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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Referral to the Enlarged Board of Appeal re video-conferencing: All you need to know for now

Reading time: 4 minutes

As reported by the IPKat, with reference to a note of Reddie & Grose on their website, a referral to the Enlarged Board of Appeal is currently in the making. The legality of oral proceedings conducted as video-conference will be looked at.

Note, however, that the referral has not yet been made as per today.

The docket to watch is EP 1 609 239. The parties had not consented to oral proceedings by video-conferencing, but they have nevertheless been summoned to a video-conference. The minutes of the oral proceedings of 8 February 2021 hold:

After deliberation by the Board, the Chairman informed the parties that the Board will refer a question to the Enlarged Board of Appeal. The decision will be given in writing.

The composition of the to-be-referring Board 3.5.02 of Chaiman Richard LORD has then been changed on 11 February 2021; Wilhelm UNGLER (legal member) has been appointed as an additional rapporteur besides Fabian GIESEN (technical member).

One of the parties had filed an auxiliary request by Email, apparently during the oral proceedings. Since the request was in German, I suspect that it was filed by the opponent / appellant. It losely translates as follows:

We hereby submit the auxiliary request to submit to the Enlarged Board of Appeal for decision the question whether oral proceedings pursuant to Art. 116 EPC may be replaced by a video-conference if the parties do not agree thereto.

(On the fun side: Does that mean that a video-conference had been okay if the main request had been granted?)

I don’t think that this will be the question finally being referred to the EBoA because it already assumes that a video-conference is something different than oral proceedings pursuant to Art. 116 EPC. This, in my perception, is already part of the problem to be finally resolved by the EPO.

Once the referral has actually been made, cases with parties being summoned to oral proceedings by video-conference without their consent will likely be stayed. This will concern quite a lot of cases. Accordingly, I would expect that the EBoA will pick it up as soon as possible, like G 2/19 (Haar vs Munich) which had been resolved in less than five months.

UPDATE 16 March 2021:

Decision T 1807/15 of 12 March 2021 (see below) refers the following question to the EBoA:

«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?»

What is to be hoped for

I am a big fan of oral proceedings in person; see e.g. this Blog here.

Still, I feel it would be a disaster if the EBoA concluded that a whole lot of unsolicited oral proceedings by video-conference during the pandemic were illegal. What I do hope for though is that the EBoA paves the way back to oral proceedings in normal times / after the pandemic as we had been used to have them at the EPO: In person, at least for those who expressly do not consent with video-conferencing.

The best piece of research in this respect that I have seen by now is from Tilman PFRANG, available here.

Further, many submissions have been made during public consultation on the new Art. 15a of the Rules of Procedure of the Boards of Appeal that expressly provides for video-conferencing (at the discretion of the respective Board). Not even a summary of all the submissions is available to date, but quite some associations have made their submissions publicly available. This is a wealth of information on the issue:

If you are aware or come across further publicly available submissions, please let me know and I will include them here.

UPDATE 19 February 2021:

The (very brief) summary of responses to the online user consultation on Art. 15a has been published earlier today; see here.

Reported by Martin WILMING

T 1807/15 – 3.5.02

Interlocutory Decision of 12 March 2021

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No oral proceedings by video-conference if parties do not agree

Reading time: 3 minutes

Case No. 4A_180/2020 (Supreme Court) | Decision of 6 July 2020

Oral proceedings by video-conferencing are currently en vogue, e.g. in the U.K. and The Netherlands, just to name a few. When all parties agree, I have no issue with that. But I am troubled when parties to proceedings are forced into video-conferencing even when they don’t want them, e.g. in first instance proceedings at the EPO; see this Blog here.

Under the Swiss Civil Procedure Code (CPC), the Supreme Court had to deal with an appeal of a party who did not consent with the main hearing being held by video-conference at the Commercial Court Zurich. The hearing was held nevertheless by Zoom, in accordance with a procedural decision of 1 April 2020 (you can’t make this up) — and the respective party did not attend. It was bound to happen: The Supreme Court has now set aside the judgment on the merits in the aftermath of the hearing, in no uncertain terms.

