Video conferences will become the default format of oral opposition proceedings in at the European Patent Office as of 2023. Only under certain circumstances, and when the opposition division permits it, will oral proceedings in opposition be conducted in person.
A decision to that effect was announced yesterday, a week after the publication of the final report on a pilot project, which showed over 77% of 357 respondents in interviews on oral proceedings by video conference (VICO) found these to be good (39%) or very good (38%).
According to the report: ‘A majority of users (57%) also declared that their most recent experience of oral proceedings by VICO was better than in the past, or at least the same (36%). Users have been very appreciative of the new practice to allow submissions by email to the opposition division (86% think this “good” or “very good”, 357 responses).’
Some quotes from the report’s conclusions:
‘Experience and feedback: through more than 6000 oral proceedings in opposition conducted by VICO, a majority of examiners and parties have not only become familiar with VICO, but also come to regard VICO as their preferred format. The high number of oral proceedings in opposition (certainly higher in 2021 than in 2019), as well as the wealth of internal and external training measures offered during the pilot, have enabled all those involved to gain more experience and confidence.’
‘Technological advancements: the way oral proceedings in opposition are conducted today clearly differs from how they were done before the pilot and, in some important details, even from how they were done last year. The state-of-the-art technological platform, the digital tools available for examiners and parties, the way evidence is taken, improvements in remote interpretation, the mastering of the technology by chairpersons, division members and other participants, and the greatly increased access for the public are among the most important features and developments that make this format in many aspects superior to in-person proceedings.’
‘Evolving legal and procedural framework: over the course of the pilot the legal framework has been enriched with decisions of the EPO President and notices issued by the EPO, an amendment of the EPC Implementing Regulations concerning the taking of evidence by VICO (Rules 117, 118 EPC) as well as additions to the Guidelines. For oral proceedings on appeal by VICO, a specific provision was added to the Rules of Procedure of the Boards of Appeal (Art. 15a). Most importantly, in decision G 1/21 the EPO’s highest judicial authority, the Enlarged Board of Appeal, confirmed that oral proceedings in the form of a VICO are oral proceedings within the meaning of Article 116 EPC, that the rules and practices applicable to oral proceedings also apply to them, and that oral proceedings by VICO comply with the principles of fairness of proceedings and the right to be heard. As of today, more than 20 appeal decisions have applied the teachings of decision G 1/21 in individual cases (…).’
‘The achievements made over the past thirty months enable the EPO to conclude the pilot and take the next step with confidence.’
According to EPO president António Campinos: ‘The pandemic has been a catalyst for change affecting many aspects of our patent granting process. Applicants and their representatives have already found that the widespread adoption of videoconferencing is permanently changing the way they do business. Most have welcomed the way in which we have embraced new technologies and the opportunities they provide to save time and money, and reduce carbon emissions, while still allowing them to argue their case effectively. The pilot has taught us all many valuable lessons and allowed us to test various ways of working. After more than two and a half years it is right that we now provide clarity and adopt VICOs as the standard format.’
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I am curious about the lawfulness of the President’s decision (for oppositions, as well as for all other first instance proceedings before the EPO). At the very least, G1/21 provides a reason to suspect that the decision is unlawful, to the extent that it does not require “good reasons” to be demonstrated for selecting the VICO format.
It is amazing to see that the EPO’s Legal Division does not appear to have spotted that there are clear reasons to believe that President’s decision could well be unlawful. On the other hand, would we ever find out if the Legal Division has cautioned the President against taking that decision?
In any event, it is highly significant that the President’s decision closes the door to separate appeals against decisions to impose the VICO format for oral proceedings. This is for two reasons.
Firstly, there are reasons to believe that, according to principles of established EPO case law, a decision to impose VICO is a “decision” in substance, and is therefore open to appeal. To quote from the CLBA (https://www.epo.org/law-practice/legal-texts/html/caselaw/2022/e/clr_iii_k_3_1.htm):
“The decisive question was whether the document at issue, when objectively interpreted in its context, could have been understood by its addressees as a final, i.e. not merely preliminary, and binding determination of substantive or procedural issues by the competent organ of the EPO”.
A decision to impose VICO indeed represents a final determination on a procedural issue by a competent organ of the EPO. It is therefore doubtful whether the President of the EPO has the power to deny parties to opposition proceedings the right to appeal against such a decision.
