German means “to impose, to force something on someone“. So you are no longer awarded a right or privilege, but you are simply ordered to do something from now on.
With that, we are back in the present. Just recently, the EPO President has ordered (oktroyiert) that oral proceedings before the Opposition Divisions will from now on take place via videoconference (VICO). Consent of the parties will be no longer required. And this measure is sold to the public as means “to improve access to justice”:
The European Patent Office (EPO) is announcing today further measures to improve access to justice in relation to opposition hearings held by videoconference (VICO), in light of the ongoing coronavirus pandemic which imposes restrictions on travel and health risks for all in-person meetings.
Today’s report shows the considerable progress made so far in terms of the necessary legal framework, technical infrastructure and training support since the pilot project to conduct opposition hearings by VICO started in May 2020. In recent weeks the addition of Zoom as a technical platform has facilitated multi-party opposition hearings and interpretation. These advances have been broadly welcomed by the patent profession.
However, today’s report also shows that the current measures will not be sufficient to clear the substantial backlog of opposition hearings that built up over the last six months.
So, to cut it short, VICO as a means to hold oral proceedings in opposition proceedings were available since (at least) May 2020. Yet alas, they were not accepted by “the patent profession” to an extent sufficient to clear the EPO’s backlog. Thus, time to tell the profession how to do it properly. Thank you, Mr. President.
It is more the style of this communication that disturbs me than the substance of the President’s decision. I (and I think this applies to the majority of the patent profession) do realize that we live in difficult times, and that oral proceedings in person before the Opposition Divisions are not exactly what should be done in order to keep your contacts to the necessary minimum. I also understand that the EPO is building up a backlog of cases if no or only a few decisions can be made in COVID-19 times. The patent profession will suffer at least as much from this backlog as the EPO itself. Just imagine if you have to attend to (and ideally win) 2 or more oral proceedings every week… – So, I understand that something should be done to avoid this unpleasant state of affairs. But is this not the point in time where to conduct a public consultation and collect both the ideas of stakeholders and their concerns before announcing such a decision? Conversely, if you understand your position as the boss of an Octroybureau, why bother?
The Boards of Appeal do it a bit better. They have initiated a public consultation and collect stakeholders’ views until 27. November 2020. More information is available here. The issue at stake is the insertion of a new Art 15a into the Rules of Procedure before the Boards of Appeal (RPBA) that may read as follows:
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.
So this new Article would enable and empower the Boards of Appeal to adopt a “new normal”, i.e. oral proceedings by videoconference “if the Board considers it appropriate to do so“. Notably, this new Article in its present form would apply indefinitely, i.e. may well outlive the current COVID-19 situation. I would not be surprised if the Boards of Appeal and their President would tell us that this is definitely not intended and that the Boards would certainly return to the “old normal” after the end of the pandemic. I would even accept and believe that at face value. However, this is precisely the problem of enablement laws – you are completely dependent on the goodwill of the persons you have empowered. I personally would therefore much prefer a legal solution that is either limited in time from the beginning or made dependent on a declaration of the President of the Boards of Appeal or (better) by the Administrative Council that there is a state of emergency due to a pandemic, during which special rules apply, but these rules cease to be applied once this state of emergency has ended. If my understanding is correct, this is also how several contracting states (including Germany) have formulated their infection protection laws.
In any case, I would encourage readers to participate in the consultation initiated by the Boards of Appeal, even though I am not too optimistic that this consultation will have much of an impact on the final wording of Art. 15a RPBA. My slightly skeptical attitude is (a) based on experience with similar consultations in the past and (b) confirmed by the following paragraph in the Explanatory Memorandum, according to which it seems that the Boards would not even necessarily wait for the Administrative Council’s approval to go ahead – so why should they wait for our consent?
It is suggested that proposed new Article 15a RPBA enters into force on 1 April 2021, subject to its approval by the Administrative Council under Article 23(4), second sentence, EPC. As outlined above, proposed new Article 15a RPBA clarifies the practice of the Boards of Appeal since May 2020 of conducting oral proceedings by videoconference. Therefore, the Boards of Appeal may adapt their practice before the date of entry into force.
