The OD held that the claimed subject-matter of European patent application no. 2 533 655 was novel and involved an inventive step. The O appealed the decision and requested that the decision under appeal be set aside and that the patent be revoked. In contrast, the P requested that the appeal be dismissed and that the patent be maintained as granted or, at least, in amended form. Although the O requested in-person oral proceedings, the oral proceedings were held by ViCo.
The O argued that holding the oral proceedings by ViCo was not allowable in view of decision G 1/21, which stated that that parties could only be denied the option of in-person hearings for good reasons. According to O, none of these reasons were present in the current case since:
In its reasoning, the BoA explained that it decided of its own motion to hold the oral proceedings by ViCo pursuant to Article 15a(1) RPBA 2020, which read:
"The board may decide to hold oral proceedings by videoconference if the board considers it appropriate to do so, either upon request by a party or of its own motion."
From the expression "if the board considers it appropriate", it was deemed evident that the BoA had discretion to decide whether to hold oral proceedings by ViCo. Furthermore, the BoA commented that the provision did not explicitly set criteria to be applied when exercising this discretionary power, nor did it require the consent of the parties. In order to decide whether it was appropriate to hold the oral proceedings by ViCo, the BoA considered the O’s arguments as listed above. In brief, the BoA found none of the O’s arguments to be convincing since:
The O referred to decision G 1/21, in accordance with which in-person hearings should be the default option of which the parties could only be denied for good reasons. In decision G 1/21, the Enlarged Board of Appeal stated:
"As for the reasons that could justify denying a party its wish to have the oral proceedings held in person, the Enlarged Board makes the following observations.
Firstly, there must be a suitable, even if not equivalent, alternative […].
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 […].
Thirdly, the decision whether good reasons justify a deviation from the preference of a party to hold the oral proceedings in person must be a discretionary decision of the board of appeal summoning them to the oral proceedings."
As elaborated above, the BoA decided that the first and third criteria were met. In the present case, a ViCo was suitable, and the decision was a discretionary one. As regards the circumstances of the case that justified the decision not to hold the oral proceedings in person, the BoA considered it sufficient that access restrictions at the EPO premises (such as obligation to test prior to entering the premises, wearing face masks within the premises, …) were still in force. Hence, the BoA saw no conflict with G 1/21. Irrespective of this, the BoA also considered whether in the current case holding oral proceedings by ViCo could be considered an equivalent alternative to holding oral proceedings in person, even having regard to G 1/21, in which in-person oral proceedings are stated to be the gold standard:
Firstly, decision G 1/21 was taken after the EBA limited the scope of the referral and reformulated the referred question
"Is the conduct of oral proceedings in the form of a videoconference compatible with the right to oral proceedings as enshrined in Article 116(1) EPC if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference?"
"During a general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises, is the conduct of oral proceedings before the boards of appeal in the form of a videoconference compatible with the EPC if not all of the parties have given their consent to the conduct of oral proceedings in the form of a videoconference?"
Furthermore, this decision was issued when the boards had had little experience with the software tools used for videoconferencing. As set out in G 1/21, "at this point in time videoconferences do not provide the same level of communication possibilities as in-person oral proceedings".
Since then, according to the board, the situation has changed, and the boards but also the parties have had extensive experience with videoconferences and the tools involved. The board evaluated that the technical requirements were met on the board's side and also on the side of the representatives to allow for stable ViCos with high-quality picture and sound such that holding oral proceedings by videoconference was no longer as far from the gold standard as it had been when decision G 1/21 was taken. On the contrary, in the board's view, nowadays, oral proceedings held by ViCo are often equivalent to a hearing in person. This applied to the case at hand in which the board assessed there were no apparent limitations on the interaction between the parties and the board, and on the opportunity for the parties to argue their cases by ViCo when using the available technology.
Therefore, the board concluded that even in view of the decision G 1/21, oral proceedings by ViCo were in this case not only suitable but also represented an equivalent alternative to in-person oral proceedings.
Summary written by the NLO EPO Case Law Team