Secondly, denying parties a separate right of appeal against decisions to impose VICO makes those decisions effectively impossible to set aside, even if they are unlawful. This is because there is very little chance of any Board of Appeal ordering a re-run of first instance oral proceedings in the correct (in-person) format. Also, even if they did, this would not put the appellant in the same position as they would have been if the first instance department had not (unlawfully) imposed VICOs. This is firstly because of the loss of time. However, for opposition proceedings, the fact that the patentee will already have heard all of the opponents’ arguments (and vice versa) means that a re-run can never provide the hearing that the appellant should have had.
Whilst VICOs have their place, and are a really useful format in the right circumstances, I seriously worry that the EPO management’s lack of regard to the rule of law is getting completely out of control.
The mere purpose of any survey commissioned by the EPO has the aim of obtaining the result desired by the upper management. Should the result of the survey not be to the liking of the upper management, it is simply ignored or presented in such a way that the result confirms the views of the upper management. In the present case, it was to show that users plebiscite OP in the form of ViCo.
Following the “results” of the survey, it is without surprise that the president of the EPO has decided on 22.11.2022, that all OP before examining divisions, opposition divisions, the Legal Division and the Receiving Section are to be held as by videoconference.
Mandatory OP by ViCo in first instance have actually been introduced in order to save on office space, so that some buildings can be sold and more money ends in the “cooperation” budget.
The Covid pandemic was a good pretext to push such a change trough and ignore the EPC and its Rules of Implementation.
That the EPO adapts its procedures to new possibilities offered by modern telecommunication means is not at stake. This should however not be imposed on the users.
The users have to be given the choice. If all parties agree on OP by ViCo then the OP should be held by ViCo. If one party prefers OP in-person, the OP should be held in a mixed mode. That a mixed mode for OP might not be to the liking of some lobbying group, it remains that lobbyists should not be allowed to decide what is good for all. But just look at what happens with the UPC where the same lobbying group has been very active!
In the meantime we have had G 1/21 which at least considers that OP in person are the “gold-standard”. Why in-person OP are the gold standard before the BA and not before a first instance is a mystery. Art 116, R 115 and 116 do not distinguish between first instance and BA. What is then the legal basis in the EPC for such a distinction?
During the OP of G 1/21, the representatives of the president did not hesitate to claim that the EPC can be amended by secondary legislation. It seems that they have forgotten Art 172 and Art 164.
When looking at the EPC and its Rules of implementation, I fail to find a legal basis for OP by ViCo. OP by ViCo have been decided by order of mufti and the BA were forced to adopt them by amending the RPBA20. Now they are mandatory for good at least in first instance.
A mere reference to R 117 and 118 cannot be considered as a legal basis for mandatory OP by ViCo. R 117 merely provides that the decision on taking evidence specify whether it will be conducted by videoconference. R 118(2,a) merely provides that the summons to take evidence specify whether it will be conducted by videoconference. This is a bit short of a proper legal basis.
The lack of legal basis in the EPC of OP by ViCo is not the only problem. There are other parts of the decision lacking legal basis.
Art 2(1) of the decision of 22.11.2022 provides that “The members of an examining or opposition division may connect to the oral proceedings by videoconference from different locations”. I fail to find in the EPC and its Rules of implementation the legal basis allowing a deciding body, be it a first instance division or a BA, not to sit together when deciding the fate of an application/opposition.
I very much doubt that Art 125 will help in this matter. In Germany parties can be connected by video, but the deciding body has to sit in the same room. I doubt that this would be different in all other member states of the EPO.
As far as taking evidence is concerned, R 117 and 118 open the door to cheating. There is no guarantee that the witness/expert to be heard is not listening to the OP as public, or sitting next to a member of the public listening to the OP. I would not trust a simple declaration of the witness/expert that he/she is not listening in the OP. With in-person OP at least, guarantee was given that the witness would not listen in the OP.
Such a guarantee could only be given if the witness/expert would be obliged to give its statement in the premises of a court in one of the member states. Then, there is no problem with a video connection. In the absence of this guarantee, hearing of witnesses/experts cannot be given any evidential value.
In spite of the usual verbose comments in the communiqué of 22.11.2022, the service given to the users of system has been degrading in the latest years. The EPO has always decided amendments to the procedure which could help it and disregarded the needs or wishes of the users.
The present decision is a prime example of EPO’s casual attitude towards its users.
A further recent example is the suppression of the 10 days rule, even in case of postal delivery.
