In a pending referral G1/21 the Enlarged Board of Appeal of the European Patent Office (“EPO”) will decide whether holding oral proceedings in the form of a videoconference without the consent of the parties violates article 116(1) of the European Patent Convention (“EPC”).
A second round of oral proceedings before the Enlarged Board of Appeal took place on Friday, 2 July 2021. At the end of the oral proceedings, the Board announced that the debate was closed, and that the decision would be issued later in writing.
In this article, we provide some background on how we reached this point as we await the final decision of the Board.
Like most organizations around the world, the EPO has been forced to change its ways of working due to the covid-19 pandemic. One major change that has affected applicants, proprietors and opponents concerns the manner of conducting oral proceedings. During the pandemic, oral proceedings have been held mainly by videoconference. At first, the consent of all parties was required for holding oral proceedings by videoconference in inter partes proceedings, but the practice was later changed to allow videoconferences even in cases where the parties did not give their consent.
The compatibility of the new practice with the EPC was questioned by the appellant in case T 1807/15 which prompted the Board of Appeal to refer the following question to the Enlarged Board of Appeal:
Is the conduct of oral proceedings in the form of a videoconference compatible with the right to oral proceedings as enshrined in Article 116(1) EPC 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?
Evolution of oral proceedings practice as a result of covid-19
Oral proceedings by videoconference are not completely new. Before the pandemic, however, oral proceedings by videoconference were limited to ex parte proceedings and, even then, whether a request for oral proceedings by videoconference was allowed was at the discretion of the competent department. In contrast, in inter partes proceedings before the opposition divisions and the Boards of Appeal, oral proceedings have been held at the premises of the EPO.
In a decision dated 1 April 2020, the president of the EPO decided that oral proceedings before examining divisions were to be held by videoconference, unless there were serious reasons not to do so. The decision entered into force on 2 April 2020 and was superseded by a new, slightly modified decision dated 17 December 2020.
By a decision of the president of the EPO dated 14 April 2020, the EPO established a pilot project for oral proceedings by videoconference before opposition divisions. Agreement of all parties was required. The decision entered into force on 4 May 2020. With a decision dated 10 November 2020, the pilot project was extended and modified. According to the new decision, oral proceedings before opposition divisions were as a rule to be held by videoconference and the consent of the parties was no longer required.
On 11 December 2020 the Boards of Appeal Committee approved new article 15a of the Rules of Procedure of the Boards of Appeal. This new article allowed the Board to decide to hold oral proceedings by videoconference at the request of a party or of its own motion. On 23 March 2021 the Administrative Council of the EPO approved the new article and the amendment entered into force on 1 April 2021. The EPO had begun applying the new article 15a even prior to its entering into force. According to the EPO, the new provision only clarified an existing possibility and therefore the Boards could dispense of the need to obtain consent from the parties even before the provision entered into force.
Thus, in the span of one year, the manner in which oral proceedings were conducted was practically turned upside down and the only change in the provisions was the addition of article 15a of the Rules of Procedure of the Boards of Appeal. Neither the EPC nor the Implementing Regulations were amended.
Referral to Enlarged Board of Appeal
The compatibility of the practice of holding oral proceedings by videoconference without the consent of the parties was questioned in case T 1807/15. The case concerned an appeal of the opponent against the decision of the opposition division to maintain a European patent in amended form.
The parties were summoned by a communication dated 24 January 2020 to (in-person) oral proceedings scheduled for 3 June 2020. On 5 May 2020 the respondent requested postponement of the oral proceedings due to the pandemic. The oral proceedings were rescheduled for 8 February 2021. One month before the new date, the respondent requested postponement of the oral proceedings again. The respondent referred to the travel restrictions between the United Kingdom and Germany. The respondent also pointed out that the oral proceedings were not suitable for a videoconference, in particular because of the need for simultaneous interpretation. However, the Board informed the parties that the oral proceedings would be held by videoconference.
In a response to a letter concerning the technical details of the videoconference system, the appellant stated that he agreed with the respondent concerning the unsuitability of the case for oral proceedings by videoconference. However, the response was not brought to the attention of the Board.
During the oral proceedings, the appellant requested as an auxiliary measure that the Enlarged Board of Appeal be referred a question concerning whether oral proceedings can be replaced by a videoconference without the consent of the parties. The appellant questioned whether conducting oral proceedings in the form of a videoconference was compatible with article 116(1) of the EPC and stated that the new provision of the Rules of Procedure of the Boards of Appeal would have required an amendment to article 116 of the EPC. The appellant argued that article 116(1) of the EPC gave the parties the right to be physically present in a courtroom. According to the appellant, this would allow the Board members to get an immediate personal impression of the pleading parties. The appellant argued that the parties would also get immediate impressions and feedback via the Board members' gestures and facial expressions. Further, the applicant held that the public did not have proper access to the videoconference. The appellant also noted that an unstable or interrupted internet connection could affect the right to be heard and that the possibilities to draw sketches to illustrate complex technical matters were limited in a videoconference.