Be that as it may, I have to say that it is not my impression that new Article 15a “clarifies the practice of the BoA since May 2020“. So far as I know, the existing practice still is to conduct oral proceedings by VICO only if all parties have approved it.
So what is the best way forward? One the one hand it seems clear to me that, compared to hearings in person, VICOs have significant downsides: an exchange of arguments is of course possible, but communication is also clearly more limited (in both directions) and this deficiency does not help the perception that justice is done. On the other hand, it is simply not possible to hold as many oral proceedings in person in these COVID-19 times as previously. Parties and their representatives should therefore help the EPO to make OPs via VICO possible and not block them as a point of principle. Conversely, the EPO should also listen to the parties’ concerns, if any, against oral proceedings by VICO in an individual case and take them seriously.
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For years, professional representatives were told by the Boards of Appeal that Articles 113 and 116 EPC did not provide any absolute right to VICO oral proceedings. So what has changed? And where is the legal basis for what is undoubtedly a novel interpretation of the EPC, namely that Articles 113 and 116 EPC now will not provide any absolute right to in-person oral proceedings?
As with the Decisions of the EPO President in connection with VICOs for examination and opposition oral proceedings, this is nothing other than law-making by executive decree. The fact that the AC is involved in passing any new articles of the RPBA does not help either. This is because they are an ADMINISTRATIVE Council, not a legislative body … though, based upon the decision in G 3/19, one could be forgiven for feeling that the line between the two has been somewhat blurred, if not entirely destroyed.
And to which judicial instance can you complain if you believe that a decision of the Boards of Appeal to conduct VICO oral proceedings infringes your right to a fair trial (according to Article 6 ECHR)? To my knowledge, unless there is a change to the statutory definitions of the grounds for submitting petitions for review, the Enlarged Board is almost certain to dismiss any such complaints as inadmissible … which strikes me as being contrary to the principles of justice as enshrined in the ECHR.
While I’m also somewhat miffed about the manner and language of the President’s announcement (“access to justice”…hah), I must also say that this is an inevitable development, which should be seized by the patent profession as an opportunity rather than a hassle.
Having numerous friends in both towns, I enjoy trips to Munich and The Hague as much as anybody else, but it’s undeniable that all that travel to attend oral proceedings comes at a cost, first of all to the client, but also to the climate and to our personal lives and families. It also gives an unfair advantage to the parties and representatives located close to the two cities, to the detriment of those living elsewhere, in particular in less-developed regions of Europe.
Moreover, while videoconferencing has its limits, properly used it could also open new opportunities to present a case even more clearly and persuasively than in person, using e.g. audiovisual tools, computer animations, etc. It will require learning and adaptation, but any good professional should be ready to learn and adapt to new circumstances.
Anyway, I look forward to be able to attend oral proceedings in the future from any of the sunniest islands belonging to EPO member states…
Hmmn. Nobody is saying that the OPTION to use VICOs before the Boards is unwelcome. Indeed, many patent professionals have been crying out for years for the Boards to make this option available. The problem comes when VICOs are mandatory, or where they can be imposed against the wishes of a party to the proceedings.
It is understandable that the Boards would want to have a way to deal with parties that refuse their consent to VICOs for purely tactical (delaying) purposes. However, with any luck, the end of the pandemic is now in sight. This means that soon, most likely before the end of 2021, the refusal of a party to grant consent to VICOs will not result in the date of oral proceedings being pushed back. Also, in the long run, it is perfectly possible that a significant number of parties will VOLUNTARILY request VICOs – especially if they agree with you regarding the relative advantages of that mode of conducting oral proceedings.
It therefore reasonable to ask why now, when we are potentially on the cusp of a gradual return to normality, the Boards would to attempt to implement a rule that PERMANENTLY grants them the ability to impose VICOs against the wishes of one or more parties to the proceedings. This seems both unnecessary and inappropriate in the circumstances.
