T 2432/19 - Right to oral proceedings in form of a videoconference (no)
In the present opposition appeal case, the Board issued a summons to oral proceedings in Haar. The appellant (patent proprietor) requested that the oral proceedings be held by videoconference. No reasons were given for this request. The Board then issued a communication containing its provisional opinion. The parties were also informed that if the Board found it appropriate to do so, the oral proceedings might be held by videoconference. The parties were also asked to inform the Board if they wished to invoke any reasons against holding the oral proceedings by videoconference, for the case that the Board decided to use that format. The appellant repeated its request for oral proceedings by videoconference and stated that it knew of no reason why the oral proceedings could not be held by videoconference. The respondent invoked no reasons against holding oral proceedings by videoconference, but requested that the Board inform the parties as soon as possible if it decided to hold the oral proceedings by videoconference. Oral proceedings took place on the 25 April 2023 in person at the premises of the EPO in Haar. The Board argued that: 1. although the order of G 1/21 refers to an emergency situation, it follows from the ratio decidendi of this decision that in-person oral proceedings can only be denied under very limited conditions, even in a situation of general emergency such as a pandemic; 2. due to the fact that videoconferences, at least with current technology, can only provide a suboptimal form of communication, parties have a right to the optimum format for oral proceedings, i.e. in-person oral proceedings, that can only be denied under very limited conditions; and 3. e contrario it also follows from the reasons underlying the Enlarged Board's decision, that parties cannot force Boards to conduct videoconferences instead of in-person oral proceedings.
Summary of Facts and Submissions
I. An appeal was filed by the appellant (patent proprietor) against the decision of the opposition division revoking European Patent No. 2 087 873. The appellant requested that the decision under appeal be set aside and the patent be maintained as granted or, in the alternative, on the basis of one of the first to ninth auxiliary requests.
II. The respondent (opponent) requested that the appeal be dismissed.
III. The Board issued a summons to oral proceedings in Haar.
IV. With letter of 21 December 2022, the appellant requested that the oral proceedings be held by videoconference. No reasons were given for this request.
V. The Board then issued a communication containing its provisional opinion, in which it indicated inter alia that the opposition ground under Article 100(c) EPC was considered to be prejudicial to maintenance of the patent as granted and that claim 1 of the first to ninth auxiliary requests were considered not to fulfil the requirement of Article 123(2) EPC. The parties were also informed that if the Board found it appropriate to do so, the oral proceedings might be held by videoconference. The parties were also asked to inform the Board if they wished to invoke any reasons against holding the oral proceedings by videoconference, for the case that the Board decided to use that format.
VI. With letter dated 23 March 2023, the appellant filed new third to eighth auxiliary requests replacing its previous third to ninth auxiliary requests filed with the grounds of appeal. In the same letter, the appellant repeated its request for oral proceedings by videoconference and stated that it knew of no reason why the oral proceedings could not be held by videoconference.
VII. The respondent invoked no reasons against holding oral proceedings by videoconference, but requested that the Board inform the parties as soon as possible if it decided to hold the oral proceedings by videoconference.
VIII. Oral proceedings took place on the 25 April 2023 in person at the premises of the EPO in Haar.
IX.-XII.[...]
1. Request for oral proceedings by videoconference
1.1 The Board summoned the parties to oral proceedings at the EPO premises.
1.2 The appellant had however requested that the oral proceedings be held by videoconference with its letters dated 21 December 2022 and 23 March 2023 but had not given any arguments as to why the oral proceedings should take place by videoconference. At the beginning of the oral proceedings before the Board, the Chairman addressed this issue and the appellant made no further arguments in this regard.
1.3 According to Article 15a(1) RPBA 2020, the Board may decide to hold oral proceedings by videoconference if the Board considers it appropriate to do so, either upon request by a party or of its own motion.
1.4 From the expression "if the board considers it appropriate", it is evident that the Board has discretion to decide whether to hold oral proceedings by videoconference or not. Nevertheless, the Board is of the view that the Enlarged Board of Appeal decision G 1/21 puts certain limits on how this discretion is to be exercised.
1.5 When interpreting Article 15a RPBA 2020, it must be borne in mind that provisions of the Rules of Procedure of the Boards of Appeal are to be interpreted in a way that is compatible with the spirit and purpose of the Convention (cf. Article 23 RPBA 2020).
