Opposition proceedings at the EPO

At the outset of the COVID-19 pandemic, the EPO introduced a pilot project for opposition oral proceedings to be held by videoconference (VICO) which was due to run until 30th April 2021. Under that pilot scheme, oral proceedings before Opposition Divisions could take place by VICO at the discretion of the Opposition Division and with the agreement of all parties.

Given the current status of the global pandemic, the EPO has now taken the decision to extend that pilot program through to 15th September 2021. Furthermore, the EPO has now decided that all Opposition Division hearings will take place by VICO, unless there are serious reasons preventing this approach. This move aims to improve certainty for all parties and to prevent lengthy delays in decisions being reached on important cases.

Under the earlier pilot project, patentees and opponents were each invited to confirm whether they consented to the oral proceedings taking place via VICO. If any one of the parties did not give their consent, the EPO had no choice but to postpone the proceedings to a later date when in-person hearings could resume.  This often resulted in the last minute postponement of oral proceedings leaving parties uncertain as to if, and when, to file additional submissions in the run up to the oral proceedings, and unsure of when the hearing would finally take place.

In a move that is designed to improve certainty for all parties concerned and reduce the ever-increasing backlog of postponed opposition hearings, the President of the EPO has now decided that from 4th January 2021:

• Oral proceedings before Opposition Divisions will be held by VICO.
• Notwithstanding paragraph 1, oral proceedings may be held on the premises of the EPO, either at the request of the party or at the instigation of the Opposition Division, if there are serious reasons against using VICO.
• Oral proceedings by VICO are equivalent to oral proceedings held on the premises of the EPO.

It is yet to be seen what sort of grounds will constitute serious reasons for avoiding VICO. The EPO has issued a notice which provides a few examples of what might be considered serious reasons. These examples include medical reasons that prevent a participant using VICO and cases involving physical models that need to be handled to be fully understood. The EPO clarified that objections against the reliability of the VICO technology, or non-availability of VICO equipment, will not qualify as serious reasons. So, it seems likely that almost all Opposition Division hearings will be handled by VICO under this new scheme.

Appeal proceedings at the EPO

The Boards of Appeal have continued to schedule oral proceedings in person at the EPO. Under the current system, the Board issues a summons to oral proceedings with the hearing scheduled to take place at either the Isar building in Munich or the Board of Appeal premises in Haar. The onus is on the parties to proactively write to the Board and request a change of date if they are unable to attend. Alternatively, parties have the option to request that the proceedings be held by VICO, but up until now, the Boards have used VICO only with the agreement of all the parties.

However, the EPO has now announced changes that will allow the boards to conduct oral proceedings by VICO even without the agreement of the parties concerned. These changes will be introduced with new Article 15a RPBA, which has been adopted by the Boards of Appeal Committee:

• 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.
• Where oral proceedings are scheduled to be held on the premises of the European Patent Office, a party, representative or accompanying person may, upon request, be allowed to attend by videoconference.
• The Chair in the particular appeal and, with the agreement of that Chair, any other member of the Board in the particular appeal may participate in the oral proceedings by videoconference.

Article 15a RPBA will enter into force from 1st April 2021. However, in its latest announcement, the EPO has explained that since the new provision merely clarifies an existing possibility, the boards may adapt their practice before the date of its entry into force, specifically from 1st January 2021.

Under the new rule, the Board in the particular appeal will determine whether it is appropriate to hold the oral proceedings by videoconference, either of its own motion (e.g. in the summons to oral proceedings), or in response to a request from one of the parties. It remains to be seen exactly how the Boards will apply their discretion. However, some examples of considerations that may be taken into account when deciding the suitability of the case to be heard by video conference are provided in this proposal document relating to Article 15a RPBA. The examples include: the complexity of the case, any need for interpretation, the parties’ willingness or not to attend remotely and their arguments for or against remote attendance, any foreseeable travel restrictions, and the personal circumstances of the persons due to be involved in the oral proceedings. Overall, we can expect to see some changes to the Boards’ approach to VICO hearings from the start of 2021.

Positive experiences with video conference oral proceedings

The team at Carpmaels & Ranford has a wealth of experience in representing clients in oral proceedings held by VICO. Oral proceedings in examination have been held by VICO for some time now, but we now also have lots of new experience conducting both opposition and appeal hearings by VICO, including one of the first opposition hearings to be held in this forum. Recent experience includes participation in new-style VICO hearings where simultaneous translation is provided for the parties through the Zoom platform.  The simultaneous translation facility worked well, with the switch between hearing contributions in different languages occurring automatically. The platform uses software that adjusts the volume so that all participants are individually able to select whether to hear the feed from only the translators or to also hear the original contribution at 20% of the volume.  Overall, the experience with respect to simultaneous translation was similar, if not better, to being at the EPO.  Another benefit of the move to VICO is that clients and members of the public can join the hearing from anywhere in the world, providing increased accessibility to key EPO Opposition hearings.

Our team of EP representatives are looking forward to continuing to represent our clients virtually at EPO hearings. Indeed, the new arrangements provide a number of significant benefits for all parties and we expect this to be the new normal long after the end of the current pandemic.