18/04/2023
Almost all EPO opposition hearings are now conducted by videoconference (VICO). VICO opposition hearings have been very successful and are no doubt here to stay. In general, the EPO will insist that opposition hearings are carried out by VICO unless there are exceptional reasons for an in-person hearing. Only two VICO hearings have been changed from VICO to be in-person in the last three years.
However, unlike in-person hearings, it seems the EPO does set a limit, or at least have guidance, on the time for which a VICO hearing can extend in a single day. Our understanding is that the EPO guidance for VICO hearings is that they should last no more than 8 hours in a single day. This is because of concerns about excessive screen time for the participants. This tallies with our experience of VICO hearings, which have sometimes extended into an additional day, rather than extending late into the evening as was often the case with in-person hearings.
However, unless scheduled beforehand, any additional day of the hearing will rarely be the very next day. In fact, it is very often several months later. This can add considerably to the overall length of the opposition proceedings.
If the hearing has been scheduled for only a single day (as is usual) but the hearing cannot be concluded within the time available, the procedure for scheduling a second day provides for two possibilities.
The first possibility is that the second day is scheduled for a date soon after the first day (within 10 days or so). However, this relies on agreement between all of the parties and is only possible if the circumstances of the case allows for it e.g. no translators are needed. In this case no new summons is issued, there is unlikely to be any significant further written submissions, and the proceedings are concluded quite swiftly.
However, the second possibility, which is more common in our experience, is that not all of the parties can agree to a second day so soon after the first hearing. In that case, a date for the continuation of the oral proceedings is set much further into the future by the EPO. A new summons is issued together with minutes of the hearing that has already taken place. The new summons will also set a deadline for the filing of further written submissions.
In our experience, a second or further day of oral proceedings can end up taking place nearly a full year after the first day of oral proceedings. No reason or supporting evidence needs to be given by the parties as to why they cannot agree to a further day soon after the first.
This leads to the possibility of using the process to delay for a strategic advantage. It may be that delaying an opposition division decision is beneficial because it impacts national litigation or ensures that the patent remains in force long enough to get a preliminary injunction. In addition, having more time to consider and file further requests or to gather further evidence may be advantageous to one of the parties, particularly if the hearing is not going well for them.
So what can be done to combat such a delaying strategy? The EPO chairperson will always try to conduct the oral proceedings efficiently, but there is only so much they can do if one party is determined to prolong the hearing, particularly given the parties’ right to be heard on all issues.
If a delay in obtaining a decision would be undesirable and/or you suspect that the hearing might take longer than a single day, you can explicitly request that the EPO schedule a multi-day hearing. This could be done early in the proceedings, before the initial summons is issued if it is clear that there are a large number of issues to discuss, or it could be done after the summons is issued, if the number of days scheduled appears insufficient. To date, we do not have a sufficient number of examples to know whether such a request would be effective or not but in our experience, the EPO tend to be quite receptive to scheduling concerns.
Additionally, the EPO might take a more proactive approach to this issue by routinely scheduling hearings for one more day than they think they will need. Experience has taught us that even when multi-day hearings have been scheduled in the past, they still make every effort to conclude the hearing in as few days as possible. Once dates are scheduled by the EPO, the parties need to provide adequate reasons for not being able to attend, so the possibility for strategic delay is reduced.
As ever, knowing what winning looks like is key. With that knowledge, an effective strategy can be developed long before the oral proceedings take place that considers all of the available options, including the potential for delayed decisions.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