The Supreme Court holds that the CPC requires the physical presence of the persons summoned and the members of the court at the same place. This results, for example, from the provisions governing appearance at the main hearing and the consequences of default; see, for example, Art. 133 lit. d, Art. 134,  Art. 147(1) CPC. The Code of Civil Procedure thus conceives the main hearing as an oral hearing in the courtroom with the parties and members of the court physically present.

On a side note, the EPC is not much different in this respect; see e.g. R. 115(2) EPC (emphasis added); yet a further argument why I believe that the recent draconian move of 1 April 2020 [sic!] to make videoconferencing in first instance proceedings at the EPO mandatory should be revisited:

If a party duly summoned to oral proceedings before the European Patent Office does not appear as summoned, the proceedings may continue without that party.

For this and yet further reasons, the Supreme Court allowed the appeal and set the judgment of the Zurich Commercial Court aside. In doing so, it explicitly did not address the security concerns regarding the use of the ZOOM Cloud Meetings app. You don’t think there are any? The zoom-bombed bond hearing in Florida on 5 August 2020 in the case of Graham Clark, the alleged mastermind of a recent bitcoin scam through the accounts of high-profile Twitter users, is a prime example of what can go wrong.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_180/2020 (Supreme Court) | Decision of 6 July 2020

n/a
./.
n/a

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Fabienne HOHL
      • Dr. Martha NIQUILLE
      • Dr. Yves RÜEDI
      • Marie-Chantal MAY-CANNELLAS

Court Clerk:

    • Christian STÄHLE

Representative(s) of Defendant / Appellant:

Representative(s) of Respondent / Plaintiff:

DECISION

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No April Fool’s joke: A hard move to videoconferencing at the EPO

Reading time: 8 minutes

I guess most of us have implemented certain changes to business procedures, due to the Covid-19 crisis. There is certainly some truth in the following ‘multiple choice questionnaire’ which I have recently seen first on Twitter (@MBA_ish):

Digitalization driver

Challenging times demand for creative solutions. This certainly holds true for the EPO, too. Clearly, the EPO should not and cannot be shut down completely in these times.

But how to deal with oral proceedings, when crowds of people should be avoided and with all those travel restrictions in place?

The EPO’s approach is to make videoconferencing the general rule for oral proceedings before Examining Divisions; see the Decision of the President of the EPO of 1 April 2020 and the Notice from the EPO of same date.

According to the President’s Decision (Art. 1), face-to-face oral proceedings will only be held

 […] if there are serious reasons against holding the oral proceedings by videoconference such as, in particular, the need to take evidence directly.

The Notice of the EPO (¶3) makes clear that there may be other serious reasons for not holding a videoconference,

[…] for example where an impediment prevents an applicant or representative from participating in oral proceedings held by videoconference.

But at the same token, the Notice makes clear that

[s]weeping objections against the reliability of videoconferencing technology or the non-availability of videoconferencing equipment will, as a rule, not qualify as serious reasons in this regard. Equally, the need to consider written evidence will not qualify as a serious reason.

That’s a pretty drastic change — not only during the current pandemic, but even thereafter. Even though videoconferencing as a means for conducting oral proceedings has been available at the EPO since 1998(!) (see OJ EPO 12/1997, 572), it had not gained much practical relevance. To the best of my knowledge, less than 10% of oral proceedings before Examining Divisions had actually been held by videoconference, even in recent times.

Why is that?

First, it is my understanding that it was the EPO that refused requests for videoconferencing quite often. Thus, there was a demand for more videoconferences.

Second, there are people like me. Of course there are pros and cons for both, videoconferencing and face-to-face oral proceedings. You may call me a flat-earther, but I am a big fan of face-to-face hearings. I would never opt for a videoconference in an important case that is at the brink of being refused (which is why one normally is summoned to oral proceedings, right?). Oral proceedings are the last chance to convince the ED that a patent should be granted. There is more to oral proceedings than just the spoken word and a tiny, delayed and sluggish image of the person who is speaking. Compared to a face-to-face hearing, videoconferencing to me clearly is no more than a second-best solution.

If the case at hand is of less importance for a client, a videoconference might well suffice — and I would no doubt make use of videoconferencing in such cases. It all boils down to costs. But there is a difference between cost-worthy and cheap. When I go to oral proceedings, I do make sure that it is cost-worthy in view of the importance of the case for the client, and I am convinced that I can do the best for my client in a face-to-face hearing.

It is hard for me to accept that a second-best solution is now being implemented on the rush as a standard for conducting oral proceedings before EDs. It may be pragmatic in the current situation, and it may be cost-effective in general. But:

Imposing videoconferencing on all users as a general rule, with very limited exceptions, is not user-friendly.

In my perception, there would well have been other, far less strict possibilities to promote increased usage of videoconferencing, e.g. by just accepting the videoconferencing request of parties that are willing to do the oral proceedings by videoconference.

See also the News Release on the epi‘s website: The President of the EPO had sent a letter to epi (received on 27 March 2020) informing about the planned changes, and user representatives have been informed about it at the SACEPO Working Party on Rules meeting of 31 March 2020. epi expressed concerns with letter of same day; these concerns had also been expressed in the said SACEPO WPR meeting.

UPDATE 20 April 2020:

Some Italian colleagues raised their concerns in an open letter of 11 April 2020 to the President of the EPO; the letter is available here.

UPDATE 22 April 2020:

epi is collecting the experiences of users with video conferencing before Examining Divisions and Opposition Divisions (according to the EPO pilot program). Please report good or bad experiences. Have your say on the epi forum here (EDs) and here (ODs). Thank you.

UPDATE 1 May 2020:

As reported on Kluwer Patent Blog, the EPO’s Central Staff Committee (CSC) apparently commented on the EPO’s intranet  as follows (hyperlinks added, for ease of reference):

[It]would make sense to align the Office with the practice as well as with emergency provisions of its host countries. This would also appear mandated by the Protocol on Privileges and Immunities.

Holding oral proceedings as distributed videoconferences with the members of the division participating at different locations in the Office or at home is part of your initiative of generalising and making teleworking mandatory, which constitutes a fundamental change in the working conditions of a[n] major part of staff. It must therefore be subject to statutory consultation with the COHSEC [Central Occupational Health, Safety and Ergonomics Committee] and the GCC [General Consultative Committee] in accordance with Articles 38(2) and 38a(3) ServRegs.

Since it has been decided to extend the new procedures for oral proceedings in examination beyond the current Corona crisis, in-depth consultation is necessary. The same applies to opposition oral proceedings for which this new procedure appears likewise here to stay.

Opposition oral proceedings are by law public proceedings, cf. Article 116(4) EPC. It is not at all clear how this is guaranteed if the hearing is conducted as a ViCo (see e.g. T1266/07, points 1.2 and 1.3). The preliminary guidance given in VP1’s announcement (…) states that if the division “receive[s] requests of public to attend opposition proceedings performed via ViCo” it should “contact [its] line manager”, presumably that of the first examiner. Aside from the fact that the line manager is not competent for interfering with the discretionary decisions of the Divisions, the public does not need to “request” attendance, or to announce it in advance. A possibility for the public to attend should therefore be guaranteed in all cases, regardless of any advance request. The guidance thus brings examiners into a conflict between the expectations of management and the requirements of the EPC.

A problem of breach of confidentiality might further arise if members of divisions were not able to adequately isolate themselves, especially during examination non-public OP’s and during deliberations.

[A] yet unknown number of examiners cannot establish simultaneously both a Skype for Business connection and an EPO network connection via Pulse-VPN, as would be required for ViCo OPs, because the network hosts the application documents and the EPO email account. Only either connection works fine by itself.

At present there are no clear laws, no guidelines and no technical facilities to allow distributed oral proceedings in examination and opposition proceedings. In the latter case, even “non-distributed” ViCos with divisions on the Office premises would at present not rest on a solid legal basis.

The measures presently foreseen should be immediately halted and reviewed, also involving the Staff Representation.

In view of the additional strain on the examiner’s mental health, we can at present only advise divisions to judiciously choose, weighing all circumstances, whether to conduct oral proceedings by ViCo or rather to postpone them to a later date until circumstances for conducting them either as a classical ViCo from the Office premises or as “standard” proceedings in person are restored.

Note that I cannot independently verify that this is taken verbatim from the EPO’s intranet, but at least I have no reason to doubt that this is the case.

Reported by Martin WILMING

LETTER OF epi

LETTER OF EPO PRESIDENT

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