Thursday, November 28, 2024 New referral - G 2/24 "Skin cleanser" by T 1286/23 dd 11-11-2024

Today, decision T 1286/23 was made available online, referring questions to the Enlarged Board. Under Article 112(1)(a) EPC and Article 21 RPBA the following points of law are referred to the Enlarged Board of Appeal for decision:
After withdrawal of all appeals, may the proceedings be continued with a third party who intervened during the appeal proceedings? In particular, may the third party acquire an appellant status corresponding to the status of a person entitled to appeal within the meaning of Article 107, first sentence, EPC?
The case is ending as G 2/24 "Skin cleaner".

Friday, October 18, 2024 T 56/21 - The end (?) of the debate on whether the description must be adapted to match allowable claims of more limited subject-matter

This decision came online earlier this week, on  14 October 2024, and the outcome was a surprise to many. Whereas it had earlier been indicated that a referral to the Enlarged Board of Appeal was likely (and was a reason why the Guidelines were not amended further in the last few years - see e.g. item 127 in here), the Technical Board of Appeal 3.3.04 decided themselves. When reading the decision, it almost reads like an Enlarged Board: the format of the decision including a detailed Table of Contents, the detailed consideration of the (alleged) relevant EPC Articles and Rules (Art. 84, Rules 42, 43, 48 EPC) incl their interpretation and function (interestingly, in view of pending referral G 1/24, also addressing Art. 69 EPC), extensive discussion of earlier decisions of the Boards, and a clear, firm and reasoned conclusion in reasons 100-104 that no referral is needed "since the requirements of Article 84 EPC for the purpose of examining European patent applications appear unequivocal when considering the different elements of interpretation (see points 7. and 8.), the guidance by the Enlarged Board of Appeal (see, the references in point 35.), and the practical implications. The wording of Article 84 EPC as well as its context leave no room for requiring, in examination, that the description be adapted to allowable claims to match their subject-matter." Will this close the debate after a long period of uncertainty and will the Guidelines be amended as of the next edition? It is hoped so, although quite some practioners would have preferred a decision from the Enlarged Board, so that it would effectively be binding without reservations/ uncertainty and with immediate effect.

Monday, July 01, 2024 G 1/24 - Referral: Can the description and figures be consulted when interpreting the claims to assess patentability?

Today, the Boards of Appeal published the following communication (no changes made, except for emphasis added and references to points in the referring decision added cf. the Order of the latter) on their website:

Referral to the Enlarged Board of Appeal – G 1/24 ("Heated aerosol")

01.07.2024

Under Art. 112(1)(a) EPC, a Board of Appeal refers a question to the Enlarged Board of Appeal if it considers that a decision is required, in order to ensure uniform application of the law  [see point 3] or if a point of law of fundamental importance  [see point 4] arises.

Technical Board of Appeal 3.2.01 has by interlocutory decision T 439/22 referred the following questions to the Enlarged Board of Appeal (referral pending under G 1/24 - Heated aerosol):

1. Is Article 69(1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied on the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC? [see points 3.2, 4.2 and 6.1]
2. May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation? [see points 3.3, 4.3 and 6.2]
3. May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions? [see points 3.4, 4.4 and 6.3]

Contact

Nikolaus Obrovski
Jeannine Hoppe
Spokespersons of the Boards of Appeal of the European Patent Office
boa-press@epo.org

Referring Board's decision: T 0439/22 (Gathered sheet) dd 24-06-2024

Thursday, April 18, 2024 No more faxing to the EPO as of 1 July 2024 :(

Hidden in a News message on MyEPO services, the EPO announced that from July onwards, the EPO will no longer accept submissions by fax. All fax services relating to EP and PCT as well as Unitary Patent procedures will thus cease completely as of July. 

Already since 1 March 2023, EPO no longer sends faxes in proceedings under the EPC and the PCT - but at that time still continued to receive them; see OJ 2023, A15.

As of 1 July 2024, the EPO will also stop receiving faxes; see the News message.

The EPO indicated that, in emergency cases, the Contingency Upload Service is available via the EPO  website (CUR here). Note that Webform Filing will be decommissioned in December 2024. 

A Decision from the President and a Notice from the EPO on the abandoning of fax are expected to be published in OJ EPO April 2024.