An older example is the strict limitation under R 79 to only send to the parties the opposition statement and the reply of the proprietor. There are two decisions of the EBA under Art 112a according to which the parties have no obligation to regularly consult the electronic file. Worse, the BA have adopted the same attitude in appeal.
How long will this deterioration of the service given to the users will continue?
How can this deterioration be stopped?
What you call deterioration is progress to some others.
There are a lot of attorneys and applicants supporting the decision to have vico as a new normal.
Agreed. A lot, though certainly not all.
However, I am puzzled, what does that have to do with the question of lawfulness of the President’s decision? Progress might be good, but at what price? Are we expected to tolerate a blatant disregard for the rule of law?
My suggestion would be for the EPC to be amended (at a Diplomatic Conference) to put this all on a sound legal footing. I would also suggest adding provisions regarding the taking of witness evidence by VICO – which really ought to be done at a court, so that the witness can be supervised in the same manner as would happen with in-person proceedings (to ensure that they do not observe the proceedings before providing their evidence, and that they are not “coached” when providing their evidence).
Given that a successful opposition can have a much greater impact than any revocation action before a national court, why should we tolerate admission into those proceedings of evidence that could easily be tainted?
So the new overall scheme is: in first-instance proceedings, OPs are held by Vico unless and until you request otherwise AND you manage to persuade the EPO that “there are serious reasons against” holding the OPs by Vico.
While this scheme does not literally contravene the holding in G1/21 (which was limited to appeal proceedings), it blatantly flouts the underlying reasoning, see e.g. reasons 45-50 of G1/21 — bearing in mind that there is no basis in Article 116 EPC for treating first-instance OPs differently than appeal OPs.
Even the EPO’s management’s decisions that led to G3/19 look tame in comparison.
I never thought it would happen, but the EPO’s management has made it happen: now I want the EPO to be turned over to the EU. At least the opinions of the court of last resort would be worth more than the paper they are printed on, and the staff would have an available and effective remedy against management abuses. The non-EU EPC member states would still do fine: either they have the resources for examining patent applications by themselves (e.g., Switzerland, Great Britain, Norway, Turkey), or they can enter an agreement with the EU to give effect to a hypothetical EU patent, either by default (like Liechtenstein with Switzerland) or upon request from the applicant (like Morocco, Moldova, etc.).
Dear Extraneous Attorney
You might want the EPO to be turned over to the EU so that the opinions of the court of last resort would be worth more than the paper they are printed on, and the staff would have an available and effective remedy against management abuses.
In the framework of the post relating to the non-respect of a decision of the ILO-AT (mass e-mails) the suggestion to attach the EPO to the EU was already made by LKJL.
I can only repeat here what I said at the time:
“Your suggestion might be interesting, but it would boil down turning back the wheel of history.
In the 60s of the 20th century, there have been no less than four drafts of a Community Patent Convention. None of those drafts ended up at a diplomatic conference.
One major problem was the closed character of this possible agreement as it was reserved for European Community EC member states. European countries which played an important role in patents, due to the fact they had a substantive examination system (e.g. SE, AT), were at the time not member of the EC.
Other reasons were language requirements (an official document of the EC/EU should in principle be available in all official languages of the member states), the fear of forum shopping to name the most preeminent. The UK, although at the time a young member state, was also not keen on this idea and had a quite obstructive attitude.
It is the pressure of the PCT signed in 1970 which created the fear of some EC/EU member states of being flooded by unexamined patents which pushed the European countries to have a new look at the situation. At the time, the PCT mainly consisted of Chapter 1.
The solution of the problem was, according to my information, proposed by Mr. Kurt Haertel, at the time head of the German Patent Office.
The proposal was to create two conventions, one which was open to non-EC/EU member states which would lead to the grant of a European patent which was equivalent to a national patent. The second convention was meant to deal with the rights of such an EP within the EC/EU.
All those efforts have been successful and ended in 1973 with signing of the EPC and the EPO opened its doors on 01.01.1978.
Another reason why a breakthrough was achieved with the EPC/EPO was the limitation of the official language of this to be created EPO to three: GB, DE and FR.
If you look at the “travaux préparatoires” you will find a lot of documents with reference to these various drafts within the EC and the meetings which took place in Luxembourg under the aegis of the EC.
You know now why the passage between the Pschorr-Höfe buildings is named Kurt Haertel Passage.
