close icon-linkedin icon-twitter icon-facebook icon-mail icon-google-plus icon-search icon-phone icon-instagram
What are you looking for?
hearing
Case law 13 Apr 2023

Did video kill the in-person oral proceedings? | T1158/20

For the first time, decision T 1158/20 directly addressed the Enlarged Board of Appeal (EBA) G1/21 reasoning which found that in-person proceedings should be the default way of conducting oral proceedings in absence of a state of emergency. In the case at hand, a decision of the Opposition Division (OD) to reject the opposition filed against European patent no. 2 533 655 was appealed by the Opponent (O). Oral proceedings were held before the board by videoconference (ViCo) with the consent of the Patent Proprietor (P). The O did not consent to holding the oral proceedings by ViCo and requested in-person oral proceedings. In particular, the O argued that holding the oral proceedings in appeal by ViCo was not allowable in view of G 1/21. The Board of Appeal (BoA) disagreed with the O and concluded that oral proceedings held by ViCo were equivalent to a hearing in person.
  • Pursuant to Article 15a(1) RPBA 2021 the boards have a discretionary power to hold oral proceedings by ViCo without the consent of all parties;
  • Holding oral proceedings by ViCo can be considered an equivalent alternative to oral proceedings in person because, according to the board, the boards and the parties are now considered more experienced with ViCo and the tools involved in it, than at the time when the G1/21 decision was issued.

Background

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.

Format of the Oral Proceedings

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:

  1. A general emergency no longer prevailed as indicated by the absence of travel restrictions, a negligible number of COVID-19 infections. Thus, G 1/21 required that holding oral proceedings by ViCo required the parties’ consent;
  2. No long-distance travel was required. The O was represented by a representative located in Munich. Similarly, the P could find a representative in Munich to act on his behalf;
  3. In decision T 996/20 by the same BoA, a request for oral proceedings by ViCo was not granted in absence of the consent of all parties; and
  4. ViCo was not suitable for the case at hand as the O held it reasonable to assume that the P would file a plurality of further auxiliary requests, and that this could not be done in an efficient manner by ViCo.

Reasons for the Board’s decision

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:

  1. The COVID-19 pandemic was still ongoing at the date of the oral proceedings. The BoA agreed with the O’s argument that general travel restrictions within the host countries of the parties would be a clear indication that oral proceedings should be held by ViCo. However, the absence of such travel restrictions was not a clear indication that oral proceedings must therefore be held in person;
  2. The P’s representative was located in London and hence needed to travel to Munich. Contrary to the O’s suggestion, the BoA found that it cannot be expected of the respondent's representative to find a colleague of the same firm located in Munich as a replacement just for the purpose of attending oral proceedings in person while the representative located in London was available to participate in oral proceedings by ViCo;
  3. Decision T 996/20 was a discretionary one based on the circumstances of said case. It should also be noted that the composition of the board was different;
  4. The numerous auxiliary requests already filed were not an indication that, during oral proceedings, a plurality of further auxiliary requests would be filed. But even if the P were to submit further auxiliary requests, this could be accommodated by email submissions during the ViCo, in accordance with the practice of the boards. In fact, the P filed further auxiliary requests during oral proceedings which were forwarded to the O. None of the parties experienced problems using this procedure.

Referral to G1/21

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."

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.
The Board of Appeal - European Patent Office

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?"

to:

"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.

Decision of the Board (of Appeal)

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

More about this article:

EPO Case Law Team

Meet our experts
Every month NLO provides its clients and contacts with a selection of case law from the Boards of Appeal of the European Patent Office. Would you like to receive this newsletter? Hit the subscribe button below:
Subscribe

You might find this interesting: