From 01 January 2023, all oral proceedings held before the European Patent Office’s Examining and Opposition Divisions, the Legal Division and the Receiving Section are to be held by videoconference (ViCo) by default. This brings oral proceedings held before opposition divisions in line with other first instance proceedings. Oral proceedings before the Boards of Appeal are governed separately by the Rules of Procedure of the Boards of Appeal and continue to take place by ViCo, mixed-mode or in-person.
Oral proceedings in opposition can still be held face-to-face at the EPO if requested by one of the parties to the proceedings and serious reasons against holding the oral proceedings by ViCo are provided. According to an EPO Notice on 10 November 2020, the “serious reasons” may include reasons relating to a participant to the oral proceedings as an individual, for example, a proven visual impairment that prevents a representative from following oral proceedings on screen, and reasons related to the nature and subject-matter of the proceedings, for example, where a demonstration or inspection of an object where the haptic features are essential. Notably the EPO has indicated that “Sweeping objections against the reliability of videoconferencing technology or the non-availability of videoconferencing equipment will, as a rule, not qualify as serious reasons”. Where a request for an in-person hearing is refused, the parties will be informed of the reasons but such a refusal is not separately appealable.
The EPO has explained that this change in practice is “with a view to guaranteeing effective access to justice and to avoid a continuous increase in the number of unresolved oppositions”.
In this guide, we have drawn from our experience of ex parte and inter partes oral proceedings before the EPO by video conference to aid participants of such proceedings in what they might expect and how best to prepare.
First published in November 2020, this guide was last updated 25 January 2022.
Our “Client Checklist for ViCo” is included for clients attending a ViCo hearing.
ViCo oral proceedings – our experience
Our ViCo experience before the examining divisions is extensive and we have been conducting such oral proceedings by video conference for many years. We have also successfully taken part in over 300 ViCo oppositions during the EPO’s pilot ViCo project before the opposition divisions, and represented clients by video conference before the Boards of Appeal in both examination-appeal and opposition-appeal cases.
We have easily accessible and dedicated video conferencing facilities (ViCo-suites) in our offices. In addition, all of our qualified patent attorneys have the relevant IT equipment to enable them to conduct a ViCo hearing while working from home. Using trusted IT and internal procedures and processes, we are able to communicate effectively with EPO officials and set up confidential “real-time” communication channels with clients.
The EPO uses Zoom to host oral proceedings which is compatible with Windows, Mac, iOS, and Android and available for download at no cost from the Zoom website.
Oral proceedings held by ViCo will be scheduled with a start-time in Central European Time, typically 9am CET. If requested in advance, the EPO may agree to slightly revised start-times in order to accommodate the different time-zones that attendees are located in.
Typical proceedings – what to expect
Prior to the date of the oral proceedings, the EPO requests confirmation of contact details for the representative and other attendee(s) including a contact email address. A calendar invitation is then issued to the attendee(s) including the Zoom link.
At the scheduled start-time for the oral proceedings, all attendees should join the virtual meeting room via the link in the calendar invitation.
The EPO have expressly indicated that parties and their representatives are allowed to connect to the ViCo from different locations, provided it does not affect the stability of the video conference connection. This can be checked with a test call prior to the scheduled oral proceedings.
We would recommend that clients who are attending the hearing join any test call. It is also typical for the communication channel between the D Young & Co attorney(s) and clients attending the hearing to be tested simultaneously. Where a test call is arranged with the EPO, a separate calendar invitation and Zoom link is sent.
On the day of the oral proceedings, the hearing will open with a system check and typically instructions to mute audio. The identity of the representatives is then verified. The identity of any announced attendees may also be verified.
Verification takes place via inspection of photo identification for each participant. The photo ID may be scanned beforehand and emailed to the EPO division when requested in the hearing or made available for visual inspection.
The email addresses and contact number(s) of the division are circulated to all representatives to facilitate the submission and sharing of documents during the proceedings. These details also provide an alternative means of contact in case of connection issues. For anyone not intending to speak, the chairperson of the EPO division may request video and/or audio be muted so that only the representatives and the EPO are visible (and audible).
Once preliminary introductions and checks are complete, the procedure of the ViCo oral proceedings primarily follows in-person hearings. A mock ViCo hearing is available on the EPO website.
When proceedings are interrupted for the division to decide on a particular issue, attendees have to mute audio and video. After the agreed time for interruption, all parties un-mute audio and video to re-join and connections are checked by the division before proceedings resume. During such breaks or interruptions in the oral proceedings, the division may remove themselves to a separate Zoom virtual meeting room if dialling-in from different locations.
The EPO’s ViCo platform (Zoom) includes a chat function to permit the division members and participants to pass messages as required. The chat function can be useful for the division members to inform the participants if more deliberation time is required or if attorneys require more time to make amendments or consider issues raised.
As with such proceedings in-person at the EPO, opposition and appeal proceedings are open to the public but no recording or retransmission is allowed. Proceedings are advertised on the EPO website and remote access to the proceedings is available if requested in advance. A dedicated room at the EPO is also provided in which the oral proceedings are live-streamed.
We have found most divisions/boards attempt to be as careful as possible to ensure parties are given sufficient time and opportunity to present their case.
Submission or sharing of documents/amendments
When documents or amendments need to be submitted during the oral proceedings, these should be prepared as signed and dated PDF copies, and sent via email to the EPO division by the representative (using the email addresses provided at the beginning of the hearing).
In addition, it is possible to screen share with the EPO divisions. This may be helpful to discuss claims, which have been or will be emailed, or to share documents to support a particular argument.
Trouble-shooting problems on the day
In our experience, there may be unavoidable technical issues. For example, a participant may be temporarily disconnected from the Zoom call. Such issues can cause slight delays, but the EPO is patient and understanding and takes care to hold ViCo oral proceedings without such issues impacting a party’s right-to-be heard. When technical issues have occurred, the EPO division will pause the proceedings until these are resolved.
The default position of the EPO divisions and Boards of Appeal is that if a party’s representative suffers a system failure that cannot be fixed, the hearing will be re-scheduled.
Overall our experience of ViCo before the EPO divisions has been positive and we are reassured that the EPO is committed to the success of ViCo by making it the default for opposition, and that the Boards of Appeal are embracing the use of ViCo.
In view of the need for serious reasons to request a face-to-face hearing, the inability to appeal a refusal of any such request and the unavoidable delay if a hearing is postponed, we would recommend that clients discuss the use of ViCo with their D Young & Co representative and familiarise themselves with the enclosed “Client Checklist for ViCo” if attending a hearing. As explained above, D Young & Co attorneys are well-equipped to run hearings by ViCo and welcome your questions about thisprocess, particularly if you have a ViCo hearing scheduled or wish to discuss the options available in your specific circumstances.
D Young & Co Client ViCo Checklist
- Summons received.
- Confirm video conference (if an appeal hearing).
- Download and install Zoom.
- Exchange email and telephone contact details with your D Young & Co representative.
- If required, request a test meeting with your D Young & Co representative.
- Confirm receipt of a calendar invitation from the EPO for any test call and the scheduled oral proceedings.
- Confirm set-up of a communication channel with your D Young & Co representative for use during the oral proceedings (this may require a second device to that connected to the EPO Zoom meeting).
On the day
- Join the communication channel with your D Young & Co representative.
- Join the virtual meeting room of the EPO Zoom meeting.
- Follow EPO instructions regarding ViCo etiquette, especially with regard to when to mute/unmute and turn video on/off.
- If you have any technical issues email/telephone your D Young & Co representative.