Kilburn & Strode attorneys have been attending oral proceedings by videoconference for some time, usually using the facilities in our London office. However, the current global situation has prompted the European Patent Office (EPO) to move more oral proceedings to videoconferencing to ensure matters are still dealt with in a timely manner. This affects the various divisions of the EPO as follows:

  • All Examining Division oral proceedings are to be held by videoconference in accordance with the Decision dated 1 April 2020.

  • The EPO has postponed all oral proceedings in opposition proceedings scheduled until 31 December 2020 (previously until 14 September 2020) which have not either already been confirmed to take place by videoconference or will be held by videoconference with the parties’ consent under a pilot project. Under the pilot project, opposition oral proceedings may be held by videoconference at the discretion of the opposition division and with the agreement of all parties.

  • The Boards of Appeal have resumed the holding of oral proceedings, to a limited extent, at their premises in Haar. Various measures have been put in place to combat the spread of coronavirus. It is important to note that the venue and start time of oral proceedings may change at short notice and it is up to the parties to check the online calendar ~ 3 days before their oral proceedings. If parties cannot attend oral proceedings to which they have been summoned, they now have to request a change of date (the recently introduced practice of contacting parties to enquire whether they are able to attend oral proceedings will be discontinued). Oral proceedings before the Boards of Appeal can now be conducted via videoconference with agreement of all parties.

This move towards videoconferencing has been in the works for some time, but has certainly been accelerated by the current situation. The EPO recently hosted its 1000th examination division oral proceeding by videoconference this year, which is more than the total number (867) of videoconference hearings in 2019. With it comes a host of benefits, both for the applicant and the attorneys involved. For example, the environmental aspect of attending oral proceedings can be drastically reduced, with parties no longer required to fly across Europe, or indeed the world, to attend. There will also likely be reduced costs for those involved due to the lack of a need air fares and accommodation.

With the Examining Division now issuing summons to oral proceedings by videoconference as a rule and the distinct possibility that more complex inter partes proceedings will also be carried out by videoconference, it’s only a matter of time before you may find yourself involved in such a hearing. So how can you prepare?

Practice points

  • Ensure ample time is set aside for preparation – maybe you used to use the plane journey and day before the hearing as your preparation time. Make sure you still make use of that time.

  • Whilst we lose the face-to-face connection with the Examiners, much can be done to build rapport prior to the hearing over telephone.

  • Videoconferencing can be a more formal or a less formal setting than in person. Set the tone how you’d like with how you dress and how you make use of any small talk before the hearing begins.

  • Ensure you have all the documents you need saved locally to minimise the possibility of IT mishaps.

  • If you do experience technical problems on the day of the hearing that cannot be overcome, then Article 4 of Decision of the President of the European Patent Office dated 1 April 2020 indicates that the Examining Division can issue a new summons for a different day.

  • It’s still possible for the applicant and non-European attorneys to participate in proceedings. Discuss with your K&S representative how this can be done.

  • The rules and procedures on oral proceedings are being updated frequently. Check the latest information here.