For the News message: see here

Wednesday, November 01, 2023 No more 10 days :(

Overview of notification and time-limit calculation rules before and after 1 November 2023

Application of the transitional provision

Today, amended Rules 126(2)/127(2)/131(2) EPC entered into force, abandoning the 10-day legal fiction for deemed notification as applicable for time limits triggered by a notification, and replacing it by the date of dispatch and a compensation for late receipt (similar as in PCT Rule 80.6).

See:

• OJ 2022, A101 Decision of the Administrative Council of 13 October 2022 amending Rules 46, 49, 50, 57, 65, 82, 126, 127 and 131 of the Implementing Regulations to the European Patent Convention (CA/D 10/22), article 1.10-12, art 2 second sentence and art 3 second sentence
• OJ 2022, A114 Notice from the European Patent Office dated 25 November 2022 concerning legal changes to support digital transformation in the patent grant procedure, section IV.
• OJ 2023, A29 Notice from the European Patent Office dated 6 March 2023 concerning amended Rules 126, 127 and 131 EPC

Wednesday, October 11, 2023 G 1/22 and G 2/22 decided - Competence of EPO to assess whether a party is entitled to priority & possible implicit agreement of a transfer of priority

Yesterday, a Press Communiqué was published as the Enlarged Board had issued its decision in consolidated cases G 1/22 and G 2/22 and the decision became available in the register, and today on the Recent Decisions page.  The Enlarged Board concluded, in the order, that:

"I. The European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC. There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations is entitled to claim priority." 
"II. The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical with the subsequent applicant(s). In a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant, the joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary."

Thursday, June 29, 2023 New referral to the Enlarged Board by T 0438/19 - is product on the market prior art if undue burden to analyse composition? (G 1/23)

 T 0438/19 of 27-06-2023 referred the following questions to the Enlarged Board of Appeal for decision:

1. Is a product put on the market before the date of filing of a European patent application to be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced without undue burden by the skilled person before that date?

2. If the answer to question 1 is no, is technical information about said product which was made available to the public before the filing date (e.g. by publication of technical brochure, non-patent or patent literature) state of the art within the meaning of Article 54(2) EPC, irrespective of whether the composition or internal structure of the product could be analysed and reproduced without undue burden by the skilled person before that date?

3. If the answer to question 1 is yes or the answer to question 2 is no, which criteria are to be applied in order to determine whether or not the composition or internal structure of the product could be analysed and reproduced without undue burden within the meaning of opinion G 1/92? In particular, is it required that the composition and internal structure of the product be fully analysable and identically reproducible?

The decision discusses alleged conflicting or at least diverging application of G 1/92, as well as G 1/92 itself, in detail. The reasons from the decision are cited below (no changes made except for highlighting in color).

The referral is pending under G 1/23 "solar cell".

Tuesday, May 09, 2023 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.

Thursday, March 23, 2023 BREAKING NEWS: G 2/21 decision is out - Plausibility

Today, the Boards of Appeal have published the News message shown below (no changes made, except emphasis added):

Press Communiqué of 23 March 2023 on decision G 2/21 of the Enlarged Board of Appeal

23 March 2023

Background

The Enlarged Board of Appeal is the highest judicial authority under the European Patent Convention (EPC). Its main task is to ensure the uniform application of the EPC.

Technical Board of Appeal 3.3.02 referred questions on the principle of free evaluation of evidence and the notion of "plausibility" in the context of inventive step to the Enlarged Board of Appeal. With regard to the latter, the referring board identified three different lines of case law (see interlocutory decision T 116/18, Reasons 13.4-13.6).

Wednesday, February 15, 2023 T 2303/19 - In person oral proceedings are for now (no Covid-19 related travel restrictions) the optimum format as expressed in decision G 1/21

In the present opposition appeal case, the parties were summoned to attend oral proceedings at the EPO premises. The appellant requested that the oral proceedings take place by videoconference. The respondent did not consent to this request and suggested a mixed mode format. The Board decided to hold the oral proceedings in person, as at the relevant time there were no Covid-19 related travel restrictions which would impair the parties' possibilities to attend in person oral proceedings at the EPO premises, and that in person oral proceedings are for now the optimum format as expressed in decision G 1/21 (see here).