If one were a cynic then one might speculate that the motivation for this change is a desire on the part of the EPO to benefit from the cost savings that can be made by no longer having to host any more than a handful of in-person oral proceedings per year. Combined with a vast increase in the numbers of EPO employees working from home (which it seems the EPO is keen to also make permanent), the potential for shedding significant costs for office space are glaringly evident. But remember that the EPO already makes a huge surplus each year and is also actively working to reduce its overheads in other ways, mostly by reducing staffing costs. So there is really no need for the EPO to cut costs associated with oral proceedings … and certainly not by imposing rules that bite the (applicant) hand that feeds it.
Of course, we do not know the outcome of the consultation procedure. Indeed, it is perhaps possible that, against all of my expectations (and also against all logic and common sense), the vast majority of the profession will welcome with open arms the move to compulsory VICOs. However, it will be interesting to see how the EPO responds in the more likely scenario that the profession instead strongly advocates for the use of VICOs to remain optional. That is, with no majority support from users and no objective need to cut costs by forcing the use of VICOs, will the EPO still press ahead regardless? And if so, cui bono?
With online submissions being the norm and with the possibility of communications being served electronically, oral proceedings were the one aspect where having a local representative was advantageous in view of the costs of travel. With all aspects of the procedure now being performed via the internet, can we expect foreign (US!) firms to expand their practices before the EPO, acquiring a tame representative?
I forgot to add that at least the UK Court of Appeal believes that the principles of access to justice demand that a party must be able to appear in person in order to effectively argue their case. The UK Supreme Court is now considering whether an exception to this rule can be made in the highly unusual circumstances where the in-person appearance of a party arguably presents a risk to national security:
Clearly, the appearance of parties at proceedings before the Boards of Appeal is extremely unlikely to present any kind of security risk. So why should the standards of justice at the EPO depart so wildly from those before the UK courts? In this respect, it is disappointing to see that CIPA’s President has reacted enthusiastically to the EPO’s proposals:
The reason for my disappointment is that it is unclear to what extent the President’s statement reflects the views of CIPA’s membership. I also have a sneaking suspicion that the opportunity for UK professionals to “level the playing field” against competitors located in or around Munich might make them more inclined to overlook the glaring lack of legal basis for the EPO’s proposals. Hmmmmn (again).
Good comment, Concerned. My immediate thought in reply is that CIPA’s seeming nonchalance about the etherialisation of oral proceedings at the EPO could be explained partly by what is at stake in such oral proceedings. The TBA is not going to be enjoining anybody, not putting anybody out of work, not shutting down any business. Rather, the only issue at stake is whether a particular patent gets revoked, narrowed or upheld. Despite what some limited-horizon patent attorneys suppose, in an era of concern about leaching away of the precious Rule of Law, this is NOT the crux issue. It is the courts, not the EPO where the most important human rights are debated.
I guess this takes us straight back to 1973, when the nations of Europe happily set up a communal patent granting system but baulked at setting up a communal patent rights enforcement regime. Were their reservations well-founded, back then? The current UPC storm rather suggests that they were.
How many patents are there over videoconferencing?
Even the EPO can’t tell if it is a legal solution that respects all the patents they granted themselves.
It is obvious that the EPO aims at making working at home a permanent feature of staff administration. Experience also shows that the Board of Appeals has followed the approach taken by the Presdent of the EPO in administrative matters. For example, the Boards have the same carreer system as the rest of the EPO: re-appointment on the basis of reporting which is unique for members of a judiciary. Why taking a different course for VICOs which are endangering the collegiate system. Honi soit qui mal y pense ….
Being a board member myself, the idea that worries me most is that before long the boards as such will no longer meet in a single location. Nowadays we often have lively discussions when deliberating, which makes the final decision much more reliable (no stone being left unturned), but this will not be easy when we see each other behind a screen, with all the inevitable technical trouble that comes along (and we have had some of that already in our VICOs, believe me). Now if the deliberation process suffers, the very heart of the appeal proceedings suffers. I fear that the quality of our decisions will decrease if the boards do not meet in person, face to face. Oh I know that the powers that be do not really care about quality, and that they see that VICOs can be so much cheaper. But in the end, our raison d’être is providing good, well-founded and fair decisions, and that will be made more difficult to achieve.
