Friday, November 13, 2015 T 2068/14: a right to oral proceedings by video conferencing?

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During the examination and during the appeal procedure, the appellant (applicant) requested oral proceedings held by video conferencing. The examining division refused oral proceeding by video conferencing. In the appeal procedure, the appellant argues that refusing the oral proceeding by video conferencing is a substantial procedural violation. Not long before the scheduled oral proceedings of the appeal procedure, the appellant requested a re-scheduling of the oral proceedings of the appeal procedure and requested oral proceedings to be held by video conferencing. Also, with respect to "does the applicant have the right to oral proceedings by video conferencing", the appellant requested a referral of three questions to the Enlarged Boards of Appeal. It seems that the appellant finds it unfair that applicants who have appointed a professional representative who is not located close to Munich or The Hague have to bear higher costs for attending the oral proceedings. This decision of the Board discusses whether (and why) one has (or has not) the right to oral proceedings by video conferencing.

Catchwords

Although the board is prepared, in principle, to consider in exceptional circumstances the holding of ex parte oral proceedings by video conference, for the reasons set out in point 1.2.5 the conditions are not met in the present case.
Moreover a party's right to be heard under Article 113(1) EPC does not imply a separate right of the party's representative to be heard and therefore does not imply a right to have oral proceedings before the EPO held by video conference (see point 1.3.18).

Summary of Facts and Submissions

I. This is an appeal against the decision, dispatched with reasons on 5 June 2014, refusing European patent application No. 10 193 245.7.

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III. Insofar as it is relevant to the present decision, the examination procedure can be summarised as follows.

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In a third communication dated 17 December 2013 accompanying a summons to oral proceedings the examining division raised an objection under Article 123(2) EPC that the expression in claim 1 "determining, by the user, whether the current energy stored in the battery is sufficient to operate the portable computer (400) for a predetermined operating time period" had no basis in the application as originally filed. A corresponding objection was raised against claim 8. The subject-matter of claims 1 and 8, construed as not setting out the features regarded as added subject-matter, lacked inventive step, Article 56 EPC, in view of D1. In a response received on 2 January 2014 the applicant requested that the oral proceedings be held by video conference.
In a communication dated 14 January 2014 the examining division stated that it did not allow the request to hold the oral proceedings as a video conference because the subject-matter of the application was unsuitable to be discussed by means of a video-conference, and the objections (Articles 123(2) and 56 EPC) raised in the summons were such that there appeared to be no possibility of overcoming them by a simple exchange of arguments during a video conference. In a response received on 24 April 2014 the applicant stated that it would not attend the oral proceedings.
A telephone interview was held on 28 April 2014 between the applicant's representative and the first examiner in which, according to the minutes of the conversation, the examiner informed the applicant that it was not possible to assess the inventive step of the objected added feature, since it had no basis at page 6, lines 21 to 28, of the application as originally filed. The added feature of "determining, by the user, whether the current energy stored in the battery is sufficient to operate the portable computer for a predetermined operating time period" was also not directly and unambiguously derivable from the following statements: "a user of a portable computer may select a battery to use in the portable computer for the duration of a shift" and "the user may see that the selected battery is suitable for use for a shift"; see page 6, lines 21 to 28, of the application as originally filed.
In a further response, received on 30 April 2014, the applicant's representative stated inter alia that the division was proposing to refuse the case, and thereby leave it to be forwarded to the board of appeal, without a full analysis of inventive step. This amounted to a lack of reasoning, since it was not clear whether the examining division regarded the claims as they stood as involving an inventive step, and constituted a substantial procedural violation. The expression "the current energy stored in the battery" was taken from original claim 2, and page 6, lines 21 to 29, which stated inter alia that a "user of a portable computer that is used in a cold storage setting may select a battery to use in the portable computer for the duration of a shift" and that "The user may see that the selected battery is suitable for use for a shift and the user will give an indication to proceed, for example by hitting a key on the portable computer". The representative also requested that the summons be re-issued with a new date and "completed" inventive step argumentation so that the applicant could decide whether or not to attend the oral proceedings or to ask for a decision on the state of the file. In the event of a refusal, the board of appeal would then be able to reach a decision on inventive step without remittal to the examining division. The representative stated that he still considered oral proceedings by video conference to be appropriate and that, according to Guidelines E-11 11.1.1, a request to hold oral proceedings by video conference should normally be granted.
Oral proceedings took place on 20 May 2014 in the absence of the applicant, at the end of which the appealed decision was announced.