There has been a diplomatic conference in 1975 in Luxembourg about the community patent. This was again a closed convention. The community patent was a patent granted by the EPO and which would have been common to all EC/EU member states. The Luxembourg conference led to no tangible result and the project of a common patent was dead for many years. The reasons were still the languages and the fear of forum shopping.
It took up to 2012 and 2013 to come back with the idea of a patent valid for all some EU member states in the form of two EU Regulations, on the translations and on the enhanced cooperation, as well as the UPCA.
It seems thus not thinkable to return to the situation before the creation of the EPC as the EPC has now much more member states as the 27 EU member states. Politically the idea is dead-borne.”
Alas, you are entirely right: what I want is almost certainly infeasible. But is it not human, to want a few things that are infeasible?
On a side note, I did not know all the details you provided in your comment. Thank you.
Dear Extraneous Attorney,
If we could not have dreams or wishes, life would be very dull.
Some dreams and wishes can become reality, but they are, alas, relatively rare.
For the rest, I have little merit.
I had the chance to be at the right place at the right time and opened my eyes and ears.
Early in my career I became also very interested with the legal side of patents and I still am.
Dear Concerned Observer,
There is little, or even no doubt, that the President’s decision is unlawful.
It should first be remembered that the original questions raised by the referring board in G 1/21 related to OP in general and was not limited to OP before the BA.
It was the EBA which limited its finding to OP before the BA.
One can suspect that with the original composition of the EBA the order might have been the same, but the reasons would have been quite different.
Not only the President of the BA should have been removed, but all the other technical members of the BA as their opinion in the matter was well known.
The legal member jumped off the train when he realised that he could suffer the same fate as the President of the BA.
His latter appointment as future Chairman of the legal Board would have been endangered.
The Legal Division was never in charge of this topic, but the legal department in DG5 has done anything but cautioned the President against taking that decision. The head of this department and her superior have argued many times during the OP in G 1/21 that the EPC could be amended by secondary legislation.
The question is now what can be done to stop the upper management of the EPO in his devastating actions for the office?
As long as OP by ViCo were not more than a pilot or during a general emergency, it was difficult but not impossible to stop it.
Now there is a formal decision, an appeal complaining about the lack of legal basis for the president’s decision should be filed
I take bets that the president might file a referral for the EBA, so that with the “right” composition, a dynamic interpretation of the EPC, would allow to endorse his unlawful decision.
In any case Art 15a(1) RPBA20 should be amended so as to bring it in line with the golden standard for OP and Art 15a(3) should be deleted as it is absolutely unlawful.
The problem is that the AC has given up its role of checking the doings of the president and simply rubber stamps anything coming from the 10th floor of the Isar building.
The “cooperation” budget has done a lot of harm to the EPO.
It has always been a lever for the various presidents of the EPO, but the present one and its immediate predecessor have shamefully misused this budget.
The EPO’s management is not done with their efforts to impose VICOs as the default format for appeal OPs. This is from two lines of evidence.
Firstly, Art 15a RPBA has not been amended to bring it into line with G1/21. There is simply no excuse for this.
The ruling in G1/21 was clear in holding that, even during a “general emergency” impairing the possibility to attend in-person OPs, the parties should only be denied the option to use the in-person format for GOOD REASONS. This stipulation is not reflected in Art 15a RPBA, which merely indicates that VICOs can be imposed “if the Board considers it appropriate to do so”. As is evident from subsequent BoA decisions that turn a blind eye to the detailed reasoning of G1/21, there is a big difference between “good reasons for” and simply “considered appropriate”.
Secondly, the President of the Boards has installed himself as chair of the EBA in respect of R12/22.
One of the grounds of complaint in R12/22 is that G1/21 was not properly applied by the Board of Appeal that took the decision that is now the subject of the petition for review. The President of the Boards was (unwillingly!) excluded from the EBA on the grounds that a suspicion of his partiality was objectively justifiable. Having been excluded from G1/21, one would have thought that it would be immediately evident to the President of the Boards that he could not be perceived as impartial with respect to a determination of how G1/21 should be interpreted (and applied). It therefore speaks volumes that the President did not immediately recuse himself from R12/22 (and, 6 months on, still seems set upon chairing the EBA for that case).