When reading the EPO is using Zoom I was surprised.
Of course, th EPO is immune, so they can use whatever they want…
But, since Zoom is critized for not following the General Data Protection Regulation, for lack of encryption etc., I was wondering: assume you would like to prevent a VICO, would it be possible to send your opponent a cease-and-desist-letter (Abmahnung) not to use Zoom professionally?
Are patent attorneys, at least in Germany, bound by their professional duties not to use such a defective tool?
Well, I guess Mr C couldn’t care less…
Dear girl from Ipanema: but this very argument already applies to the EPO examining divisions! The semi-permanent homeworking that is now in place is, in effect, the death of lively discussions within the ED’s. Go and call some of your colleagues in DG1 and ask how often they meet with their fellow examiners, how often do their teams still meet… If my calls with different examiners in recent weeks are anything to go by, the answer is not positive. So what does that imply for the quality of the examination process?
Of course we are faced with an ongoing pandemic and the homeworking schedule is a necessary response. But that carries with it a responsability to maintain quality standards and stimulating the ED’s to carry out their work “normally” as much as possible. If this is not happening, then management has to take responsibility and act to improve that situation.
A serious concern with homeworking would arise if examiners can go back to their home country instead of staying in a location close to their EPO office, since this hinders meeting with their colleagues and management and compromise the working environment at the EPO esp. on-the-spot training for junior examiners. Has anybody information about this ?
Needless to say, the concern would be still more serious if this was allowed to continue beyond the Covid situation.
At least until the end of September 2021 it is now possible to work from any member state. I know some colleagues that haven’t been in the Office since April, e.g. working from Spain.
Furthermore, it appears that the EPO considers to make this a permanent arrangement, judging from a recent survey on that matter among staff.
Regarding the work within the examining divisions, I can confirm that consultations with members who don’t come to the Office premises anymore are reduced and that this may well affect quality in a negative way.
Lastly I have to say, that performing Oral Proceedings via ViCo has its up- and downsides. For simple cases it is very convenient, whereas in more complex cases the discussion with the division over the pretty unreliable Skype or MsTeams links becomes difficult, leading to a more superficial treatment of the requests. A video meeting just cannot adequately replace a real-life face-to-face discussion in my opinion. Just try to have a discussion with someone having a bad microphone, low volume and echos…
The EPO’s direction of travel is easy to see. Any cost-cutting measure for which a justification can be cobbled together seems to be on the table, regardless of its impact upon the fitness of the EPO for its primary purpose of examining and granting patents.
What might be next? If we already have examiners working from their home countries and/or working upon the basis of temporary contracts, then what about full-on outsourcing of tasks currently assigned to EPO employees? Could we see the gig economy coming to the EPO soon? Is there anything in the EPC to prevent this? Even if there is, would this make a difference in view of the “dynamic” interpretation approach adopted in G 3/19?
The possibilities opened up by allowing oral proceedings to be conducted by VICOs are potentially exciting. However, we should not overlook the limitations of the current technological solutions, nor ignore the need for new (and important) legal safeguards if VICO oral proceedings are to become commonplace. Most importantly, we should not forget the importance of strict adherence to the rule of law, which, in this case, requires a robust legal basis for what will undoubtedly amount to a curtailment of the rights of parties to oral proceedings before the EPO.
In essence, the Boards (and, for that matter, also the first instance departments of the EPO) should learn to walk before they try to run when it comes to the use of VICOs. There are no prizes to be won for issuing the first decision to contravene a party’s right to a fair trial. At least the Boards make a show of considering the issues, by conducting the consultation that closes today. However, I cannot help but think that the result is a foregone conclusion, as why else would the Boards set an extraordinarily short response period AND indicate that they can adapt their practice BEFORE the revised RPBA come into force?
These days it seems that, even in Europe, adherence to the rule of law is rapidly becoming more the exception than the rule. I cannot help but feel that even some of those currently driving this trend will end up feeling like Joni Mitchell when she wrote “Big yellow taxi” … as it really is true that you often do not know the value of what you have until it is gone.