IV. In a notice of appeal, received on 5 August 2014, the appellant requested that the decision be set aside. The appeal fee was paid on the same date.

V. In a statement of grounds of appeal, received on 3 October 2014, the appellant requested, in order of decreasing preference, firstly, interlocutory revision with refund of the appeal fee and either "immediate grant" of the patent on the basis of the documents on file or a phone call with or a communication under Article 94(3) EPC from the examining division, once examination had been resumed. Secondly, the appellant requested that the board of appeal set aside the decision and refund the appeal fee. Thirdly, the appellant requested a communication from the board, if it did not intend to set aside the decision immediately and grant the application. The appellant also made an auxiliary request for oral proceedings before the board "if the case is not resolved in written proceedings to the applicant's satisfaction". The appellant argued that the appeal fee should be refunded in view of four substantial procedural violations by the examining division.

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IX. In a letter received on 24 July 2015 the appellant enquired whether the oral proceedings would still take place as scheduled, which the board confirmed the same day in a communication from its registry.

X. In a letter received on 28 July 2015 the appellant stated that it would neither attend, nor be represented at, the oral proceedings. The appellant requested that the oral proceedings be re-scheduled and held by video conference. The appellant also reiterated the request to refer questions to the Enlarged Board of Appeal.

XI. Oral proceedings were held on 30 July 2015 in the absence of the appellant, at the end of which the board announced its decision.

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Reasons for the Decision

1. Procedural matters

1.1 The admissibility of the appeal
The appeal complies with the admissibility criteria under the EPC and is therefore admissible.

1.2 The request to re-schedule the oral proceedings and to hold them by video conference

1.2.1 According to Article 15(2) RPBA, a change of date for oral proceedings may exceptionally be allowed at the board's discretion on receipt of a written and reasoned request made as far as possible in advance of the appointed date. In the present case the appellant, in the letter received on 28 July 2015, gave no other reasons for the request to re-schedule the oral proceedings than the associated request to hold the oral proceedings by video conference. Hence the request to re-schedule the oral proceedings did not comply with Article 15(2) RPBA and was consequently refused.

1.2.2 As explained below, the board takes the view that it has a discretion regarding the organisation of oral proceedings, including, in principle, holding them by video conference. This discretion is exercised according to the circumstances in any given case, including, in particular, whether the case at hand is ex parte or inter partes. A further important issue is the availability, in principle and in a specific case, of suitable rooms for oral proceedings before the board by video conference. This would typically require that provision also be made for the public (see T 1266/07).

1.2.3 In general, proceedings before the boards of appeal are written. This creates a "level playing field" for all parties and their representatives because submissions can be received from anywhere in the world at any time. Oral proceedings under Article 116 EPC are an exception to this general rule because they involve the parties or their representatives appearing before the board. In practice, this has traditionally been understood as the physical presence of a party or its representative before the board. The holding of oral proceedings as a video conference is not expressly provided for in the EPC, its implementing regulations or the RPBA, but neither is it excluded. In the board's view, while a video conference does not allow such direct communication as the face-to-face meeting involved in conventional oral proceedings, it nevertheless contains the essence of oral proceedings, namely that the board and the parties/representatives can communicate with each other simultaneously. Thus each party's case can be presented to the board in real time, and the board can put questions to the parties/representatives. Since 1998, in the framework of "Information concerning interviews and oral proceedings to be held as a video conference", published in the EPO Official Journal (see OJ EPO 1997, 572, 2006, 585 and 2012, 354), the EPO has made it possible to carry out interviews and ex parte oral proceedings by video conference, however only before examining divisions.

1.2.4 The appellant has argued that, as there are no legal obstacles preventing oral proceedings before the boards from being held by video conference, the appellant's right to be heard under Article 113 EPC has not been respected because the EPO has not made the necessary technical provisions to do so.