Friday, November 04, 2022 T 2194/19 - The "invention" is not necessarily and always to be equated with the "invention claimed", not required that all described "embodiments" must fall within the scope of the amended independent claims

In the present case, the examining division regarded several  paragraphs of the description to be at odds with independent claim 1, as amended.  The examining division equated the term "embodiment" with subject-matter that has to fall "within the scope of the invention as defined by the claims", and concluded that the description so adapted was not in conformity with the independent claims, contrary to Rule 42(1)(c) EPC, because the term "embodiment" was used in parts of the description that describe subject-matter that was not part of the subject-matter of these independent claims. Moreover, the examining division held that the "invention" must always be the "invention claimed" and the "invention" was defined by the independent claimws. The Board did not agree and held:
1) the EPC does not define that “the "invention" is necessarily and always to be equated with the "invention claimed"”, 
2) concluding from Art. 84 EPC that "embodiments" of the description of a patent application have to be within the scope of the (independent) claim cannot be derived from the EPC and can also also not be derived from the jurisprudence of the Boards of Appeal, and 
3) in particular Rule 42(1)(c) EPC cannot be the legal basis for establishing such a general and broad requirement for an adaptation of the description to the claims. It is simply not what this provision says.”
Herein, the Board deviates from the strict practice that the first instance nowadays applies as well as from Guidelines (2022) F-IV, 4.3. The Board does however not address the Guidelines, although that could have been expected in view of Art. 20(2) RPBA2020. Also, the Board hardly addresses the case law that the EPO considers to support the “delete all non-covered embodiments" approach that is used by the drafters of the Guidelines, and as a consequences do not discuss whether a referral to the Enlarged Board would be necessary acc Art. 20(1) RPBA2020. Note that the Board also does not mention T 1989/18 of 16.12.2021 that concluded that, as a general rule, not is not required to bring the description in line with (amended) claims intended for grant.

Saturday, October 15, 2022 Deemed date of receipt looses 10 days per 1 November 2023: shortens times to respond to communications!

10 days

A news message on the epi website indicates that the Administrative Council of the EPOrg decided to amen to Rule 126(2) EPC relating to the date on which a document sent by the EPO is deemed to be delivered. Currently, a documnt is deemed delivered 10 days after the date on the document. This will changer per 1 November 2023: as of that date, the date on which the document is deemed to be delivered is the date on the document, similarly to PCT Rule 80.6, second part (with with some differences, in particular the EPO keeping the burden of proving the date of delivery in the event of dispute, whereas under PCT that burden is with the applicant). 

I heard that, surprisingly, only one delegation voted against the change. Even though the entry into force of the amended Rule is about a year away, changing such a well-established rule that is know world-wide to the disadvantage and risk of the applicant may cause some accidents, which cannot in all cases be repaired: not knowing that the rule has changed will make a request for re-establishment of missing, for example, the appeal period, have hardly any chance of success.

Note that the change has no impact on the 9m opposition period (triggered by the mention of the grant in the bulletin), the 1m period for paying the filing and search fee (triggered by the filing), the 6m period to pay the examination fee and file the request for  examination (triggered by the mention of the publication of the search report in the bulletin), the 31m period for EP entry (triggered by the earliest priority date), nor any other periods that are triggered by an event other than notification.
It does however affect all periods for responding to an invitation to remedy a formal deficiency (in most cases, 2m), an office action (usually 4m, sometimes 2m; extendible), a R.161/162 communication (6m), invitations to pay claims fees in case of non-unity (2m), the period for requesting further processing (2m), the appeal periods (2m for notice & fee, 4m for grounds), and all other periods  that are triggered by the notification of letter/invitation/communication! 

So, when,  a communication is issued on 17 November 2023 under Rule 58 to file a missing translation:
- if the current Rule would still have applied, a response would need to be filed by
         17/11/2023 + 10d + 2m -> 27/1/2024 (Saturday) [R.134(1)] -> 29/1/2024 (Mon);
- with the amended Rule however, a response is to be filed by
         17/11/2023 + 2m -> 17/1/2024 (Wed)

The Administrative council documents are currently not yet available on the EPO website (here).