My bad, forgot to add compliments to the author: excellent and entertaining article Thorsen, I always look forward to read your contributions.
I attended several remote hearings and I think that the advantages of videoconferences outweigh the disadvantages, especially at the EPO, where hearings are extremely lengthy and involve parties and representatives from all over the world.
At least until the end of the Covid emergency (hopefully within the next 10 years) hearings should be always held by videoconference at the EPO.
My viewpoint is that of a UK patent attorney resident in Germany. I contrast Thorsten’s “take” with the enthusiasm of CIPA, on their offshore island, here:
Presumably, the attitude of European patent attorneys based in such Munich-remote Member States as Portugal (home for the current EPO President), Finland and Poland will be just as enthusiastic. Let’s be honest, when it comes to competition for work from clients outside Europe, those attorney firms not resident next door to an EPO building ought not to be at a systemic unfair disadvantage.
For me (who qualified in the 1970’s) the thing that has carried the EPO along to the world’s best and clearest case law on patentability/ validity is its unique 3-person Division, whether ED or OD. I read with mounting alarm how the unremitting efforts of EPO management to “improve quality” is turning these Divisions into a non-team of one case worker and two rubber-stampers. This is a disaster for customer confidence, customer satisfaction, legal certainty and the EPO’s reputation for quality. Any EPO attorney you ask will tell you how vital it is, to clear and thorough case analysis, that the case be discussed with a colleague in the office before any client is given a considered opinion. Anybody who has read “Thinking Fast, Thinking Slow” or its development in the book by Jonathan Haidt “The Righteous Mind” will see why this is so. The analogy is with the elephant and its rider. The rider is the analytical (slow thinking) mind, that sees more consequences than the elephant’s (fast thinking) brain which jumps to conclusions. Think about it: once an elephant has decided to charge in a particular direction, the rider is powerless. The only thing that will stop a charge in error, in the wrong direction, is two more elephants, equally forceful, one on each side of the rogue elephant.
So too with a rogue Patent Office Examiner, charging in the wrong direction. No amount of attorney argument will do any good. As the books explain, the rider, the slow-thinking analytical brain, is an absolute expert at finding reasons why the wrong direction is in fact the right direction. To get to a sound Decision, reliably and consistently, you just have to have two other Members in the Division. Not only that, they have to be equally forceful, equally engaged.
OK you say. What about patent litigation in England in front of a single patent judge. Space does not permit me to explain here why that’s utterly different.
The Boards of Appeal regularly invoke the Vienna Convention on the Law of Treaties (VCLT) when it comes to deciding on how to interpret the EPC.
The interpretation of Art 116 given in the explanatory note for the proposal of Art 15a RPBA is in manifest contradiction with the VCLT in its Art 31 and 32. According to the VCLT, a treaty has to be interpreted in good faith and if this interpretation should not lead to a result that is manifestly absurd or unreasonable.
The mere assertion that “neither Art 116 nor any other article of the EPC or RPCR 2020 stipulates that the parties to the proceedings, their representatives or the members of the board must be physically present in the room”, amounts to ignoring the philosophy underlying Art 116.
A reasonable interpretation of the term “oral proceedings” can only mean the physical presence of the parties before the EPO’s decision-making body.
The terms “oral proceedings” are far from being ambiguous or obscure, let alone that their interpretation in good faith leads to a result that is manifestly absurd or unreasonable.
Nowhere in the “travaux préparatoires” to Art. 116 it has ever been envisaged that the parties are not physically present before the deciding body, and that for instance it could be held by phone. A videoconference is nothing more than a telephone conversation during which the parties can see each other.
What is said here applies mutatis mutandis to oral proceedings before examining and opposition divisions.
Neither the Chairman of Boards, nor the Chairman of the BOAC, and even less the president of the EPO, have the power to amend the EPC in the way they are attempting to do. They simply lack the legitimacy to do so. The same applies to the AC.
That in a period like the pandemic solutions have to be envisaged is not at stake. In exceptional situations, exceptional solutions can be envisaged, but as soon as the exceptional situation is over, then the exception should be stopped and the normal situation be re-established.
