Tuesday, 14 July 2020

T 1378/16 - Oral proceedings before the Board held by videoconference


The oral proceedings in the present case took place on 8 May 2020 and were the first held by videoconference in the history of the Boards of the Appeal of the EPO. Unlike some national legal systems, the EPC does not stipulate explicitly the form(s) in which oral proceedings under Article 116 EPC shall take place. For these reasons, the Board considers it appropriate to address briefly the legal basis for oral proceedings within the meaning of Article 116 EPC.

Summary of Facts and Submissions

I. This appeal is against the decision of the Examining Division refusing the present European patent application for added subject-matter (Article 123(2) EPC) and lack of inventive step (Article 56 EPC), having regard to the disclosure of D5: WO 2004/012413 A1.

II. Oral proceedings were held by videoconference on 8 May 2020. The oral proceedings initially scheduled as an in-person hearing were - with the appellant's consent - converted into videoconference-based oral proceedings.

The appellant's final requests were that the decision under appeal be set aside and that a patent be granted on the basis of the claims of a main request or, in the alternative, of one of first to fourth auxiliary requests, all requests as filed with the statement of grounds of appeal.

At the end of the oral proceedings, the board's decision was announced.

III. [....]

Reasons for the Decision

1. Procedural aspects: oral proceedings held by videoconference

1.1 Oral proceedings that took place on 8 May 2020 were the first held by videoconference in the history of the Boards of the Appeal of the EPO. Unlike some national legal systems, the EPC does not stipulate explicitly the form(s) in which oral proceedings under Article 116 EPC shall take place. For these reasons, the Board considers it appropriate to address briefly the legal basis for oral proceedings within the meaning of Article 116 EPC.

1.2 In the past, the Boards have rejected requests that the oral proceedings be held by videoconference (ViCo), mainly on the grounds that there was no "general framework" to this effect. In particular, there were no provisions made for suitable ViCo rooms and for the public to attend such ViCo-based hearings (see e.g. T 1266/07, Reasons, point 1; T 2068/14, Reasons, point 1.2.2).

At the same time, the Boards held that Article 116 EPC did not mandate that oral proceedings take place with the physical presence of the parties. As pointed out in T 2068/14, "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" (see point 1.2.3 of the Reasons). Hence, several Boards considered that it was in their discretion to decide whether nor not to select this form for the parties' oral submissions (T 2068/14, Reasons, point 1.2.2; T 195/14, Reasons, point 1; T 932/16, Reasons, point 1.1).

1.3 The present board agrees with this interpretation of the legal framework. Hence, oral proceedings held by videoconference are not excluded by the EPC and fulfil the requirements for holding oral proceedings within the meaning of Article 116 EPC. The EPC only requires that the public character of the proceedings be ensured (Article 116(4) EPC). The form in which the parties present orally their arguments - with or without physical presence - is not predetermined by Article 116 EPC.

1.4 Against this background, in the present case, the board considered it appropriate and expedient to convert the scheduled in-person oral proceedings into oral proceedings held by videoconference (cf. point II above). Indeed, and in contrast to the circumstances under which the decisions mentioned above were issued, the Boards of Appeal have now at their disposal suitable rooms at their premises for ViCo-based hearings.

Furthermore, appropriate provisions have been made for the public to attend such hearings. By means of a communication published on the website of the Boards of Appeal on 6 May 2020, it was indicated that "[o]ral proceedings will be conducted by VICO only in agreement with the parties concerned" and that "[a]ny member of the public wishing to attend oral proceedings conducted by VICO may do so in a dedicated room located at the premises of the Boards of Appeal in Haar".

1.5 The appellant agreed to oral proceedings being held without its physical presence. During those oral proceedings held on 8 May 2020, the public attended them by means of an additional connection to the board's videoconference system set up from a dedicated room at the premises of the Boards of Appeal.

2. Background of the invention

[..]

3. Main request - Article 56 EPC

[...]

4. First auxiliary request - Article 56 EPC

[...]

5. Second auxiliary request - Article 56 EPC

[...]

6. Third auxiliary request - Article 56 EPC

[...]

7. Fourth auxiliary request - Article 56 EPC

[..]

7.4 In sum, the system of claim 1 of the fourth auxiliary request lacks an inventive step, too. The fourth auxiliary request is therefore not allowable under Article 56 EPC either.

8. As there is no allowable claim request, it follows that the appeal is to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision T 1378/16 (pdf) has European Case Law Identifier ECLI:EP:BA:2020:T137816.20200508The file wrapper can be found here. Photo "Videoconference" by Steve Bowbrick obtained via Flickr under CC BY 2.0 license (no changes made).