1.5.1 The Enlarged Board of Appeal set out in G 1/21 the conditions under which a party's request for in-person proceedings may be denied. Accordingly, it set out principles which follow from the spirit and purpose of the Convention and which must therefore be taken into account when exercising discretion under Article 15a RPBA 2020. The fact that Article 15a RPBA 2020 was not referred to specifically is of no relevance, since the Enlarged Board's decision was of a fundamental nature when exercising discretion on the issue of whether to hold oral proceedings via videoconference or not. Moreover it is noted that Article 15a RPBA 2020 could easily be interpreted in a restrictive manner so that it is compatible with the principles of G 1/21, which is anyway the mode of interpretation foreseen in Article 23 RPBA 2020.
1.5.2 Of course G 1/21 is to a large degree directed to the situation of a general emergency (such as the pandemic situation prevailing at the time of its issue), but the overall understanding of the right to oral proceedings as provided for in the EPC underlying this decision is clearly derivable from the general considerations contained in the Reasons of that decision. As detailed below, the Enlarged Board's basic reasoning used in arriving at its final conclusion is quite general and unrelated to any general emergency considerations.
1.6 In a recent case, the view has been expressed with regard to Article 15a RPBA 2020 that the exercise of discretion in deciding on the format of the oral proceedings was to be based on the criterion of the "appropriateness" of the format only - as set out in that provision -, and that no further criteria are binding for the exercise of discretion (see T 0618/21, point 2.3.1b)ii) of the Reasons). In the present Board's view, however, G 1/21 has established general criteria which need to be taken into account for the denial of a request for in-person oral proceedings, which apply not only to a situation of general emergency, but are valid also in non-emergency times.
1.7 G 1/21 states that in-person oral proceedings are the optimum format and that videoconferences - at least according to the current state of technology - do not meet this standard, i.e. are not equivalent [emphasis by the Board] to in-person oral proceedings. This is explicitly stated in G 1/21 at several junctures such as:
- point 44 of the Reasons:
"..oral proceedings by videoconference are oral proceedings within the meaning of Article 116 EPC and, although not fully equivalent to oral proceedings held in person.."
- point 38 of the Reasons:
".. communicating via videoconference cannot, at least for the time being, be put on the same level as communicating in-person.";
"In terms of communication, in-person oral proceedings are for now the optimum format."; "Video technology has certainly improved in recent times, but cannot yet be said to provide the level of communication which is possible when all participants are physically present in the same room."
- point 45 of the Reasons:
"As stated earlier, a hearing in person is the optimum format or, to use a term well known in the field of European patent law, it is the gold standard.";
"Therefore, in-person hearings should be the default option";
"Parties should only be denied this option for good reasons."
- point 46 of the Reasons:
".. at this point in time videoconferences do not provide the same level of communication possibilities as in-person oral proceedings."
1.8 Not least from the general applicability of the statements above, it is evident that this holds true regardless of the existence of an emergency situation, i.e. even in 'normal times'. The present Board considers this to be the key ratio (ratio decidendi) underlying G 1/21, the validity of which is not limited to any emergency situation.
The Board thus concludes that the ratio decidendi underlying G 1/21 at least in regard to a party's request for in-person oral proceedings cannot be simply assigned to situations of general emergency but are instead generally valid.
1.9 Due to the deficiencies in the level of communication in a videoconference compared to in-person oral proceedings, the Enlarged Board of Appeal came to the conclusion that only in a situation of general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises (cf. wording of the order of G 1/21) is it (exceptionally) possible to deny a party's wish to have in-person oral proceedings.
1.9.1 Although the concept of a situation of general emergency was thus already defined quite narrowly (indeed even restricted to those situations impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises), the Enlarged Board explained by way of example which criteria are to be used in the exercise of discretion and which should in any case play no role (cf. ibid., point 49 of the Reasons: "This decision should not be influenced by administrative issues such as the availability of conference rooms and interpretation facilities or intended efficiency gains.").
1.9.2 It follows from the above that even in the circumstances of a general emergency, the Enlarged Board of Appeal still imposed strict conditions on the possibility of denying a party's wish to hold oral proceedings in-person. A fortiori, it is therefore hardly justifiable why less strict requirements could apply for denying parties in-person oral proceedings in non-emergency times, in particular considering that the Enlarged Board found that videoconferences offer suboptimal communication possibilities compared to in-person hearings, that there are currently no obstacles for the parties and the members of the Board to attend the oral proceedings on EPO premises and that the Enlarged Board acknowledged in principle the parties' right to choose the format of oral proceedings (cf. ibid., point 46 of the Reasons).
In addition, it must be borne in mind that the Enlarged Board justified the denial of in-person oral proceedings in order to avoid the administration of justice being seriously impaired during a pandemic (cf. ibid., point 51 of the Reasons). However, comparable risks do not exist in non-emergency times. The Board therefore can only understand the decision in such a way that, in principle, oral proceedings in person can exceptionally be denied in a situation of general emergency in order to prevent serious impairment of the administration of justice.
