G 1/21: State of play (continuously updated)

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As mentioned earlier on this Blog here, the following question has been referred to the Enlarged Board of Appeal (EBA), with interlocutory decision T 1807/15 of 12 March 2021:

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?

The docket to watch is EP 1 609 239.

Composition of the EBA

In a communication of 1 April 2021 (to be published in the OJ), the EBA noted that the panel considering the referal G 1/21 will be composed as follows (L, legal member; T, technical member):

Mr. C. Josefsson SE L, Chairman
Mr. W. van der Eijk NL L, rapporteur
Mr. I. Beckedorf DE L
Mr. R. Arnold GB L, external
Mr. E. Chatzikos GR L, external
Mr. G. Eliasson SE T
Ms. A. Ritzka DE T

This composition has first been indicated with a communication of the EBA of 17 March 2021.

No stay of first instance proceedings

The President of the EPO has decided that

[…] during pendency of the referral oral proceedings before examining and opposition divisions will continue to be held by VICO as under current practice, i.e. without requiring explicit agreement of the parties.

See the EPO’s news release of 24 March 2021 for details. The official notice (for publication in the OJ) holds that this is meant 

[…] to guarantee access to justice and ensure the functioning of the EPO […].

With a communication of same day, the Boards of Appeal have informed the public that new Art. 15a of the RPBA was approved by the Administrative Council on 23 March 2021 (Art. 15a is accordingly in force since 1 April 2021). Further, the following was noted (emphasis added):

Between May 2020 and February 2021, oral proceedings were held by videoconference in over 380 appeal cases. Initially, oral proceedings were held by videoconference only if all parties agreed. Since 1 January 2021, they have also been conducted without the consent of the parties in appropriate cases. The BOAC and the Administrative Council have confirmed this practice in new Article 15a RPBA (see CA/5/21, points 5 and 7).

The notification is silent about whether or not this practice is being continued or not pending the referral to the EBA.

Oral proceedings before the EBA

It is pretty clear that this referral is on the fast track.

It took the Registry of the EBA only 5 calendar days from the date of the referring decision (including a weekend) to issue summons to oral proceedings. They are scheduled to take place on 28 May 2021 at 09:00 hrs, by videoconference:

This is a very tight schedule. What is more, the EBA noted that

[…] a decision of the points of law referred to the Enlarged Board could be issued promptly

if the parties consider oral proceedings before the EBA not to be expedient and/or envisage not to attend the oral proceedings:

The patentee / respondent has indicated with letter of 26 April 2021 that he will not attend the ‘oral proceedings’ before the EBA; see here.

Isarpatent has taken over representation of the opponent / appellant with letter of 27 April 2021, suggesting that the referred question should be answered in the negative. In addition, C. Josefsson, A. Ritzka and G. Eliasson are objected for the appearance of bias.

Amicus curiae briefs

With a communication of 24 March 2021, third parties have been invited to submit written statements in accordance with Art. 10(1) of the Rules of Procedure of the Enlarged Board of Appeal, so-called amicus curiae briefs. They should be filed by 27 April 2021 with the Registry of the EBA, quoting case number G 1/21, and should be marked for the attention of Mr Nicolas Michaleczek ([email protected]).

The following list of amicus curiae briefs is continuously updated as they appear online. The color indicates whether the respective submission argues in favor (green) or against (red) ‘oral proceedings’ by videoconference without the consent of a party at least in non-pandemic times and/or before the Boards of Appeal. Unlabeled submissions are either not taking such a clear-cut position on the referred question, or relate to the appearance of bias only (epi (1) and (2)).

