T2320/16: are ViCo oral proceedings compatible with Art 116 EPC?
While we wait for a decision in G1/21 on whether consent of all parties is required for oral proceedings to be held by videoconference (ViCo), we have been provided with a warm-up act of sorts, thanks to the recent publication of the decision in T2320/16.
In a decision that predates the referring decision for G1/21 (T1807/15), the Board of Appeal in T2320/16 held that holding oral proceedings by ViCo is consistent with the requirements of Article 116 EPC (the right to oral proceedings), even when one of the parties has not consented to the use of ViCo.
It has been possible to request oral proceedings by ViCo in examination proceedings since 1997, but uptake has historically been low. As recently as 2019, only 14% of oral proceedings were held by ViCo. However, this trickle of cases became a flood in 2020, when the ongoing Covid-19 pandemic forced a rapid change in policy.
In April 2020, ViCo became the default for oral proceedings in examination, with only “serious reasons” being sufficient to allow the proceedings to be held in person. Shortly afterwards, the EPO launched a pilot project to allow oral proceedings to be held by ViCo in opposition proceedings, but only with the consent of all parties (both the summoned parties and the opposition division themselves).
In November 2020, the EPO confirmed that the pilot project for ViCo in opposition oral proceedings would continue and, crucially, decided that from 04 January 2021 this would become the default as in examination proceedings. In short – the EPO no longer required the consent of all parties for oral proceedings before the first instance to be held by ViCo. Where serious reasons exist as to why ViCo could not be used, the oral proceedings would be postponed until after 15 September 2021.
It has been a similar story for oral proceedings before the Boards of Appeal, with ViCo being permitted with the consent of all parties as of May 2020, and without consent since January 2021. Justification for this most recent change in practice – in which the agreement of the involved parties would no longer be required – was based on the new Article 15a of the Rules of Procedure of the Boards of Appeal (RPBA), which stipulates that the Board of Appeal “may decide to hold oral proceedings pursuant to Article 116 EPC by videoconference if the Board considers it appropriate to do so, either upon request by a party or of its own motion.” The EPO argued that “[s]ince the new provision merely clarifies an existing possibility, Boards may adapt their practice as regards dispensing with the need to obtain the agreement of the parties concerned even before the date of its entry into force”.
So it seems that, with a few swift notices from the EPO, oral proceedings by ViCo are now – and will continue to be, even after the Covid-19 pandemic – the norm before both the first instance and the Board of Appeal.
In an otherwise fairly run-of-the-mill appeal (an opponent appealing the decision, in oral proceedings, to maintain a patent), a party decided to question the legality of the ViCo policy. In this case, the proprietor (who, it is worth noting, was able to successfully defend their patent in opposition, despite the oral proceedings being held by ViCo) argued that holding opposition proceedings by ViCo without the consent of the parties concerned was a contravention of Article 116 EPC, and that their patent was inventive.
The arguments provided by the proprietor (the respondent in this case) were largely based on their interpretation of Article 116(1) EPC – namely, that “oral proceedings” referred to an in-person face-to-face hearing. In particular, their arguments can be broadly grouped into three categories:
1. It is established practice for oral proceedings to be held in-person and face-to-face.
The proprietor argued that oral proceedings had historically been considered to refer to in-person face-to-face hearings.
They also cited T1012/03, which established that oral proceedings must take place where the relevant department of the EPO was located. T1012/03 dealt with the question of whether a party is entitled to having oral proceedings in Munich rather than at The Hague; it was decided that the oral proceedings were to be held in the location where the relevant department is located. The proprietor argued that this provided evidence that oral proceedings must be held in-person, wherever the relevant department (or, in this case, the Board of Appeal) was located.
2. The wording of Article 116 EPC, and discussions in the preparatory documents for the EPC (the travaux préparatoires) suggest that oral proceedings were intended to be held in-person, not by ViCo.
According to Article 116 EPC, oral proceedings are held “before” the relevant department, and the proprietor in this case argued that “before” refers, in a judicial context, to attendance in person. Indeed, the proprietor noted that this is not entirely different to what was argued in T1012/03.
Regarding the travaux préparatoires, the proprietor argued that these documents describe discussion in which it was determined that, despite the need for travel being acknowledged, oral proceedings would be a right to which the parties were entitled. According to the proprietor, this reference to “travel” indicated that the legislator of the EPC intended oral proceedings to be held in-person. They also noted the fact that Article 116 EPC was not amended by the act revising the EPC in 2000 – according to the proprietor, this suggested that the legislator intended to maintain the status quo in Article 116 EPC, that is that oral proceedings were to be understood to be in-person proceedings.
3. ViCo proceedings are “inferior” to in-person hearings, and are therefore unfair.
In this final category of arguments, the proprietor argued that ViCo oral proceedings were fundamentally different – and indeed inferior – to in-person oral proceedings, since non-verbal communication was “almost impossible” in ViCo proceedings.
The Board of Appeal’s decision
In a thorough decision, which acts as an interesting and recent example of how the EPC is interpreted, the Board of Appeal came to the conclusion that ViCo did not contravene Article 116 EPC.
After summarising the history of ViCo at the EPO, the Board of Appeal provided a detailed rebuttal to the proprietor’s arguments.