In any case, the possibility of holding oral proceedings by videoconference should be left to the parties and not decided ex-officio, even in exceptional circumstances. As explained by Mr Bausch, the parties also have an interest to come to decisions and not unduly keep their files open. Once a party is opponent, once it is proprietor so that a fair balance can be stricken between contradictory requirements.
Whilst I can have some understanding of Max Drei’s plea about representatives sitting at a distance from The Hague or Munich, I cannot fundamentally agree with him. When he speaks about the three members of divisions of first instance, I have to take away his illusions. See below.
It is not for the Office and its Boards of Appeal to decide what is good for the parties. After all, the income of the Office stems from the contributions of the parties, so that the parties must have a say about the way they are treated. Presently it is with morgue and disdain.
Under the pretext of the pandemic situation, both the EPO and the Boards want manifestly to dematerialise the EPO. This would in the long term allow to transfer its duties to national patent offices and get read of staff which is not as docile as the management would like to.
If you think that there are discussions within examining or opposition divisions, please abandon this idyllic vision. In vast areas of the EPO the three men divisions of first instance are long time gone and only exist on paper. In some areas there have even been oral instructions that if the first member has signed, the two other have to sign as well. Consulting the register recently, I even came across a Form 2035 in which only the first member had signed! If you take on top the difficulties imposed by videoconferencing among members of divisions, this trend has rather increased.
By isolating its staff, the EPO gains even more influence on it and concerted actions would be made more or less impossible. What a perspective for the head of (anti)personnel!
That by dematerialising the office it would then be possible to even sell some buildings has been clearly envisaged by the management.
The role of the EPO and its Boards is not to play Monopoly© but to offer an acceptable service to its users. Why was it then necessary to invest in rented accommodation for the boards when other buildings of the EPO are allegedly empty and can be sold?
By the way, the EPO wanted to sell the latest buildings of the EPO (BT8) on the other side of Grasserstraße, but the city of Munich refused as it had a contractual say in the matter.
For a while the EPO has become the playground of would be managers only having in mind juicy bonuses and relying on management methods from the 19th century. The EPO plays a big role in European IP, and it should not be left to the incompetent amateurs presently at its helm. If anything goes wrong, they can always rely on their immunity…..
The fathers of the EPC must be turning over at high speed in their graves.
In Decision No. 2020-011 of 9 July 2020, the Defender of the Rights of the French Republic (Défenseur des Droits) concluded that “the use of videoconferences constitutes a restriction on the right to a fair trial; it must remain the exception and be surrounded by guarantees. »
Is there anything to add? If the parties agree I do not see a problem. Imposed ex-officio the answer is a clear no, be it in first instance or in appeal. During the pandemic period, it could be envisaged, but certainly not after the pandemic period has come to an end.
That some representatives, like the members of CIPA, want to gain ground over representatives residing in Munich or The Hague is understandable, but should not be determining when it comes to impose oral proceedings in form of videoconferences before the EPO.
Some British firms of representatives have even actively advertised on LinkedIn their capabilities in matter of oral proceedings in form of videoconferences before the EPO. The position of CIPA, see the link in Max Drei’s comment, does thus not come as a surprise.
However such a deep amendment of the EPC has to be the result of a Diplomatic Conference or at least of a common decision of the Contracting States and not of a decision of the management of the EPO or of the Boards of Appeal.
I disagree with the outraged comments above. Oral proceedings by video work well in my experience. What’s more, there is hardly any other option at the moment – in these Corona times – to bring cases to a close. And it is, again in my experience, evident that parties are refusing vico as a delaying tactic. Having the revocation of an invalid patent delayed is in no-one’s interest (except the patentee..). Justice delayed is justice denied.
Courts have rapidly moved to telephone and video proceedings, e.g. in. England almost all civil proceedings are conducted that way at present. It’s almost embarrassing that some patent professionals are so reluctant to change. One wonders what their innovative clients think.
And much as it is important (and fun) for us all to criticise the EPO (and in my view with some merit, eg concerns around independence of the Boards) , I wonder if we Germans should cast a critical eye closer to home too?
