11 May 2021

EPO embraces VICO

The events of the last 12 months or so will no doubt have lasting effects on the way we work in the IP sector, and the future of in person hearings at IP offices around the world will also be affected.

The EPO is no exception and since the pandemic began at the beginning of 2020, it has had to balance the need for each party’s right to be heard and their own need to process cases as efficiently as possible. As a result of COVID-19, many oral proceedings at the EPO have had to be postponed. In response, the EPO has embraced videoconferencing (VICO) in an attempt to allow as many oral proceedings as possible to continue during the disruption caused by the pandemic.

The following is a summary of how the EPO adapted during 2020 and what the current arrangements are.

Examining Division

The EPO had an advantage in that it had already held examining division oral proceedings by VICO for a number of years. However, all oral proceedings before examining divisions are now held by VICO unless there are serious reasons against holding the OP by VICO. Therefore, VICO is now the default.

Another important change is that the new rules expressly allow members of the examining division to connect to the proceedings remotely from different locations. In such situations, the members of the examining division will conduct their own private videoconference for deliberation and voting. The new rules also enable the applicant and their representative to connect to oral proceedings from different locations.

Opposition Division

In contrast to examining division proceedings, opposition division proceedings involve at least two parties (patentee and opponent) and because of this, the practicalities of conducting opposition division oral proceedings by VICO are greater. Nevertheless, the EPO quickly implemented a pilot project for opposition division oral proceedings.

In May 2020, the EPO introduced its first pilot project in which oral proceedings were only held by VICO at the discretion of the opposition division and then only if all parties agree. The pilot was therefore voluntary. Aa a result, it was possible for one party to prevent oral proceedings going ahead by declining to take part in the pilot. If a party refused, the EPO had no other option but to postpone the oral proceedings, most likely until the disruption caused by COVID-19 was over. Anecdotally the number of oral proceedings actually going ahead was relatively low.

From the beginning of 2021, the EPO modified and extended the pilot project (here). This version of the pilot is the pilot project currently in place. Significantly, the new pilot removed the need for all parties to consent to VICO being used. Hence, oral proceedings before opposition divisions being held by VICO is now the default. There are exceptions. For example, the opposition division itself can decide to hold the oral proceedings in person. Also, a party may request that the oral proceedings is held on the premises of the EPO if there are serious reasons. However, such requests are considered at the discretion of the opposition division and refusal of such a request is not separately appealable. The project allows members of the opposition division to connect remotely from different locations and a separate communication channel is provided to allow them to deliberate. Likewise, the parties and their representatives may also connect to the VICO from different locations, however the opposition division has the right to limit the number of additional locations if they think it would impair the efficient conduct of the oral proceedings.

Members of the public are also allowed to follow oral proceedings by VICO either remotely upon giving prior notice or on the premises of the EPO. The decision came into force on 4 January 2021 and is intended to run until 15 September 2021, although it could of course be extended and/or modified at any time.

Board of Appeal

The Board of Appeal is the last practical recourse for parties at the EPO. The arrangements around oral proceedings before the Boards of Appeal have therefore been more carefully considered. In particular, the official Rules of Procedure of the Boards of Appeal were amended by decision of 23 March 2021 to allow oral proceedings to be held by VICO.

The amendment introduced new Article 15a “Oral proceedings by videoconference” (here).

Board of Appeal hearings are still held in person by default. However, the Board may now hold oral proceedings by VICO if the Board considers it appropriate to do so, either upon request by a party or of its own motion. The new rules also allow a party, upon request, to attend by VICO even if the oral proceeding are being held on the premises of the EPO. Therefore the new rules introduce, for the first time, so-called “hybrid” oral proceedings in which one party attends in person and another party attends by VICO. Members of the Board may also participate by VICO if required.

The Boards of Appeal do not therefore require the consent of the parties to hold oral proceedings by VICO. In practice, we have seen many Boards begin to use VICO.

G1/21 – is VICO legal at the EPO?

In March 2021, the question of whether holding oral proceedings by VICO is consistent with the European Patent Convention (EPC) was considered in an appeal case (T1807/15 – here). In particular, it was argued that new Article 15a of the Rules of Procedure of the Boards of Appeal is incompatible with Article 116 EPC (the right to oral proceedings) & Article 113(1) EPC (protecting a party’s right to be heard). Despite the party requesting the referral withdrawing their request, the Board of Appeal continued and decided to refer the following question to the EPO’s 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 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?

From the EPO’s perspective, there is a need to settle this quickly. The Enlarged Board has already set a date for the oral proceedings. Oral proceedings are to be held on 28 May 2021 – by videoconference! We await the outcome of the hearing with interest. In the meantime, the President of the EPO in a decision dated 24 March 2021, announced that “following a careful weighing up of the impact for legal certainty and access to justice”, 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.

The Future

Assuming that the Enlarged Board confirms that oral proceedings by VICO are compatible with the EPC, it seems likely that at least some of these arrangements will continue to be in place well after the current disruptions end.

Although there are clearly disadvantages of VICO and some legitimate concerns that oral proceedings by VICO are not as effective or efficient as in person hearings, there are undoubtedly advantages. In particular, it has given clients who usually do not attend oral proceedings the ability to take part in oral proceedings or at least observe. It also reduces the amount of travel required for participants not based in Munich. For representatives, there is also the advantage of being based in the office (or even at home); despite significant improvements in the facilities provided for attorneys at EPO premises in recent years, they are not as good as what is available in their own office.

Based on the feedback of representatives, the parties and the EPO themselves, in due course the EPO will need to decide if they continue with examining and opposition division oral proceedings by VICO as the default. As with so many aspects of our new lives – is this the new normal – we will have to wait and see?