21/04/2022
The EPO has recently extended the pilot program for oral proceedings by videoconference (VICO) before opposition divisions until 31 December 2022. This means that opposition oral proceedings will continue to be held by VICO until the end of this year, unless there are serious reasons not to.
In our experience, holding oral proceedings by VICO has generally worked very well and we welcome the extension of the pilot program. Although the pilot program was born of necessity during the COVID-19 pandemic, there are good reasons for it to continue, as there are benefits for users of the EPO, and for the EPO itself. It also has benefits for the environment and sustainability as it results in a reduction in travel.
However, our recent experience is that oral proceedings by VICO can take a little longer than in-person hearings. Most of the time it is not a significant issue. But it will have consequences (sometimes with significant commercial implications) if more frequently oral proceedings cannot be concluded within the scheduled day, or days, for the hearing, as we have recently seen in some of the cases we handle.
Oral proceedings in opposition are typically scheduled for a single day. However, if they cannot be completed in the scheduled time, a further day of oral proceedings needs to be scheduled. This can happen in one of two ways.
If all the parties agree to a further day of oral proceedings within a short period from the initial oral proceedings (around two weeks) and if all parties agree to waive their right to receive a new summons to oral proceedings, the further day of oral proceedings can happen quite quickly. This is great in theory, but as soon as a delay to the hearing favours one of the parties this “quick fix” will not be an option.
If a date within a couple weeks cannot be agreed, or if one of the parties wishes to receive a further summons to oral proceedings, then a fresh summons must be issued, and continuation of the oral proceedings will take place several months after the initial oral proceedings. In one recent case we are involved in, the second day of oral proceedings was scheduled for eight months after the initial day of oral proceedings. This is obviously less efficient in terms of the preparation time needed for the second day of the hearing and in terms of the work the EPO has to do, and also increases the overall length of the opposition proceedings significantly.
One reason hearings might be taking longer by VICO is a sensitivity on the part of the EPO to ensure the rights of all parties to be fully heard is satisfied, following the questions raised in Enlarged Board of Appeal decision G1/21. If the EPO insist on videoconference oral proceedings, there should be no question that the format of the oral proceedings in any way prevents parties from presenting their full case on all issues. So it may be that opposition boards, consciously or unconsciously, are managing oral proceedings by videoconference differently, leading to longer hearings.
Another reason hearings might be taking longer is unrelated to the VICO format but has come about around the same time that VICO was introduced. The new Rules of Procedure of the Boards of Appeal mean that patentees are filing all the requests that they might possibly want to rely on in subsequent appeal proceedings during the first instance opposition proceedings. This may have led to a larger number of requests needing to be considered and decided on during opposition oral proceedings than has historically been the case. Again, we do not have the data on this, but would be interested to know if it exists.
Finally, it is our impression that there was a greater willingness from all parties to allow in-person hearings to run later into the evening to ensure a conclusion. This is perhaps because scheduling in-person hearings is more difficult because of the need for an available physical hearing room at the EPO and because of the additional time and cost of travel to in-person hearings.
If our experience is indicative of a broader trend, then perhaps it would be prudent for the EPO to schedule more days for oral proceedings, even when it is not expected that the additional days will be needed. This should be relatively straightforward considering the problem of booking a physical hearing room is not an issue for VICO hearings. In that way, the lengthy delays associated with issuing a new summons for additional days of oral proceedings can be avoided. The potential for gaming of the system to introduce a long delay before a final decision for either commercial reasons (in the event of parallel litigation) or to allow for further arguments or requests to be prepared, would also be reduced.
Opponents and patentees can also do their part by not repeating arguments already made in the written proceedings and by limiting auxiliary claim requests to those that have a serious prospect of overcoming reasons for rejection. This has always been part of Reddie & Grose’s approach to managing oppositions and in our experience the advantages are clear based on the positive outcomes it tends to deliver for our clients. Nonetheless, it is apparent that not everyone adopts this approach, so maybe it is time for the opposition divisions to start taking a more active role in efficiently managing cases.
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.