Here, you’ve criticised the EPO as not being an Amt (‘servant’). OK, but have you dealt with the DPMA in recent years? OAs with 24 month terms for replying, queries asking when the next OA will issue answered with ‘given the high number of applications we can’t foresee when we might possibly get round to examining this application’, applications waiting years for a next OA. Delays there are very very high! And quality overall? We’ve seen OAs where the Examiner hasnt considered the last filed claims, but mistakenly issued an OA on the previous claims. And hearings – well its just with the same, one Examiner, no three (wo)man division to stop erratic objections.
Would genuinely love to see an article on the DPMA here, but I doubt I ever will.
In fact, anyone who has ever tried to register their new address, register their car, get a passport for their children, get married etc etc etc will wonder how any Amt of ours is possibly a ‘servant’…
@ Der Nörgler – Some of your points just require a comment.
My background: examiner, team leader, plus some other functions.
0) The question was, if it is OK for the EPO to require vicos. The DPMA does not – still I would like the possibility, since I also like oral proceedings…
1) OA with 24 months… – I know a few colleagues who do this. Some for all their OAs, some for special attorneys: They simply want to avoid numerous requests for “Fristverlängerung” (I have files with > 10 of these requests). There seems to be a common misconception, that you are not allowed to answer before the last day of the First. 😉
2) The answers for “Sachstandsanfragen” – management requires us to not set dates for the next action more than 12 months into the future (and actually, our software will not accept such a date), so the answer you quoted translates to “not in the next 12 months”. The background for this rule is that planning of dates to far into the future is simply not practical. Also, it is in respones to the huge number of these Sachstandsanfragen and requests for expedited examination – some attorneys will send a “Sachstandsanfrage” every year and note they do NOT request expedited examination (my guess: they augment their income by billing these yearly letters).
My personal experience: the number of these requests for my files dropped significantly once I answered these with summons for oral proceedings – go figure…
Just recently a colleague received a request for expedited examination 1 month after the application was filed, allegedly there is an infringement (there was a priority, but still: the infrigement is probably a piece of state of the art…)
3) Delays – Yes, the delays are to long, but he DPMA has been hiring a large number of examiners additionally, and will do so in the next years.
Again, just my personal experience: If attorneys/applicants would spend more time on drafting the apllication and on their answers, delays would go down. When you issue an office action and the reply makes you realize a) the OA waas not read/understood or b) the state of the art was not read/understood then why should this get a speedy further OA? Classic example: a feature from the description which is also present in the state of the art: no way to grant a patent, no way to reject the application.
I regularly cross-check my files and those of my team-members with the parallel files at the EPO: I don’t see a big difference in delays (could be specific to electrical engineering) and judging by the number of requests for “Fristverlängerung because of a parallel EPO application” the EPO needs more than 5 years on average, too.
4) Wrong claims – well mistakes happen. This has happened to me too (some PCT application with various sets of claims from the same date), the attorney called me on the phone, a few days later he had the corrected OA – big deal?
5) Overall quality – the DPMA does not have an examination division, but any decision (grant, rejection) is reviewed by the team leader (and in most depatments, the department head will also review a random sample of OAs and decisions). I have not seen any erratic decisions (erratic in the sense of: glaringly wrong, as opposed to: the details could possibly support a different decision) in my department – and viewing the BPatG-decisions there are not many overall.
When you drive to your office tomorrow, over the streets that are protected by an EP patent in force (together with beaches and meadows and lots more of “Öffentlicher Kulturraum”) you could reconsider whether the examining division really ensures quality. Some commenters on the blog stated, that the examining division is actually no longer working in the intended way, that the 2 further members just sign whatever the rapporteur offers them.
So to sum it up: quality can always improved, but the DPMA is overall not worse than the EPO. In my experience: the attorneys crying “abwegig”, “erratic” and so on the loudest are mostly the ones who are far from their field of expertise. I had biologists, civil engineers, computer scientists, physicists reacting like this when dealing with electronics and electrical machines… If they appealed to the BPatG at all they invaraibly lost there, too.