Amicus curiae

Date Submitted by
01 08 Apr 2021  VESPA
02 12 Apr 2021  epi (1)
03 13 Apr 2021  Bayer
04 15 Apr 2021  A. Schauinsland
05 16 Apr 2021  C. Menges
06 19 Apr 2021  Siemens
07 19 Apr 2021  BASF
08 20 Apr 2021  Med. for Europe
09 21 Apr 2021  Philips
10 21 Apr 2021  VPP
11 21 Apr 2021  APEB
12 22 Apr 2021  G-F & D
13 22 Apr 2021  VDA
14 23 Apr 2021  FEMIPI
15 23 Apr 2021  REPI
16 25 Apr 2021  BDPA
17 27. Apr 2021  PAkammer
18 26 Apr 2021  Plasseraud
19 26 Apr 2021  Roche
20 26 Apr 2021  Maiwald et al.
21 26 Apr 2021  Laine IP
22 26 Apr 2021  epi (2)
23 (undated)  IP Ability
24 26 Apr 2021  J. Cockburn
25 27 Apr 2021  Saint-Gobain
26 27 Apr 2021  Murgitroyd
27 27 Apr 2021  CIPA
28 27 Apr 2021  Clariant
29 27 Apr 2021  M. D. Snodin
30 27 Apr 2021  J. Schmidtchen
31 27 Apr 2021  VCI/VDMA/ZVEI
32 27 Apr 2021  EPLIT
33 27 Apr 2021  Fresenius Kabi
34 27 Apr 2021  IPO
35 27 Apr 2021  C&R
36 27 Apr 2021  FICPI
37 27 Apr 2021  IP Federation
38 27 Apr 2021  F. P. Vatti
39 27 Apr 2021  IK-IP
40 27 Apr 2021  Ericsson
41 27 Apr 2021  C. Beckmann
42 27 Apr 2021  CNCPI
43 27 Apr 2021  epi (3)
44 27 Apr 2021  Philip Morris
45 27 Apr 2021  ReadyOppoOne
46 27 Apr 2021  Union
47 28 Apr 2021  Downing IP

There is also a list of the amicus curiae briefs in a websection of the Boards of Appeal which is dedicated to G 1/21 here.

The President of the EPO has submitted comments under Art. 9 RPEBA on 27 April 2021.

Third party observations

In addition to the amicus curiae briefs, there are also a lot of unsolicited / anonymous third party observations (TPO) in the online file wrapper.

The following list of TPOs is continuously updated as they appear online.

What to wish for, and what to expect

One may like videoconferencing or not. That is a matter of opinion, not a matter of fact or law. I have attended quite some ‘oral proceedings’ by videoconference over the last months, in examination, opposition and appeal proceedings. I did not object to any of those, and they had all been reasonably okay under the current pandemic circumstances. Accordingly, I am not fundamentally against oral proceedings by videoconference per se.

However, I am a big fan of in-person oral proceedings when it really matters; see e.g. this Blog here. In non-pandemic times, parties should have the right (again) to insist on oral proceedings in person if they wish so. This must not be only something that is occasionally allowed upon request at the mercy of a deciding body of the EPO in individual cases.

So, this is what I wish for. Not much, actually.

What is more, I feel in good company with the views taken by both epi and BusinessEurope:

epi is the professional body representing all European Patent Attorneys, with currently about 12’300 members. BusinessEurope speaks for all-sized enterprises in 35 European countries whose national business federations are its direct members. Accordingly, the Standing Advisory Committee before the EPO (SACEPO) is mainly staffed with representatives nominated by epi and BusinessEurope; see here. Thus, the users have been consulted, and they clearly and overwhelmingly expressed their views.

But what to expect?

Some say that the answer will surely be ‘Yes’ (contrary to my wish), inter alia in view of:

    • the explanatory notes to Art. 15a RPBA in BOAC/16/20 (N 20) and the subsequent approval by the Boards of Appeal Committee and the Administrative Council (see above);
    • the composition of the panel of the EBA; and
    • the notice in the summons that a decision could be issued ‘promptly’ if no oral proceedings were necessary (see above).

I am not so sure about it. But I’m a die-hard optimist.