1.10 In summary, the following can therefore be stated:
1.10.1 Although the order of G 1/21 refers to an emergency situation, it follows from the ratio decidendi of this decision that in-person oral proceedings can only be denied under very limited conditions, even in a situation of general emergency such as a pandemic.
1.10.2 Due to the fact that videoconferences, at least according to current technology, can only provide a suboptimal form of communication, parties have a right to the optimum format for oral proceedings, i.e. in-person oral proceedings, that can only be denied under very limited conditions.
1.10.3 Further, e contrario it also follows from the reasons underlying the Enlarged Board's decision, that parties do not have a right to a format having deficiencies (e.g. the "shortcomings" of such a format as mentioned in G 1/21, point 40 of the Reasons), i.e. parties cannot force Boards to conduct videoconferences instead of in-person oral proceedings.
1.11 Hence, in a non-emergency situation, such as in the present case before the Board, where the parties are able to travel and no other restrictions exist (see G 1/21, point 49 of the Reasons), the general considerations underlying G 1/21 are to be taken into account.
It can be added that, in the present case the appellant also did not invoke any reasons which would have prevented it from attending the oral proceedings in person, and indeed it was able to do so.
1.12 As stated in G 1/21 (see e.g. points 38, 45 and 46 of the Reasons), a hearing in person is for now "the optimum format, or to use a term well known in the field of European patent law, it is the gold standard". Although oral proceedings by videoconference have proven suitable in many cases, albeit with certain disadvantages (which may depend on several factors, for example sometimes lasting longer than oral proceedings in person and requiring several hours of staring at screens leading to fatigue, etc.) that format has nevertheless regularly been used by the present Board where the parties consent to same. Nevertheless, the Board concludes that communicating via videoconference cannot, at least for the time being, be put on the same level as communicating in person.
1.12.1 In particular, the Board cannot recognise any improvements that can be said to provide the level of communication which is possible when all participants are physically present in the same room.
1.12.2 Unlike found in T 758/20 (cf. point 1.4.7(b) of the Reasons) and further elucidated in T 618/21 (cf. point 4.1.3 to 4.1.5 of the Reasons), this Board finds that the situation for the time being has not changed since the issue of G 1/21.
1.12.3 Here it is first noted that in G 1/21 (cf. point 46 of the Reasons) the Enlarged Board held that "at this point in time" videoconferences did not provide the same level of communication possibilities as in-person oral proceedings. The point in time referred to by the Enlarged Board (G 1/21 bears the date 16 July 2021 and was issued on 28 October 2021), was thus the time when the use of "ZOOM" (i.e. the current platform still used by the Boards) had already been introduced. Furthermore, even the Enlarged Board itself used it for part of the proceedings in G 1/21 (see e.g. the summons to oral proceedings dated 1 June 2021 stating specifically that the "ZOOM" platform would be used).
1.12.4 As such, the parties rely on the same kind of hardware and software as were available at the time of G 1/21, i.e. the picture and sound quality is basically the same. The Board cannot recognize any significant improvement in the oral or visual level of communication between the parties that would result, for example, in an increased "immediacy" to the level of oral proceedings in person. The technological developments in telecommunications which may bring about this level of communication are still awaited. Some communication aspects of body language and expression, are often difficult or simply impossible to discern on camera, not least due to the limited field of view and image quality available, often only the party's face or head and shoulders being visible and the image of all parties contributing becoming even smaller as the number of parties increases. Whilst not necessarily affecting the right to be heard, these type of issues may well affect the immediacy and smooth running of the oral proceedings which itself may cause distraction for the Board and the parties. Likewise, when interpreters are present, for example in two or three language directions, then the technology has a significant lag which again reduces immediacy even further. The advantages of the gold standard thus remain as they were at the time of decision G 1/21.
1.12.5 In addition, although the Boards have had the time and opportunity to familiarise themselves with the tools necessary for videoconferencing, this was also true at the time of issue of G 1/21. In some cases, the parties may also have acquired such familiarisation themselves, albeit some may only have recourse to videoconference oral proceedings sporadically. Obviously the Boards should ensure that factors such as the level of familiarity/experience with a particular software as such should not put a party at a disadvantage. If the parties themselves request oral proceedings by videoconference, or consent thereto, it can generally be assumed that they accept any such shortcomings that exist.
1.13 In the present case, one party requested oral proceedings by videoconference. Thus, it is necessary to consider Reasons point 46 of G 1/21, where it is stated that "The vast majority of oral proceedings are held upon request by a party. It therefore makes sense that the choice of format for these oral proceedings can be made by a party who requested them and not by the board of appeal."
