European Patent Office and Oral Proceedings: An Update
With the recent Decision of the President of the European Patent Office (EPO) dated 10 November 2020, which applies to all oral proceedings before opposition divisions scheduled to take place on or after 4 January, 2021, oral proceedings before opposition divisions will be held by videoconference unless there are “serious reasons” against holding the oral proceedings by videoconference.
Since the disruptions caused by the spread of Coronavirus (COVID-19), oral proceedings have been more and more used at the EPO, not only in examination, but also in opposition, as already announced in our Newsletter of July 2020, and, in a few cases, in appeal.
Oral proceedings in examination are currently held by videoconference by default, unless there are “serious reasons” against holding them in this way. In such cases, they will be postponed until after 15 September 2021. In view of the Administrative Council’s decision of December 15, 2020 amending Rules 117 and 118 EPC to allow evidence to be taken by videoconference in proceedings before the EPO, the “serious reasons” do not include the need to take oral evidence any longer. Thus, starting from January 1, 2021, evidence can be taken regardless of whether the oral proceedings are held by videoconference or on the EPO premises. On a general basis, oral proceedings in examination are expected to continue to be held by videoconference in the next foreseeable future.
With reference to oppositions, according to the Decision of the President of the EPO dated 14 April 2020, a pilot project was introduced to hold oral proceedings by videoconference for the first time, although only at the discretion of the opposition division and with the agreement of all parties. With the recent Decision of the President of the EPO dated 10 November 2020, however, which extends the pilot project to run until 15 September 2021 and applies to all oral proceedings before opposition divisions scheduled to take place on or after 4 January, 2021, oral proceedings before opposition divisions will be held by videoconference unless, as for examination proceedings, there are “serious reasons” against holding the oral proceedings by videoconference. Where there are serious reasons preventing the use of videoconference for oral proceedings in opposition, they will also be postponed until after 15 September 2021.
The requirement of serious reasons appears to leave little room for holding oral proceedings on the premises of the EPO, although this is still possible upon a party’s request. However, if such a request is refused, no separate appeal may be lodged against the refusal. The concerned party is merely informed of the reasons of the refusal. The change in the practice introduced by this most recent Decision of the President of the EPO will allow for increased participation from remote locations not only to members of the opposition divisions, parties and their representatives and any persons accompanying the parties or representatives, but also to the public.
Indeed, oral proceedings in opposition, differently from those in examination, are generally public. In order to follow oral proceedings held by videoconference in opposition, members of the public have simply to give prior notice to the EPO (via email to the EPO at support@epo.org) and indicate the application number, the date of the oral proceedings, the requester’s name and the requester’s email address. In response, the EPO will send connection details for the oral proceedings to the requester at the indicated email address. More information may be found on the EPO website, which also provides a calendar of all oral proceedings.
Oral proceedings before the Boards of Appeal can now also be conducted by videoconference. However, for the time being, they are conducted by videoconference only if all parties agree. Changes to this requirement and further legal clarification for holding oral proceedings in appeal by videoconference are also expected. Indeed, a proposal to amend the Rules of Procedure of the Boards of Appeal 2020 has been presented to the public on 13 November 2020 by the insertion of new Article 15a. The proposal was open to comments until 27 November 2020. According to the proposal, “hybrid” oral proceedings could be introduced, in which some persons (parties, representatives, accompanying persons, members of the Board of Appeal) attend in person, while others attend by videoconference. Interestingly, the proposal also provides that, in exceptional circumstances, the Chair of the Board may decide that a party, representative or accompanying person has to attend the oral proceedings by videoconference. We will see whether this provision will be judged favorably by the public and, if this is not the case, whether and to what extent new Article 15a of the Rules of Procedure of the Boards of Appeal will be amended.
