23/05/2023
A recent decision, T 1158/20, of the EPO’s Technical Board of Appeal tells us that hosting oral proceedings by video conference can be, for some cases, an equivalent alternative to in-person oral proceedings.
The Board took the decision to hold oral proceedings by video conference, without the consent of all parties, allegedly in accordance with the decision of G 1/21. This was despite the appellant presenting four arguments as to why the oral proceedings should be in person.
Firstly, the appellant stated that G 1/21 applied only during a general emergency. The appellant argued that, due to an absence of travel restrictions and low numbers of infections, there was no longer a general emergency. The Board countered that the COVID-19 pandemic was still ongoing (the hearing was on 22 November 2022) and there was still an obligation to test prior to entering the premises of the Board of Appeal. Therefore, holding proceedings via video conference would eliminate the risk of parties being barred entry to proceedings due to a positive test result, as well as the risk of those in attendance being exposed to the virus.
The appellant further argued that the respondent, who’s representative was based in London, could find a representative based in Munich to act on their behalf, and therefore avoid the need for international travel. The appellant argued that this would reduce the need for international travel as both representatives would then be based in Munich. The Board did not find this convincing and stated that it cannot be expected for the representative to find a colleague from the same firm, located in Munich, for the purposes of attending oral proceedings in person whilst the London-based representative was available for proceedings via video conference.
Thirdly, the appellant argued that the same Board had not granted a request for proceedings to be via video conference in T 996/20, in the absence of consent of all parties. The Board informed the appellant that not only is the decision to hold oral proceedings via video conference discretionary based on the individual circumstances of a case but that the composition of the Board in T 996/20 was different.
Finally, the appellant argued that a video conference was not suitable for this particular case because the respondent would likely file a plurality of further auxiliary requests which would be inefficient via video conference. Again, the Board was not convinced and noted that if the patent proprietor were to submit further auxiliary requests, there would be a dedicated email address for email filing. Interestingly, they were not simply told that any such request by the respondent would likely be considered late filed and therefore not admitted!
The Board summarised that, in this case, holding proceedings via video conference was a suitable alternative and that this was a discretionary decision. As such, the Board believed that there was no conflict with G 1/21.
The Board then decided to consider whether, in the current case, holding oral proceedings via video conference could be considered an equivalent alternative to in-person proceedings, which G 1/21 defined as the “gold standard”. The Board noted that since the G 1/21 decision was issued, all parties and Boards have gained extensive experience with the technology and tools involved in video conference proceedings. They also noted that the technical requirements for holding video conference proceedings, such as high-quality and stable video and sound, were met in the case before them. Therefore, they say, holding oral proceedings by video conference is closer to the “gold standard” than when the decision in G 1/21 was made.
The Board concluded that even in view of G 1/21, oral proceedings by video conference was in this case not only suitable but represented an equivalent to in-person oral proceedings. William Ponder had stated in his article that only two VICO hearings have been changed from VICO to be in-person in the last three years.
Some views within the community are that this Board have set a dangerous precedent by not following a G-decision and that this particular Board has gone rogue. Others believe that this is merely a reflection of the changing times as we see a movement towards a more hybrid office/online working environment.
It is clear that this is still unfamiliar territory and there are questions surrounding the efficacy of proceedings via video conference and whether all parties are able to be fairly and equally represented. Perhaps this will define the future of oral proceedings or maybe a counter decision is on the horizon, only time will tell. Whatever happens, we suspect that more and more Board of Appeal oral proceedings will be held by video conference, following what is now the norm for Examination and Opposition Division oral proceedings. William Ponder also stated is his article how the EPO provides guidance to limit any excessive screen time for participants, which can lead to hearings being carried out over multiple days instead of a single day.
However this develops moving forward, Reddie & Grose are well positioned to adapt to any changes and ensure that our clients’ interests are protected in all patent proceedings, whether in-person or via video conference.
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.