Also in T 1879/16, oral proceedings before the board were held on 17 June 2020 by videoconference. Those "oral proceedings were initially scheduled as an in-person hearing and were - with the appellant's consent - converted into oral proceedings conducted by videoconference (see e.g. T 1378/16, Reasons, point 1)" (item II of T 1879/16).

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Annex - Communication published on the website of the Boards of Appeal on 6 May 2020
(reproduced in full; emphasis added)

Oral proceedings before the Boards of Appeal – restrictions due to the coronavirus (COVID-19) pandemic and introduction of video-conferencing technology in appeal proceedings
6 May 2020

Owing to the coronavirus (COVID-19) pandemic, the Boards of Appeal have been obliged to adopt measures for the conduct of oral proceedings.

Oral proceedings will not be held at the premises of the Boards of Appeal up to and including 15 May 2020, with the exception of oral proceedings conducted by video-conferencing technology (VICO). Oral proceedings will be conducted by VICO only in agreement with the parties concerned, who will be sent an advance communication in this regard. Oral proceedings to be conducted by VICO will be listed in the oral proceedings calendar.

Oral proceedings before the Boards of Appeal are public. Any member of the public wishing to attend oral proceedings conducted by VICO may do so in a dedicated room located at the premises of the Boards of Appeal in Haar. In view of the current circumstances, however, only limited places will be available. It will not be permitted to make photographic images or sound recordings or to re-transmit any part of the oral proceedings. As is generally the case for external visitors to the Board of Appeal premises (see also below), members of the public wishing to attend oral proceedings conducted by VICO will be required to complete a screening questionnaire upon arrival and are encouraged to announce their plans to attend well in advance.

If the public health situation permits, the Boards of Appeal envisage resuming the holding of oral proceedings, to a limited extent, at their premises in Haar from Monday, 18 May 2020. Parties will be contacted accordingly by communication. They will be requested to confirm that they expect to be able to attend in person and that they do not anticipate being affected by travel restrictions. To facilitate the arrangement of oral proceedings, parties and their representatives will be asked to inform the registry as soon as possible whether they plan to attend.

Parties and representatives will be asked to complete a simple screening questionnaire upon arrival. Any person replying to one of the questions in the affirmative will be denied access to the Boards of Appeal premises. The competent board will be informed accordingly and will decide whether the oral proceedings can be held without that person or whether they will need to be postponed. In the light of the current restrictions, in particular the need for social distancing, parties are also requested to consider whether all representatives and accompanying persons need to attend.

It will be possible for members of the public to attend oral proceedings. However, in view of the current circumstances, only limited places will be available. Visitors interested in attending oral proceedings are therefore encouraged to announce their interest well in advance using the EPO contact form. Such visitors will also be asked to complete upon arrival the same screening questionnaire as for parties and representatives, and they will likewise be denied access to the premises if they answer one of the questions in the affirmative.

Strict sanitary measures will be put in place to ensure that oral proceedings are held in optimum conditions. These measures will include, in particular, rules on minimum physical distancing and the requirement to wear a face mask on the way to the oral proceedings room. Parties, representatives and other visitors are asked to bring their own face masks.

The President of the Boards of Appeal will continue to monitor the situation and take appropriate measures as it develops.


As the situation with COVID-19 continues to evolve rapidly, all parties to oral proceedings scheduled to take place before the EPO Boards of Appeal are advised to check the web section of the Boards of Appeal regularly for updated information on access to the premises of the Boards of Appeal in Haar.

5 comments :

  1. Attentive Observer15 July 2020 at 11:41

    While it is true that oral proceedings by videoconference are not excluded by the EPC, they are not explicitly allowed, as there is no provision for them. It is difficult to believe that in the "Travaux Préparatoires" it was foreseen that oral proceedings would be held other than in person. It is therefore possible to state with the same conviction as the Board that oral proceedings by videoconference do not comply with Article 116 EPC.

    However, one thing is clear: if the parties agree to oral proceedings by videoconference before the Boards of Appeal, or in opposition, they cannot be helped, and so be it.

    Nevertheless, a feeling of unease persists. When one sees how carefully the new rules of procedure have codified the procedure, one wonders why the Boards did not ask the the Boards of Appeal Committee to look into oral proceedings in the form of videoconferences. After all, it was set up for this sort of things and not simply to endorse the wishes of the president-in-office.

    Would that not be a matter for a referral to the Enlarged Board? In view of the deference shown by the Enlarged Board in the G 1/19 referral, it is highly likely that the outcome will be known in advance.

    On the other hand, in the case of oral proceedings before the Examining Divisions, the applicant has no choice. By order of the Mufti, oral proceedings in the form of videoconferences have become the rule. What right does the President of the EPO have to force applicants to hold oral examination proceedings only by videoconference?