To avoid any procedural violations, the Board considered that a point of law should be referred to the Enlarged Board of Appeal before dealing with the substantive issues.
General considerations by referring Board
The referring Board noted that the point of law addressed in the question referred to the Enlarged Board of Appeal was clearly of fundamental importance for an indefinite number of cases because conducting oral proceedings without the consent of the parties may become a standard practice in the future.
The Board also noted that with the consent of the parties, conducting oral proceedings in the form of a videoconference was compatible with article 116 of the EPC. The Board reasoned that since a party may even waive its right to oral proceedings, holding oral proceedings by videoconference is compatible with article 116 of the EPC if all parties have given their consent to that format.
The Board considered that the issue of videoconferences without the consent of the parties is not limited to appeals but is also applicable to first-instance proceedings.
The referring Board acknowledged that technical problems could be encountered during oral proceedings by a videoconference, which could lead to a situation where a party’s right to be heard is violated. However, the Board held that this risk was mitigated in several ways. For instance, oral proceedings could be interrupted or adjourned, in first-instance proceedings, an appeal could be lodged due to procedural violations, and a petition under article 112a(2)(c) of the EPC could be filed.
The Board concluded that the principle of public proceedings was not endangered by oral proceedings in the form of a videoconference.
Interpretation of the term "oral proceedings"
In the decision of the referring Board, the question on the compatibility of oral proceedings by videoconference without consent of the parties with article 116 of the EPC is tied to the interpretation of the term "oral proceedings". The Board approached the question of the interpretation of the term from different directions.
The referring Board cited a few cases where the issue of holding oral proceedings by videoconference had been discussed but concluded that case law did not adequately clarify whether article 116 of the EPC stipulated requirements for the format of oral proceedings or what those requirements would be.
The referring Board considered that analyzing the term "oral proceedings" in isolation from any context would lead to a broad interpretation. Therefore, the Board considered it appropriate to analyze the term in view of the Vienna Convention on the Law of Treaties, article 116 of the EPC and associated provisions of the EPC. The Board noted that at the time of the drafting of the EPC in 1973, there were no technical alternatives to in-person proceedings and thus no reason to define the format of oral proceedings. The Board also noted that there were no indications that the revision to the EPC in 2000 would have changed the meaning of the term "oral proceedings", even though the EPO had implemented the concept of oral proceedings by videoconference in 1998 – that is, before the Diplomatic Conference for the revision of the EPC. At that time, the EPO suggested that when requesting oral proceedings as a videoconference, the applicant should waive its right to traditional oral proceedings. The Board considered this to be an indication that at the time of the revision of the EPC, videoconferences had not been considered to meet the statutory requirements for oral proceedings under article 116 of the EPC.
The Board concluded that if a literal interpretation of the term "oral proceedings" were to be endorsed, oral proceedings in the form of a videoconference without the parties’ consent could be considered incompatible with article 116 of the EPC.
The Board noted that the preparatory work of the EPC did not explicitly address the form of the oral proceedings. The Board considered that the absence of discussion on the format of oral proceedings supported its position on the literal interpretation. The Board also considered that the discarding of obligatory oral proceedings in view of travel costs and effort for the parties further supported its position on the literal interpretation.
The referring Board also discussed a teleological interpretation of the term "oral proceedings". The Board noted that the right to oral proceedings formed part of the right to be heard as provided in article 113(1) of the EPC. Under a teleological interpretation, videoconferences would be acceptable if they gave the parties an equivalent chance to present their arguments orally as oral proceedings in the traditional form. The Board noted that the appellant had argued that a videoconference differed from traditional oral proceedings, for instance in that the parties could not use to the same extent the Board members’ gestures and facial expressions to assess whether their arguments had been understood. Further, the Board noted the applicant's argument that sketches on a whiteboard could not be used to explain complex technical matters.
The Board considered that the teleological interpretation could in principle be used to bring the interpretation of a term into line with societal developments and commonly accepted standards in the contracting states. However, the Board found reasons against using the teleological interpretation. The Board considered that because of the unambiguous result of the literal interpretation, there seemed to be no need for any further interpretation. The Board noted that in a codified legal system, a line must be drawn between judicial interpretation and "judicial legislation". The Board also found that there was not sufficiently widespread acceptance of oral proceedings as videoconferences in the contracting states to justify adapting the interpretation of the term "oral proceedings".
The Board also referred to article 31(3)(a) and (b) of the Vienna Convention, according to which any subsequent agreement between the parties to the treaty or practice establishing agreement of the parties regarding interpretation of the treaty is to be taken into account. The Board noted that it was not aware of any such subsequent agreement.