Two highly questionable decisions for which there is no plausible excuse points to only one conclusion: the EPO’s management intends to find ways of “persuading” all Boards of Appeal to continue turning a blind eye to the reasoning of G1/21. If this does not work, for example if a contrary decision is issued by a “rebel” Board, then I guess we can expect another referral from the President, followed by arguments much along the lines of those in G3/19. All depressingly predictable.
Dear Attorney from the outskirts of Europe,
I have not contested the possibility of holding OP by Vico.
That being on the outskirts of Europe you prefer OP by ViCo is understandable.
What I have contested is the mandatory character of OP by ViCo, whereby OP by ViCo lack a legal basis in the EPC and its Rules of implementation.
With a proper legal basis The EPO should give parties the choice of the form of OP.
This is what I consider a deterioration of the service given by the EPO.
It just decides what suits it.
It may be simplistic to refer to a lack of supervision of the president by the AC and naive to wonder about the green light of DG5. The VP of DG5 was formerly the representative of a member state, and his deputy was formerly the head of staff of the president. Doesn’t this look like musical chairs between representatives of member states and their staff and top level at the EPO ?
Looking back, it is easy to see how it may have been possible for the Corsican to cut short the tenure of the previous (English) President of the EPO. That is, in theory, he could have simply promised a greater flow of funds back to the (delegates of) the Member States.
If one takes this hypothesis and applies it to the known facts, it certainly provides a plausible explanation for pretty much every development at the EPO over the past decade. In terms of explaining those developments, it beats every other hypothesis that I can think of hands down. I wonder if it really is that simple, in that the overarching theory that now dominates the management of the EPO is to treat the Organisation as a cash cow and to milk it as hard as possible.
In any event, looking at the UPC, it seems that the idea of running a public service as a profit center has certainly caught on.
Dear Concerned observer,
What you explain about R 12/22 is hard to believe, but is reality.
It is scandalous that the chair of the boards has put himself again in file relating to a topic in which has been ousted by his peers. It shows that he has not understood why he had been ousted in G 1/21.
An objection of suspected partiality should be raised!
It is only with turning a blind eye to the scandal started with G 1/21 that the president can behave as he does. The chair of the EBA is supporting the president of the EPO in its destructive attitude.
And for the AC it has become the dog wagged by the tail.
Trying to be a “rebel” board can be dangerous: the re-appointment can be refused.
Who said the the boards are independent?
Dear epo anon,
The musical chairs are indeed scandalous, but what is to be done when on top of it for various reasons the AC rubber stamps what comes from the 10th floor.
The “cooperation budget” should be be much more scrutinised by the AC, but since the delegations to the AC and their member states profit from it, they will never do anything about it. Since one country has one vote, it will never change even if the larger countries would like to come to more reasonable decisions in the AC.
The problem is that immunity has been equated with impunity, be it in legal matters or in staff matters.
Dear Concerned observer,
The greater flow of funds back to the (delegates of) the Member States is called “cooperation budget”.
It is well-known that this budget is modulated according to the voting behaviour of the delegations in the AC.
If a delegation does not support the president’s wishes the “cooperation budget” is reduced and if has well voted, then the “cooperation budget” is increased. This does not work for the large countries, but it makes the smaller countries very docile. As an example, the transfer of the BA to Haar was opposed by the large countries, but the measure was decided with the votes of the smaller countries.
The reasons why only mandatory OP by ViCo in first instance are the new normal is now confirmed. The suspicion has become reality.
The head of the EPO wants to reduce the presence of staff in the buildings. With less staff in the buildings, buildings can be sold and the result of the sale can flow in the “cooperation budget” or any other budget going to the contracting states.
In a Communiqué of 17 November 2022, the Office has announced the revival of the “Bringing Teams Together” project which actually aims to empty EPO buildings to save office space. It is only with mandatory OP by ViCo, whereby the members of the first instance divisions can sit in different locations, that an action like “Bringing Teams Together” is at all possible.
The EPO bases its decision on average building occupancy rates observed since September over a period of 10 weeks: 33% in Munich (but with peaks at 40% from Tuesday to Thursday) and 37% in The Hague. The indicative value of this data is as high as that of the fake “financial study” having led to a drastic reduction of the wages at the EPO, at least for the lower classes of staff.
The aim of the management of the EPO is indeed to treat the Organisation as a cash cow and to milk it as hard as possible. It insures the renewal of the contracts of the upper management and hence the flow-back to the delegations. The cooperation budget is a kind of hamster wheel. it is just necessary to start it. Once started it keeps running!
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