    In April, the epi had protested against this obligation imposed on applicants and sent a letter to the 10th floor giving valid reasons for its protest. I doubt very much that the epi received a reply, or if it did, it probably was not positive.

    I can well imagine an applicant who has had his application rejected using this in an appeal. I was not able to defend myself well because I had to defend myself during a video conference. What will a Board of Appeal say when there is an obligation to hold a videoconference? The right to be heard is understood to be heard orally directly and not by means of technology.


    The President of the EPO may well decide how examiners should work, for example by putting them in open-plan offices (in times of pandemic!!), but he cannot decide how the EPC should be interpreted. I hope that there will be a Board of Appeal which has enough backbone to say no to this gentleman.

    Any party to a face-to-face oral procedure must fill in a questionnaire. If a party refuses to fill in the questionnaire it is warned: "You may choose not to provide any information at the above points and not to attend the meeting/event". A participant who is scheduled to attend the meeting= oral proceedings but who refuses to complete the questionnaire will be considered as being absent and a decision will be taken solely on the basis of his or her written statements.

    Another point is uncomfortable: The questionnaire states that the data will be processed in accordance with the EPO's data processing guidelines. Could the EPO not simply comply with the EU GDPR data protection guidelines, at least for its relations with external persons? After all, all places where the EPO has buildings are in the EU.

    Another question: what happens to the necessary electronic prior declaration if a party wishes to attend a public oral hearing in the form of a video conference? This declaration should be automatically deleted at the end of the oral procedure. It would be preferable for the EPO to provide a public link, then no prior declaration would be necessary.

    ReplyDelete
    Replies
    1. Fully agree. No basis in Art. 116 EPC. Not even basis in RPBA2020, which is brand new! OP by vico before the Boards not even published in the OJ EPO (a News message on a webpage is used as legal basis!)! Needs Council Decision at least to amend RPBA2020 to allow it.
      Also EPO imposes vico one-sided, also uponparties that do not want it. A party or representative should never be forced into vico, not before Board, not in first instance either. An objection against OP by vico should be granted, as should be an objection to come to the EPO in view or COVID-19 fear (but read T 0437/17 () of 8.7.2020!!!).

      C.

      Delete
  2. Which argument were you prevented to raise specifically because of video conference? This is the only question the EBA will consider. And as long as you can't show this the EBA will not hesitate to refuse your petition, as is their habit.

    ReplyDelete
  3. Attentive Observer16 July 2020 at 09:14

    T 437/17 is a real disgrace in that it refused postponement of an oral proceeding. Fear before COVID was considered not being a reason warranting postponement. If the representative in charge of the file was part of a so-called risk group, I understand his position. But it is not the kind of thing one puts in a letter to the EPO. He could have asked for this reason not be in the public part of the file, but fit is a bit far fetched.

    I would have expected a bit more understanding from the side of a board.

    On the other hand when one sees who was the chairman of the board in T 437/17, there is no surprise. He was the rapporteur in case G 3/19. He is the inventor, with his boss of the "dynamic interpretation" of the case law of the EBA.

    Let's just say he had a very "dynamic interpretation" of the EPC. For Germans there is a say: was is not expressly authorised is forbidden. The attitude is rather that adopted in France: what is not expressly forbidden is authorised.

    it is an open secret that this person would like to succeed his present boss. This might be some kind of explanation for such a harsh position. If he does not act along the "party line", his chances (should he have any) to be the next president of the boards of appeal dwindle.

    Were are the presidents of boards capable of resisting such moves? At least in the heads of certain members of boards the say: legal, illegal, whatever the hell, is more and more present. What matters is reduction of the backlog, any means to achieve this aim is good enough. It is a pity.

    ReplyDelete
  4. Agree with all comments. I had OP in opposition cancelled due to COVID and am now pushed to accept ViCo. No way!

    In my case EPO has mis-scanned/reduced the resolution of my closest prior art until it is no longer usable and thus not accepted. My offers to send a good quality copy have been refused. I want to show the original publication, there and then, to show them that features ARE clearly disclosed.

    The same is valid if the prior art is an actual physical object, of which no dated published drawing exists.

    Somebody asked 'Which argument were you prevented to raise specifically because of video conference?'. If that's your position, why the bother with OP at all? Which argument were you prevented to raise in writing, after all?

    The EPC states have given up part of their EXCLUSIVE right to decide on revocation by means of the EPC, only under strict conditions, one of them being ORAL proceedings, to be understood as live, face to face, fair and balanced.

    I always understood that it was a well established principle that the authority given to EPO by member states should be interpreted narrowly and that therefore EPO can not deviate one iota from the EPC with respect to how to conduct LEGAL (let's not forget that!) proceedings. They are overstepping the boundaries of the authority given to them.

    ReplyDelete

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