The Board also discussed a dynamic interpretation of the term "oral proceedings". The Board referred to case G 3/19, in which the Enlarged Board of Appeal had introduced the dynamic interpretation method. According to the Enlarged Board of Appeal, this method can be applied where there is a reason to believe that a literal interpretation of a provision’s wording would conflict with the legislature's aims due to considerations that have arisen since the signing of the Convention. The referring Board considered that one of the goals of the legislature is high-quality and efficient proceedings. The Board acknowledged that the pandemic had made holding oral proceedings more difficult. However, the Board noted that a significant number of oral proceedings had been held despite the difficulties. The Board noted that according to the decision in case G 3/19, legislative measures could give rise to a dynamic interpretation of the provisions of the EPC. However, the Board questioned whether a change in secondary legislation (the Rules of Procedure of the Boards of Appeal) could justify a dynamic interpretation of the EPC.
Submissions to Enlarged Board of Appeal
The Enlarged Board of Appeal summoned the parties to oral proceedings taking place, in the form of a videoconference, on Friday 28 May 2021. The Enlarged Board of Appeal invited the president of the EPO to comment on the points of law referred to it. The Board also invited third parties to make written statements under article 10(1) of the Rules of Procedure of the Enlarged Board of Appeal.
Unsurprisingly, the president of the EPO considered that the consent of the parties was not required for holding oral proceedings by a videoconference. According to the president, article 116 of the EPC could be interpreted to exclude oral proceedings held by videoconference. The president considered that the term “oral proceedings” meant “a formally regulated opportunity to exchange oral arguments". The president stated that oral proceedings thus simply meant spoken, not written proceedings. The president considered that nothing in the context of the term should limit the term "oral proceedings" to proceedings held on the premises of the EPO. The president also noted that during the revision of the EPC in 2000, there had been no proposals to amend article 116 of the EPC, such that the contracting stateshad implicitly confirmed that the wording of the provision covered oral proceedings by videoconference.
The case drew exceptional attention from third parties. The Board received approximately 50 amicus curiae briefs. A clear majority of these were against oral proceedings held solely by means of videoconference without the consent of the parties. However, there were also several briefs that were in favor of oral proceedings by videoconference, regardless of the consent of all parties. In some of the briefs, a clear position on the response to the referred question was not taken.
Many of the briefs in favor of videoconferences pointed out that even if the oral proceedings could be held as a videoconference without the consent of the parties, the characteristics of the case should be considered when deciding whether a videoconference or a traditional way of conducting the oral proceedings is to be used. Many of the briefs that were against holding oral proceedings by videoconference without the consent of the parties accepted them during the pandemic. Also, in many briefs it was stated that a party should have the right to attend via videoconference means even if the other parties attend in person.
First oral proceedings
During the initial oral proceedings on 28 May 2021, the appellant questioned the impartiality of most of the members of the Enlarged Board of Appeal. At the beginning of the oral proceedings, this issue was discussed at length in a non-public hearing.
When the public part of the oral proceedings continued, the appellant requested the postponement of the proceedings on the grounds that the comments of the president of the EPO were sent to the appellant only two days before the oral proceedings. The Board noted that the comments of the president had been available in the public file, but the appellant opined that it should have been duly notified of the comments. The Board deliberated the issue for quite some time and, after resuming the proceedings, asked the appellant how long it would need to consider the comments. The appellant answered that at least one month would be needed.
After a short break, the chairman announced that a new summons to oral proceedings would be issued.
Second oral proceedings
A second round of oral proceedings were held on 2 July 2021. A considerable part of the proceedings was again used for discussing the composition of the Board. The appellant requested that the Board should declare that they are not competent to decide on the case until the composition is corrected and that the oral proceedings should be postponed. Both requests were denied.
When discussing the substance of the case, both the appellant and the representatives of the President of the EPO relied on the fact that the EPC itself and even the preparatory work of the EPC is silent on holding oral proceedings via videoconferences, but not surprisingly each side came to different conclusions. In short, the appellant saw the lack of explicit mention of videoconferences as evidence that videoconferences without the consent of the party should not be allowed, while the representatives of the President of the EPO argued that the EPC does not limit the form of oral proceedings. The representatives of the President further stated that oral proceedings in the form of a videoconference contain all the essential elements of oral proceedings.
The appellant pointed out that during the last 40 years the parties have been entitled to oral proceedings on the premises of the EPO and there has clearly been a right to in-person oral proceedings. As a result, if consent for oral proceedings in the form of a videoconference is no longer required, this right is taken away.
After questions from the members of the Board to the appellant and the representatives of the President of the EPO, the chairman of the Board announced that all relevant issues have been discussed and the minutes and the decision would be published later.
Given the importance of the case, it is likely that the Enlarged Board of Appeal will make an effort to publish the decision as soon as possible. If the answer of the Board is affirmative and oral proceedings without the consent of the parties is held to be compatible with the EPC, it is likely that a significant percentage of oral proceedings, for example, during opposition proceedings will be held via videoconferences even after the current pandemic has ended.
A negative answer also could have significant consequences. During the pandemic, many oral proceedings were held via videoconferences even in cases where at least one of the parties did not give its consent. If the Enlarged Board of Appeal considers that this practice is not compatible with the EPC, that could be considered as a violation of the right to be heard. That could lead to a large number of Petitions for review under Article 112a EPC.
We will monitor the case and report the decision of the Board as soon as it issues.