1.2.5 The board disagrees. In the present case the board finds that the appellant's right to oral proceedings, Article 116(1) EPC, does not imply a right to have oral proceedings in the form of its choice. Moreover a party's right to be heard under Article 113(1) EPC does not imply a separate right of the party's representative to be heard and therefore does not imply a right to have oral proceedings before the EPO held by video conference. The board does not accept the appellant's statement, insofar as it relates to proceedings before the boards, that "Representatives and applicants will only have truly equal access to Oral Proceedings when video conferences are almost always offered when requested, i.e. except in truly extreme circumstances.", since in this case the applicant/appellant chose to appoint a representative whose place of business is not near to the EPO's premises (see 1.3.17). The onus is on the appellant to persuade the board that conventional oral proceedings are not appropriate to properly present the appellant's case and that the board should exercise its discretion to, exceptionally, explore the possibility of holding oral proceedings by video conference. In the present case, the appellant was duly summoned to the conventional oral proceedings held on 30 July 2015. It has not provided any reasons for, exceptionally, holding the oral proceedings by video conference.

1.2.6 Consequently the board did not allow the request to hold the oral proceedings as a video conference.

1.3 Possible immediate remittal of the case

1.3.1 Under Article 11 RPBA, a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise.

1.3.2 The alleged substantial procedural violations
The board is of the opinion that, in first instance proceedings, a substantial procedural violation (mentioned in Rule 103(1)(a) EPC) will in general result in a fundamental deficiency within the terms of Article 11 RPBA. As explained below, of the four substantial procedural violations alleged by the appellant, the board only agrees with the appellant regarding the first (relating to claim 2).

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1.3.13 The fourth alleged substantial procedural violation
This concerns the request made in the response to the summons by the examining division to oral proceedings to hold the oral proceedings as a video conference; see Guidelines E-11 11.1.1. The examining division refused this request in its communication dated 14 January 2014 on the basis that the subject-matter of the application was unsuitable to be discussed by means of a video-conference, and that "objections (Articles 123(2) and 56 EPC) raised in the summons are such that it appears to be no possibility of overcoming them by a simple exchange of arguments during a video-conference".

1.3.14 The appellant has argued that, according to Guidelines E-II 11.1.1, a request to hold oral proceedings by video conference should normally, that is by default, be granted. The refusal of the request was a procedural decision by the first instance. Moreover the reasons given were inadequate because it was not made clear why the case was held to be complex.

1.3.15 As set out above, in the board's view, although the applicant has an absolute right to oral proceedings, Article 116 EPC, this is not the case for the holding of oral proceedings by video conference. The EPO offers applicants and their representatives the possibility in some cases of holding oral proceedings by video conference. According to the EPO's updated information in OJ EPO 2012, 354 to 357, "... the decision to accept the request for video-conference oral proceedings falls under the discretion of the examining division ..." The lack of an absolute right to such a video conference is reflected in the statement that, if oral proceedings are already scheduled, then "... the unavailability of video-conference facilities on that date is not a valid reason for postponement". The cited section in the EPO Official Journal further states in section 2 that "The ... examining division ... will, on a case-by-case basis, decide on the suitability of video-conferencing. If the request cannot be allowed, the person making the request will be informed by a communication indicating the reasons for the refusal". In the version of September 2013, Guidelines E-II 11.1.1, entitled "Discretion regarding grant of requests for video-conferences" state inter alia that the examining division should normally grant a request for oral proceedings by video-conference unless there are specific reasons for refusing it. Criteria for refusing are, for example, the unsuitability of the subject-matter of the application, the high complexity of the case, or the need to see or handle samples or models.

1.3.16 The board agrees with the information in OJ EPO 2012, 354 to 357, and the appellant that the decision to refuse the request to hold the oral proceedings by video-conference was a discretionary, procedural decision by the examining division. This discretion has to be exercised properly, and, therefore, it cannot be excluded that, in a given case, there may indeed be only one correct way to exercise that discretion.

1.3.17 The Guidelines do provide, as a reason for refusal, the "unsuitability" of the subject-matter of the application for discussion by means of a video-conference, for instance if the case is highly complex or samples and models need to be seen or handled. However the examining division did not give detailed reasons for reaching this conclusion as provided for in OJ EPO 2012, pages 354 to 357, point 2, 3rd sentence.