Der Nörgler makes points that, for me, are refreshing and welcome. To add to his lament about the lack of pace in civil proceedings in the courts of Germany I would add that the maxim “Justice delayed is justice denied” is, for me, even more important in criminal proceedings. Is it the Bund or the Länder, that is to blame for honest and hard-working judges putting in 60 hour weeks to fight a gruesome backlog of hundreds of thousands of cases? Who is to blame for high profile miscreants getting off because their cases are delayed over and over again, until the period allowed for bringing them to trial runs out?
Precious is the level of trust which people place in society, and in the organs of the State. When that trust is eroded, decent civil society unravels.
Come on Germany. You have been a beacon of civilisation and representative democratic politics since the War. Just compare life in Germany today with that in, say, the USA or the UK. Your Constitution has withstood assault from all quarters, left and right, up to now. But such decency, civilisation and harmony isn’t guaranteed to continue indefinitely, automatically. It can’t last unless somebody puts increased pressure on the Justice Ministry, for goodness’ sake, please somehow to concentrate on the highest priorities and address the all too evident serious and growing problems.
Every representative democracy is full of honest burghers who suppose that their system of criminal law is no concern of their (because they will never commit a crime) so see no reason to finance it adequately. Please will somebody explain to these good citizens how important it is, to them and their family members, that the State’s system of criminal justice is adequately financed, competently supervised and sympathetically exercised. If the politicians and the Justice Ministry can’t even get excited about neglect of the criminal justice system, fat chance they will pay any attention to abstruse issues in specialist patent law.
Contrary to Max Drei, I do not find that “Der Nörgler makes points that, for me, are refreshing and welcome”.
The argument “justice delayed is justice denied” bears certainly a lot of weight and cannot be dismissed. But what disturbs me is the total absence of legality of the system presently introduced at the EPO with forcing parties into oral proceedings in form of videoconferences before the EPO, be it in first instance or in appeal.
When in member states of the EPC governments decide to impose proceedings, especially before courts, in form of video conferences they are under the control of the parliaments and of the judiciary. That it works in England is not a benchmark as the whole legal system over the Channel is quite different.
Just an example: in France the trial about the terrorist’s attacks against Charlie Hebdo in January 2015 is stalled as one of the accused has caught the Covid virus. He can thus not be present in court. The Minister of Justice (a criminal lawyer himself!) has then decided that the trial, actually any trial, could continue and be brought to an end whereby the accused can be forced to attend his trial by appearing in a videoconference during the pleadings. He did however not go as far as wanting this procedure when taking evidence.
The highest administrative Court, Conseil d’État = Council of State, has simply set aside the minister’s decision as not being conform to the right of an accused to properly defend himself, in other words, the right to be heard.
I do not compare such a trial in a criminal court with procedures before the EPO, but on a matter of principle the decision of the Conseil d’État is fully understandable and I approve it. The right to be heard cannot be reduced to a telephone conference in which you can see your vis-à-vis
The problem is that at the EPO such a system of checks and balances does not exist. Introducing oral proceedings in form of videoconferences has no legal basis in the EPC as it stands. The EPO seems to be on an extra-territorial planet in which the higher ups, even at the boards can do what they want. Before doing so, the EPC ought to be amended, and certainly not by a kind of “dynamic interpretation” of the Enlarged Board of Appeal.
I invite the readers to have a look at epi’s comments on proposed Art 15a RPBA20. During the present pandemic situation epi can agree with oral proceedings in form of videoconferences, but it should not become the rule. And Art 15a should be removed after the pandemic and at the latest one year after it entered into force. A very reasonable position.
Last but not least, a word to “Dear Nörgler”: we are here not discussing what is happening or not at the German Patent Office but at the EPO. It is of no help to anyone to compare an apparently slow working office with one in which everything has to be done quickly so that the “plan” is achieved in order for its managers to cash in their bonus. Such a type of comparison is really beside the point.
I thought that “everything which is not forbidden is allowed”: where exactly do you read “at the premises of the EPO” in Art. 116 EPC?
By the way, videoconferencing was already available in 1973
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