Responding to the first argument, the Board of Appeal agreed that until recently, oral proceedings at the EPO had traditionally been held in-person, but stated that this was “not sufficient grounds to conclude that oral proceedings by videoconference are not in line with Article 116 EPC.”
The Board of Appeal argued that the decision in T1012/03 was taken in an entirely different context to the context of T2320/16. According to the Board or Appeal, the interpretation of Article 116 EPC in T1012/03 arose as a consequence of the perceived necessity, at the time, for the division to be located at a specific place. The Board of Appeal in T1012/03 did not consider (and, therefore, did not exclude) the possibility of holding oral proceedings by ViCo.
This reasoning regarding T1012/03 was equally applied to the second argument, with the Board of Appeal noting that the interpretation, in that case, of the term “before” was simply not relevant to determining whether ViCo oral proceedings were consistent with the EPC.
In addition, the Board of Appeal held that the reference to “travel” in the travaux préparatoires could not be interpreted as an indication that the legislator of the EPC intended to exclude ViCo oral proceedings, since the discussions referred to in the documents were held in the early 1960s, at a time when ViCo oral proceedings would not reasonably have been contemplated. The Board of Appeal also argued that the fact that Article 116 EPC was not amended in the EPC 2000 was evidence that the legislator of the EPC 2000 did intend the article to cover ViCo oral proceedings. As noted by the Board of Appeal, the preparatory work for the EPC 2000 was carried out in 1998-2000, at a time when the EPO had already begun to allow parties to request the use of ViCo in oral proceedings.
Therefore, since Article 116 EPC does not explicitly exclude ViCo oral proceedings, and since the legislator of the EPC 2000 would have been fully aware of the possibility of oral proceedings being held by ViCo, the Board of Appeal reasoned that it was perfectly reasonable to interpret “oral proceedings” in Article 116 EPC to refer to either an in-person or ViCo hearing.
Indeed, since Article 116 EPC does not provide a definition for the exact form that oral proceedings should take, the Board of Appeal decided to provide its own interpretation. In particular, it argued that in oral proceedings:
- the parties should be able to see the members of the Board of Appeal and vice versa; and
- it must be possible in real time for the Board of Appeal to interrupt or question the parties where necessary.
Regarding the third argument, the Board of Appeal maintained that ViCo proceedings were not inferior to in-person hearings and disputed the proprietor’s argument that “non-verbal communication was almost impossible” in ViCo proceedings. The Board of Appeal argued that, while the types of non-verbal communication that are possible in ViCo proceedings differ from those possible in person, non-verbal communication was still possible, and ViCo proceedings were not inherently inferior to in-person proceedings.
In conclusion, the Board of Appeal decided that holding oral proceedings by ViCo did not contravene the EPC - and that the patent was inventive.
This decision appears to be the first time that the Board of Appeal has been asked to consider whether ViCo oral proceedings are consistent with the EPC, but it is certainly not the final word on the matter. G1/21 is set to consider the same issue, with oral proceedings for that case being scheduled to take place on 28 May 2021.
However, while a decision in G1/21 may well supersede T2320/16, this currently appears to be the only case law relating to this issue. In the meantime, it looks as though ViCo is here to stay, and the EPO can continue to hold oral proceedings by ViCo with or without the consent of the involved parties. Indeed, the EPO has already confirmed that oral proceedings before the examining and opposition divisions will continue to be held by ViCo during the pendency of the referral.
Therefore, unless there are serious reasons against holding oral proceedings by ViCo – for example, reasons relating to a participant to the oral proceedings as an individual (such as 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 they involve the demonstration or inspection of an object where the haptic features are essential, to the extent that this is possible in accordance with the applicable provisions) – applicants, proprietors and opponents alike can expect to be required to use ViCo in oral proceedings.
Meanwhile, new Article 15a (in force from 01 April 2021) in the amended Rules of Procedure of the Boards of Appeal (RPBA), allows the Board of Appeal to decide to hold oral proceedings by ViCo of its own motion. While the wording “of its own motion” appears to be intended to suggest that consent of the parties involved will not be required, the precise interpretation of this article may well depend on G1/21.
In full, new Article 15a RPBA reads:
Oral proceedings by videoconference
(1) The Board may decide to hold oral proceedings pursuant to Article 116 EPC by videoconference if the Board considers it appropriate to do so, either upon request by a party or of its own motion.
(2) Where oral proceedings are scheduled to be held on the premises of the European Patent Office, a party, representative or accompanying person may, upon request, be allowed to attend by videoconference.
(3) The Chair in the particular appeal and, with the agreement of that Chair, any other member of the Board in the particular appeal may participate in the oral proceedings by videoconference.
Related case: G1/21
In T1807/15 the Technical Board of Appeal referred, in an interlocutory decision of 12 March 2021, this question the Enlarged Board of Appeal: “Is the conduct of oral proceedings in the form of a videoconference compatible with the right to oral proceedings as enshrined in 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?” As anticipated, this case will be handled under G1/21, the oral proceedings for which will be held using Zoom on Friday 28 May 2021.
Guide to ViCo at the EPO
We have drawn from our experience of ex parte and inter partes oral proceedings before the EPO by video conference to prepare a guide for participants covering what to expect and how best to prepare.
The guide includes our handy client “Checklist for ViCo”.Read more