Background

In July 2021, the Enlarged Board of Appeal (“EBA”) issued an order in the referral G 1/21, as we immediately reported in this article. The referral concerned whether holding oral proceedings in the form of a videoconference without the consent of all parties violates Article 116(1) of the European Patent Convention (“EPC”). We discussed the background of the referral in an earlier article.

The July 2021 EBA order reads as follows:

During a general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even 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.

Some may have been slightly disappointed by this order as it left certain questions open. For example, the referring board had formulated the question referred to the EBA broadly and it was not limited to oral proceedings before the boards of appeal. Nor was the question limited to a general emergency. Despite the broad formulation of the referred question, the order of the EBA did not explicitly indicate whether oral proceedings could be conducted in the form of a videoconference without the consent of the parties (1) in first instance proceedings and (2) when there is no general emergency.

Reasons for the EBA´s Decision

The EBA has now published its reasons for the decision which clarify the situation and which you can read here.

The EBA noted that the question of the referring board was formulated more broadly than was necessary for the decision. The EBA considered that it was not necessary to determine whether a department of first instance could decide that oral proceedings can be conducted in the form of a videoconference. The EBA also noted that the need for the referral has arisen because of the COVID-19 pandemic.

The EBA also noted that it is not sufficient to assess whether the oral proceedings held by videoconference without the consent of the parties are compatible with Article 116 EPC alone, but that Article 113(1) EPC also should be considered.

The EBA first discussed the meaning of the term “oral proceedings”. The EBA found no basis to interpret the term “oral proceedings” more narrowly than its ordinary meaning. The EBA thus concluded that oral proceedings in the form of a videoconference are oral proceedings within the meaning of Article 116 EPC.

The EBA then considered whether a videoconference is equivalent to in-person oral proceedings and, if not, whether it is a suitable format for conducting oral proceedings. 

The EBA found that, at least for the time being, communicating via videoconference does not provide the same level of communication as communicating in person. However, the EBA also noted that even if the videoconference format has some limitations, normally the combination of the written part of the proceedings and oral proceedings via videoconference would ensure that principles of fairness of proceedings and the right to be heard are complied with.

With regard to the role of the parties’ consent, the EBA found that in-person hearings should be the default option and that parties can only be denied in-person hearings for good reasons. The EBA noted that justification for denying a party its wish to have in-person oral proceedings must include a suitable alternative and that normally a videoconference is such a suitable alternative, but if that is not the case, then oral proceedings should be held in-person.

The EBA further explained that there must be circumstances justifying the decision not to hold the oral proceedings in person and that such “circumstances should relate to limitations and impairments affecting the parties’ ability to attend oral proceedings in person at the premises of the EPO”.

The EBA mentioned, as an example of such circumstances, travel restrictions and quarantine obligations during a pandemic. The EBA also stated that the decision should not be influenced by administrative issues such as availability of conference rooms and interpretation facilities or potential efficiency gains.

The EBA concluded that in the referred case there were reasons justifying use of oral proceedings conducted via a videoconference without the consent of all parties.

Conclusions

Although the order of the EBA is limited to proceedings before the boards of appeal, it seems clear that the decision also could be applied to proceedings before departments of first instance. It also seems clear that without the consent of the parties, oral proceedings can be conducted via videoconference only when there are circumstances impairing the parties’ ability to attend in-person oral proceedings at the EPO premises. Thus, when the pandemic situation sufficiently improves, the default position will go back to having in-person oral proceedings before the boards of appeal and before opposition divisions, unless all parties agree that oral proceedings can be conducted by videoconference.