1.14 For the reasons discussed under item 1.10.3 above, the "choice of format" of oral proceedings via videoconference cannot be limiting on the Board, which may always decide to hold the proceedings in person. This is exactly the situation in the present case, where the Board, despite the request of one party did not accede to that request and maintained the format of oral proceedings as indicated in the summons, i.e. "in-person". Whilst the Board accepts that if there are no objections to holding the proceedings via videoconference, or if all parties request this, the Board can exercise its discretion to hold the oral proceedings via videoconference (as regularly happens), notwithstanding the fact that the Board must additionally consider it "appropriate to do so" (also stated in Article 15a RPBA 2020) when selecting the format.
1.15 In the present case, and despite the party's request, the Board found that in the circumstances of the case, and in particular in regard to the substantive issue of the "side portions" and the structural and functional aspects regarding the inclusion of the leak barrier sheets in a flexible and elastically stretchable area of the product where the "side portions" were located, the parties may well (as is often the case in the Board's experience in such technology) have resorted to detailed explanations revolving around the Figures of the published divisional and parent applications during the oral proceedings, including the movements and relative movements of various parts during wearing. Of course, it could be argued (as the Board did in T 618/21) that a party wishing to refer to such matters could simply file adapted drawings in advance. Notwithstanding the additional work required from both the Board and the other party(ies) in this regard however, experience of appeal cases in the technical field of the case in question has shown that a party wishing to explain functional effects of structural features can often do this more easily by use of the flip chart, gradually building up features whilst explaining them in a dynamic situation of use, and of course allowing the same sketches to be used by the opposing party(ies). Likewise, filing such sketches by email during a videoconference oral proceedings, results in further delays as these are received and then distributed further by another email amongst the Board and parties (and often the interpreters), which may well break the flow of a party's submissions and which inevitably (when being displayed) reduces other available screen space used for documents or for viewing the parties. The Board also notes that the appellant itself argued that there were a high number of complex objections to be dealt with (see also point 5.3 below). Therefore, the complexity of the case also spoke for oral proceedings in person.
1.16 For the reasons discussed above, the Board did not change the format of the oral proceedings, which remained as summoned.
2. Main request - Article 100(c) EPC
[...]
2.8 The amendments made to claim 1 before grant do therefore result in subject-matter which extends beyond the content of the parent application as originally filed, such that the ground for opposition under Article 100(c) EPC is prejudicial to maintenance of the patent. Thus, the main request is not allowable.
3. First and second auxiliary requests - Article 123(2) EPC
[...]
3.5 At least for this reason, the subject-matter of claim 1 of auxiliary requests 1 and 2 does not fulfil the requirement of Article 123(2) EPC. Auxiliary requests 1 and 2 are not allowable.
4. Third and fourth auxiliary requests - Article 123(2) EPC
[...]
4.4 Leaving the question of admittance of the third and fourth auxiliary requests aside (the admittance of these requests into the appeal proceedings having been contested by the respondent), the subject-matter of claim 3 of the third and fourth auxiliary requests does not fulfil the requirement of Article 123(2) EPC for the reasons stated above. The third and fourth auxiliary requests are thus not allowable.
5. Fifth to eighth auxiliary requests - admittance
[...]
5.4 For all the above reasons, the Board exercised its discretion under Article 13(1) RPBA 2020 not to admit the fifth to eighth auxiliary requests into the proceedings.
Order
For these reasons it is decided that:
The appeal is dismissed.
Keywords:
Right to oral proceedings in form of a videoconference (no)
Amendments - main request and auxiliary requests 1 to 4
Amendments - added subject-matter (yes)
Late-filed auxiliary requests 5 to 8
Late-filed auxiliary requests - procedural economy (no)
Catchwords:
1. Although the order of G 1/21 refers to an emergency situation, it follows from the ratio decidendi of this decision that in-person oral proceedings can only be denied under very limited conditions, even in a situation of general emergency such as a pandemic.
2. Due to the fact that videoconferences, at least with current technology, can only provide a suboptimal form of communication, parties have a right to the optimum format for oral proceedings, i.e. in-person oral proceedings, that can only be denied under very limited conditions.
3. Further, e contrario it also follows from the reasons underlying the Enlarged Board's decision, that parties cannot force Boards to conduct videoconferences instead of in-person oral proceedings.
This decision T 2432/19 () of 25.4.2023 (pdf) has European Case Law Identifier: ECLI:EP:BA:2023:T243219.20230425. The file wrapper can be found here.
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