1.3.18 The appellant has argued that this was a substantial procedural violation, in the sense that it affected the whole subsequent procedure, arguing that "From the representative's current location, the representative has been unable to reach any of the EPO's locations in less than eight hours of travelling, including driving, contingency time and flights. ... Applicants must then effectively arrange and pay for three days of time, travel costs, and accommodation for two overnight stays, and must sometimes do this for more than one person ... Many applicants face additional costs of 2,500 - 5,000 Euros if they are not granted a request for a video conference, which sums exceed significantly even the examination fee". Hence, according to the appellant, some applicants decide against authorizing travel by the representative to oral proceedings who would have approved the smaller time commitment by the representative to take part in oral proceedings by video conference. The board does not find these arguments persuasive, as there is no such individual right on the part of the appellant's representative. Although the EPC safeguards an applicant's right to oral proceedings, it does not also ensure that the costs of attending the oral proceedings in person, possibly with a professional representative, are within the applicant's budget.

1.3.19 Even if the board came to the conclusion that there was a lack of reasoning, a question which can be left undecided in the case at hand, this procedural violation would not be a substantial one, since it did not affect the whole subsequent procedure. The applicant had no absolute right to such a video-conference under the EPC and still had the possibility of being heard, Article 113(1) EPC, at the oral proceedings, which it chose not to attend.

1.4 The appellant's non-attendance at the oral proceedings

As announced in advance, the duly summoned appellant did not attend the oral proceedings. In accordance with Article 15(3) RPBA, the voluntary absence of the appellant was not a reason for delaying a decision, and the board relied for its decision on the appellant's written submissions. The board was in a position to decide at the conclusion of the oral proceedings, since the case was ready for decision, Article 15(5, 6) RPBA.

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5. The request to refer questions to the EBOA

5.1 In the responses received on 29 June and 28 July 2015 the appellant requested that the following questions be referred to the Enlarged Board of Appeal:
Q1. Under what circumstances should an examining division grant an applicant's request that an Oral Proceedings be by video conference?
Q2. When must an examining division respond to an applicant's request that an Oral Proceedings be by video conference?
Q3. In accordance with the principle of Equity for applicants located throughout Europe, should Oral Proceedings be allowed by video conference for ex-part[e] Oral Proceedings before the Boards of Appeal?

5.2 According to Article 112(1) and (1)(a) EPC, a board of appeal shall refer a question to the Enlarged Board of Appeal if it considers that a decision is required to ensure uniform application of the law or if a point of law of fundamental importance arises.

5.3 In the present case the board does not consider that, for the purposes of deciding on the present case, a decision is required on any of the above questions either to ensure uniform application of the law or because a point of law of fundamental importance has arisen.

5.4 Moreover a question involving an important point of law need not be referred to the Enlarged Board of Appeal if the board of appeal hearing the case considers itself able to answer it beyond any doubt; see J5/81 (OJ EPO 1982, 155), headnote 2). As the board considers this to be the case, an answer by the Enlarged Board of Appeal to the appellant's questions is not required. Concerning Q1, the board finds that the "Information of the European Patent Office in OJ EPO 2012, 354 to 357" is a reasonable starting point for assessing a request by a party to hold oral proceedings by video conference. Concerning Q2, a general answer is not required, as the decision of the examining division to reject the request to hold the oral proceedings by video conference was issued several months before the appointed date of the oral proceedings, this being an adequate time frame for such a decision. The answer to Q3 is that the principle of Equity does not provide for a right for applicants located throughout Europe to have oral proceedings by video conference before the Boards of Appeal at their choice (see point 1.2.5 above).

Order

For these reasons it is decided that:
The request to refer questions to the Enlarged Board of Appeal is refused.
The appeal is dismissed.
The request to reimburse the appeal fee is refused.

This decision T 2068/14 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2015:T206814.20150730. The file wrapper can be found here. Photo "a lame surprise and not enough peanuts" by Mike Mozart obtained via Flickr under CC BY 2.0 license (image cropped).