Reported by Martin WILMING

T 1807/15 – 3.5.02

Interlocutory decision of 12 March 2021

Appellant / opponent:

Rohde & Schwarz GmbH & Co KG
Mühldorfstrasse 15
D-81671 München (DE)

Respondent / patentee:

Andrew AG
Bächliwis 2B
CH-8184 Bachenbülach / Zürich

Composition of the Board:

Chairman: Richard LORD
Member and rapporteur: Wilhelm UNGLER
Member and rapporteur: Fabian GIESEN

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10 Replies to “G 1/21: State of play (continuously updated)”

  1. Thanks Martin for this great resource – the DocumentCloud clips with links to the full document are a brilliant function.

  2. Great resource indeed, Martin; thank you very for your work on this matter and for the valuable information you continuously provide.

  3. If there is no witness hearing or evidence administration, why not get rid of OP entirely (needs a change of A.116 EPC as well). If it is to repeat orally the written submissions, then I think the EPO is sufficiently educated to read the arguments and draw the appropriate conclusions. Also, I do not see any merit in allowing last minute auxiliary requests at OP. The facts of a case do not change suddenly because OP start. There is a moment in time in the proceedings when the new submissions have to find an end. It might as well be in the written proceedings. Let’s simplify and cut unnecessary costs.

    1. That’s a provocative thought. It would surely simplify proceedings and cut costs. But would it cut “unnecessary” costs? I’m not so sure. In my view, justice must not only be done. It must also be perceived to be done. Standing in front of the deciding body and arguing your case is the most effective way for justice being perceived to be done. A party gets the attention it deserves. I feel that the reputation of the EPO is, to large extent, driven by the fact that there is the right to oral proceedings.
      At the appeal stage, I don’t think that oral proceedings can be abolished. If we take it seriously that the BoA are a judicial body, then Art. 6 EMRK applies.

  4. Provocative? Probably to some. How many oral hearings (not oral decision deliberations) at the Swiss Bundesgericht have you attended to? The practice of the German LG/OLG shows that the decisions are written prior to the hearing (they actually already hint at the outcome at the beginning of the hearing so that the parties focus on the elements that will be relevant for the subsequent appeal in the court’s view), including in the rare cases in which the courts find out during the hearing that their opinion may not be ideal in every aspect: they don’t rewrite the decision, they try to argue away the weakness and leave it to the appeal courts to fix the ugly parts of the decisions. Justice is not more seen to be done because the parties repeat their arguments orally (as we are doomed to do under the ZPO). It is seen to be done when the courts properly consider (without bias) the pertinent facts submitted by the parties during the proceedings. This is best achieved in the written proceedings under the ZPO (with the rare exceptions of admissible novas, outside of parties’ control), in which neither the parties nor the courts are under immediate time stress. What is the merit of a case in which the essential elements are handled under stress? The problem of the EPO OP is that the parties are allowed to pump in new facts and new requests at OP, which unnecessarily fosters party misconduct and balloons the OP. Why do EPO OP have to run over 10 hours+ on patentability when German or Swiss courts can expedite patentability, infringement and remedies in 2 hours? There is no merit whatsoever in allowing the parties the confuse the issues in the fire of OP and trying to trick out the EPO at the other side’s expense. This is not the expression of justice. It is actually exactly the contrary. Apart from evidence talking (and seldom admissible nova consideration), hearings in Germany have only marginally anything to do with the judges. It is a largely a show of the attorneys for their client (and the costs that come with it). To put it into the words of the former president of the FPC: the hearing only allows the parties to present the already submitted facts in a didactically different manner. Do you think judges can’t read the submissions? If a judge is surprised at y hearing he should wonder where it appeared in the written submissions and draw the conclusion. The pitty is that the legal texts that govern the proceedings are drafted by attorneys and their fellows. Why do we need all these fancy procedural tools? To serve justice? Really? Why does Germany need 3+1 judicial instances + bifurcation? In the interest of justice? Why does the UPC have to mimic with some variations this system? Why does common law need discoveries? 99% of the discovered facts are beside the point and the 1% relevant discovered facts is hardly in itself ever decisive. It is so disproportionate that half of the world can do without discoveries. It is though not a waste for everybody… How many instances do you need to accept a last instance bad decision (to put it into the words of a former member of the EBA)? If you believe in “justice” we’ll meet in church and pray together. Courts don’t have access to this (and should not be expected to:
    “Die Gerechtigkeit wohnt in einer Etage, zu der die Justiz keinen Zugang hat.” – Friedrich Dürrenmatt). Don’t idealize or read into the court system more than there is: the last available tool to restore peace. This is already pretty valuable for society!

