EPO oral proceedings by video conference: what to expect and how to prepare
Facing up to the challenges that social distancing and travel restriction bring the European Patent Office (EPO), like many organisations and businesses in 2020, has introduced video conferencing (ViCo) as an important means to facilitate communication.
On 10 November 2020, a Decision of the President of the EPO was issued indicating that from 04 January 2021, opposition oral proceedings will be held by ViCo unless serious reasons prevent the use of ViCo. Where there are such “serious reasons”, oral proceedings will be postponed until after 15 September 2021. Consent from all parties is no longer required.
According to a corresponding 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, to the extent that this is possible in the current climate. 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 the Notice of 10 November 2020 the EPO also confirm that all oral proceedings before the EPO examining divisions are by video conference. The same “serious reasons” as before the opposition divisions must exist in order for such proceedings to be held on the premises of the EPO, and where such reasons exist the in-person proceedings will be postponed until after 15 September 2021.
ViCo technology is also available for the conduct of the oral proceedings before the Boards of Appeal. We are aware of discussions taking place on the mandatory use of ViCo by the Boards and we will keep clients updated on this issue.
The EPO is therefore moving towards the use of ViCo as the “new normal” and 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.
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 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 Skype for Business or Zoom to host oral proceedings. Both are compatible with Windows, Mac, iOS, and Android and available for download at no cost from the respective app websites. Zoom is intended for use in proceedings involving multiple opponents and/or where simultaneous interpretation is required.
Oral proceedings held by ViCo will be scheduled with a start-time in Central European Time, typically 9 am 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 Skype for Business or 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 the 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 Skype for Business or 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 and announced attendees is then 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 virtual meeting room within the EPO’s ViCo platform if dialling-in from different locations.
The EPO’s ViCo platform (Skype for Business or 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 Skype for Business or 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 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 their current pilot project for opposition and that the Boards of Appeal are embracing the use of ViCo. The change in practice taking effect from 04 January 2021 before the opposition divisions certainly represents such commitment.
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 this new process, particularly if you have a ViCo hearing scheduled or wish to discuss the options available in your specific circumstances.
Client ViCo Checklist
- Summons received.
- Confirm video conference (if opposition or appeal hearing).
- Download and install Skype for Business or Zoom as appropriate.
- 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 ViCo platform).
On the day
- Join the communication channel with your D Young & Co representative.
- Join the virtual meeting room of the EPO ViCo platform.
- Follow EPO instructions regarding ViCo etiquette, especially with regard to when to mute/unmute.
- If you have any technical issues email/telephone your D Young & Co representative.