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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VESPA’s amicus curiae statement re G 1/21

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The Enlarged Board of Appeal of the European Patent Office will soon hear a case of fundamental importance for the parties’ right to be heard and the right to a fair trial. The question is how oral proceedings may be conducted in accordance with Art. 116 EPC. See this Blog here and the interlocutory decision T 1807/15 for details.

The referral is pending under G 1/21. ‘Oral proceedings’ (by videoconference, actually) are scheduled for 28 May 2021.

VESPA, the Swiss association of Swiss and European patent attorneys working in private practice, has filed a statement earlier today (see VESPA’s press release here), referring to a whole body of evidence-based research on the issue of videoconferencing in court proceedings. This research clearly shows that videoconferencing and in-person hearings are not equivalent, and the differences do affect the outcome.

Did the lawmaker tacitly accept or even intend that parties may be forced to settle with a second-best alternative to in-person oral proceedings? I could see that for a state of emergency (like a pandemic), to maintain access to justice. But not in normal times. No way.

HAVE YOUR SAY!

Any third party wishing to make a written statement can do so under Article 10(1) of the Rules of Procedure of the Enlarged Board of Appeal. Such statements should be filed by 27 April 2021 with the Registry of the Enlarged Board of Appeal, quoting case number G 1/21, and should be marked for the attention of Mr Nicolas Michaleczek ([email protected]); see the communication of 24 March 2021 for details.

Reported by Martin WILMING

AMICUS CURIAE BRIEF

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