    1. The EPO has to examine the facts of its own motion, Art. 114/1 EPC. This explains, to large extent, why hearings at the EPO are frequently so cumbersome with late requests, amendments, freshly cited prior art, etc all being admitted into the proceedings. Attempts to streamline this are currently ongoing, but we will never get to a situation comparable to civil proceedings (unless, of course, the EPC would be amended in this respect, which I don’t see coming).

      In my experience, the preliminary opinion of an ED or OD that is being sent with the summons to oral proceedings is often times anything but carved in stone. It really is an interim assessment made by the rapporteur. In by far the most cases, neither the chairperson nor the minute writer will have really looked into the matter. In my view, the preliminary opinion is the essential element to focus the discussion in the further course of the proceedings. Both sides get a first impression of which arguments might stick, or not. The next essential element is the hearing. To me, it is the only way to assure for a party that all members of the panel actually pay attention and get involved. Putting it differently: I frequently see preliminary opinions being turned around in oral proceedings, which shows to me that we should not just abolish them. They can – and frequently do – make a difference.

      This is not much different at the FPC. I take the expert opinion of the judge-rapporteur merely as a contribution to the formation of an opinion by the whole panel of judges. The hearing is the ultimate chance for the parties to talk to the whole panel, and to convince the other judges of what the judge-rapporteur got right or wrong. This might not always lead to ultimate justice being done in the end. But I am convinced that it brings us closer to it.

  5. If the EPO did’t piecemeal the OP along each individual request concluded by on the spot deliberations and decisions, but let instead the parties present their entire case in one go at OP, the EPO OP would be as short as in DE or CH. Without going into the scope of A114 in inter-partes proceedings, I don’t see how this should influence this EPO piecemealing choice in practice.

    I see why representatives like the oral pleadings before the authorities in general. I don’t see much added value in impersonal business cases, where the “personal impression” is as impactful as in a corporate accounting and tax case.

    When the promotion of savegarding measures of the “public interest” go hand-in-hand with the wallet of the promoters, one should as a rule be very cautions about the appropriateness of the measures. This is generally valid even in the patent field. See for example the recent attempts to create a representation monopoly before the IGE for CH registered patent attorney (draft bill of the patent attorney act corrected by industry), the attempt to exclude CH patent attorneys from the attorney-client privilege (draft bill promoted by bar attorneys corrected by industry), and now the attempt to force full examination/opposition of CH patents (allegedly in the interest of SMEs, too bad SMEs predominantly don’t seem to understand how they should benefit from the initiative). Taking one step back, it seems quite obvious what is going on there.

    It’s actually quite healthy that in Switzerland the safeguarding of the legal interests is apparently not left solely to the professional legal practitioners. Too bad that this does not seem widely spread elsewhere.

    To be clear: I’m a personal beneficiary of this OPs system. This being said, my time is billed at the same rate when generating real added value for the client as when harvesting a case that cannot be closed more efficiently for the “quest” of greater “justice”. In the interest of the clients, I’d rather be paid for adding real value than for low-value procedural principle management.

    1. I agree, the EPO’s piecemeal approach is anything but efficient. I wouldn’t miss anything if this would be abolished with.

      On the other hand, I do feel that I can add real value for a client in oral proceedings. Not always, of course (if you just take the outcome of the proceedings into account). But I cannot guarantee this in purely written proceedings, either. I can only try and do my very best. But without oral proceedings at the EPO (with all the moves for ever increasing productivity and efficiency), I am pretty sure that first instance decisions would only be really thought through by the rapporteur, with the other two members of the panel doing a plausibility check. But maybe not even that. Wouldn’t that be a pity in terms of quality?

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