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:
- 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.
The team at Carpmaels & Ranford has a wealth of experience in representing clients in oral proceedings held by VICO, including one of the first opposition hearings. 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.
For now, the Boards of Appeal continue to offer the possibility of oral proceedings taking place in person at the EPO. Under the current system, the Board will issue 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 parties will not be sent a communication asking whether they can attend the proceedings in person. Rather, 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 the Boards will currently do so only if all the parties agree. This could soon be about to change though with the Boards of Appeal having just announced a consultation on a proposed amendment to the Rules of Procedure of the Boards of Appeal (RPBA) which would give Boards the power to schedule oral proceedings to take place by VICO of their own motion. Under this new amendment the Boards would no longer require the agreement of the parties to hold the hearing by VICO. The consultation on the new amendment to the RPBA closes on 27th November 2020 and the amendment, if accepted, is not due to enter into force until 1st April 2021. However, the explanatory remarks accompanying the consultation indicate that “the Boards of Appeal may adapt their practice before the date of entry into force” which suggests we could see a big change in the Boards’ approach to VICO hearings well before next April.
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.