Oral Proceedings by VC: An Emergency Measure or the New Normal?

By Joanna Rowley, Associate

The EPO has offered the option of attending Examination oral proceedings by videoconference (VC) since 1998 but, until recently, less than 10% of Examination oral proceedings were held by VC. However, since the COVID-19 pandemic reached Europe, the possibility to hold oral proceedings by VC has gained unprecedented importance.

Like many organisations around the world, the EPO has had to adapt quickly to ensure continued productivity whilst enabling their employees and customers to comply with travel restrictions and social distancing guidelines. In recent weeks, the EPO has issued a flurry of Decisions of the President and Notices detailing how VC is being utilised by different departments and the changes are outlined below.

Examination proceedings

On 1 April 2020, the EPO announced[1] [2] that oral proceedings before Examining Divisions will now be held by videoconference by default. As an exception, oral proceedings will not be held by VC if direct evidence needs to be taken during the hearing (this is increasingly rare at the EPO).

It is possible to request that oral proceedings be held in person, but the decision is at the discretion of the Examining Division. Any such request should be made as early as possible accompanied by serious reasons. An example of a serious reason is that an impediment prevents attendance by videoconference.

Interviews during examination will also now be held by VC as a matter of course.

Opposition proceedings

The nature of opposition hearings presents additional hurdles to using VC. In particular, the number of parties involved and the frequent need for real-time translations raise concerns.

Nevertheless, the EPO has also announced a pilot program to assess the suitably of carrying out oral proceedings before Opposition Divisions by VC[3] [4]. Opposition oral proceedings will only be carried out by VC at the discretion of the opposition division and with the agreement of all parties. All other opposition hearings scheduled until 2 June 2020 have been postponed (for more details, see here).

Whilst there has been significant push-back against the use of VC in opposition oral proceedings (discussed further below), we can confirm that some hearings have already taken place by VC.

Boards of Appeal

The Boards of Appeal have also been exploring the possibility of VC hearings but, as with oppositions, oral proceedings can only be carried out by VC at the discretion of the Board and with the agreement of all parties. The Boards have indicated that they intend to resume face-to-face oral proceedings from late May, if possible, suggesting that use of VC before the Boards of Appeal is unlikely to become a regular occurrence once the COVID-19 crisis is over.

Practicalities

Members of the Division and parties to proceedings may connect to the proceedings from the same or different locations. If necessary, a separate videoconference will be set up between the members of the Division for deliberation and voting.

On 13 May 2020, the EPO announced[5] [6] that any documents to be filed during oral proceedings held by VC must be filed by email, to an address provided by the Division at the start of the hearing. In oppositions, parties must also send copies of the documents to the other parties by email. There is no requirement to file confirmation copies and signatures may take the form of a string of characters or a facsimile signature, if required.

Pros and Cons

Legally speaking, oral proceedings held by VC are equivalent to oral proceedings held on the premises of the EPO. However, practically speaking, there are many differences.

In a letter to the Institute of Professional Representatives before the EPO[7], António Campinos, the President of the EPO, stated “I firmly believe that video-conferencing can contribute to a more efficient, modern and sustainable European patent system”. Indeed, Applicants keen to progress patent applications toward grant may be pleased to learn that the Examining Divisions (and representatives!) have embraced VC technologies. Some parties will also appreciate the cost-saving and environmental benefits of avoiding international travel to attend hearings. It will also be easier for third parties to attend public (i.e. opposition and appeal) oral proceedings by VC; any member of the public can simply request an access link from the EPO in advance and listen in (anonymously if they wish).

However, most attorneys agree that attending oral proceeding by VC is a very different experience from attending a hearing in person and there has been significant push-back against the above-mentioned emergency measures becoming permanent. Many attorneys feel that oral arguments are less persuasive by VC and, even with a quality internet connection, phrases can be missed or misheard, without the speaker’s knowledge. Also, if the VC technology only displays the party currently speaking, it is not possible to judge the reaction of all parties to an argument. Another issue is that, if a party is in a different location from their representative, they may struggle to interact/confer privately. There are also some practical concerns, such as the reliability of internet connections in some EPC member states.

Conclusions

It seems that VC may be the “new normal” for examination interviews and oral proceedings, at least until the COVID-19 crisis is over. However, it remains to be seen whether enhanced use of VC in oral proceedings will be a long-term legacy of the crisis.

For further information on how the EPO, other patent offices, and Haseltine Lake Kemper are responding to the COVID-19 pandemic, please see here.

[1] Decision of the President of the European Patent Office dated 1 April 2020 concerning oral proceedings by videoconference before examining divisions

[2] Notice from the European Patent Office dated 1 April 2020 concerning oral proceedings and interviews to be held by videoconference

[3] Decision of the President of the European Patent Office dated 14 April 2020 concerning the pilot project for oral proceedings by videoconference before opposition divisions

[4] Notice from the European Patent Office dated 14 April 2020 concerning the pilot project for oral proceedings by videoconference before opposition divisions

[5]  Decision of the President of the European Patent Office dated 13 May 2020 concerning the filing of documents during telephone consultations and during interviews and oral proceedings held by videoconference

[6] Notice from the European Patent Office dated 13 May 2020 revising its Notices dated 1 April 2020, concerning oral proceedings and interviews to be held by videoconference, and 14 April 2020, concerning the pilot project for oral proceedings by videoconference before opposition divisions

[7] Letter to the Institute of Professional Representatives before the EPO (epi) from The President