Update 21 November 2022: the Administrative council documents are now available on the EPO website:

• CA/D 10/22 Decision of the Administrative Council of 13 October 2022 amending Rules 46, 49, 50, 57, 65, 82, 126, 127 and 131 of the Implementing Regulations to the European Patent Convention; amended Rules 46, 49, 50, 57, 65, 82 in force as of 1.2.2023; amended Rules 126, 127 and 131 in force as of 1.11.2023;
•  CA/30/22 Rev. 2 Legal changes to support digital transformation in the patent grant procedure (first basket): amendments to the EPC Implementing Regulations (Preparatory documents for the decision)

The epi news message is cited below (no changed made): 

Wednesday, September 21, 2022 T 17/22 - On the "Invitation pursuant to Rule 137(4) EPC and Article 94(3) EPC"

In the present case, the examining division issued a decision to refuse the application based on the ground under Article 123(2) EPC and on lack of novelty, lack of inventive step and lack of clarity. However, the examining division had issued only two communications before deciding to refuse the application: the first was a communication under Rules 161(1) and 162 EPC, inviting the applicant to correct any deficiencies noted in the written opinion raised by the EPO as ISA in the international phase, and the second was a communication under Rule 137(4) EPC headed "Invitation pursuant to Rule 137(4) and Article 94(3) EPC", accompanied by an annex raising an objection under Article 123(2) EPC and the statement: "nota bene: The amendment appears also not suitable to remedy the deficiencies". In the statement setting out the grounds of appeal, "the appellant contended among others that the examining division had committed a substantial procedural violation as, in the proceedings before the examining division, the appellant never had the opportunity to address the objections as expressed in the appealed decision. Moreover, with the invitation pursuant to Rule 137(4) EPC, the appellant had only been alerted that certain amendments had not been sufficiently identified and/or their basis in the application as filed has not been sufficiently indicated. The subsequent decision to refuse the European patent application without any further ado had come completely to the surprise of the appellant. Thus, the appellant submitted that the right to be heard under Article 113(1) EPC had been violated.".
The Board considered the scope of Art. 94(3) EPC in detail and considered that at least one substantive communication pursuant to Art. 94(3) EPC and Rule 71(1) EPC is required before a decision to refuse the application on substantive grounds is issued (or, exceptionally, summons for OP). The Board addressed in detail whether a communication under Rules 161(1) and 162 EPC can/cannot be considered a communication under Article 94(3) EPC and whether an "Invitation pursuant to Rule 137(4) EPC and Article 94(3) EPC" can/cannot considered a substantive communication under Article 94(3) EPC.

Wednesday, September 07, 2022 T 682/22 - No interlocutory revision despite single ground for refusal overcome by amendment: what does the Board say?

In the present case, the application was refused due to lack of novelty. The applicant appealed with a sole request in which the applicant amended the independent claims. The amendments included the addition of a feature to the independent claims which, according to a positive statement in the annex to the summons for oral proceedings before the examining division, made the claim novel. Nevertheless, interlocutory revision was not granted (possibly because the ED considered further amendments to extend subject-matter, but -in accordance with Art.109(2), the reasons were not given). The Board of Appeal discussed the breath and the established case law of Art.109(1) EPC, as well as the Guidelines, and considers it appropriate to point out that there are (still) some significant inconsistencies between the current Guidelines and the established case law as to the interpretation of Article 109(1) EPC. The Board concluded that "interlocutory revision must be granted if the amendments clearly overcome the grounds for refusal, even if further new objections arise, i.e. irrespective of whether new objections under Article 123(2) EPC or whether previous objections referenced in the appealed decision were raised by the first-instance department" and noted that "the established case law (...) and the current Guidelines are inconsistent with each other."  The Board conclude that, in the current case, "the appeal is "well founded" within the meaning of Article 109(1) EPC. There is also no apparent reason to contest that the appeal is "admissible" within the meaning of Article 109(1) EPC. The examining division should therefore have indeed rectified its decision and continued with the examination of compliance with the requirements of the EPC. However, for whatever reasons, they did not do so."

Tuesday, July 12, 2022 T 3000/19 - Use of video retrieved from the internet as prior-art

The grounds for refusal of the decision under appeal are based on lack of inventive step when taking as starting point documents D4 and D5. The prior-art evidence cited by the examining division as "document D4" refers to a video titled "Mac OS X Leopard Overview : Mac OS X Leopard Dictionary", retrieved from the YouTube website and, at the same time, a document including a screenshot of a web browser visiting that YouTube website. The video of D4 was cited for the first time in the examining division's communication of 24 January 2018, which provided the URL for accessing the video on the internet. The document with the screenshot also shows YouTube information about the video, including the publication date of 9 July 2008 used by the examining division. It does not show any other information relevant to the case. The Board discussed Internet disclosure as prior-art evidence, Use of electronic evidence in proceedings and Use of online video evidence in the EPO. The Board considered the procedure in accordance with the Guidelines for Examination, B-X, 11.6 to be insufficient for preserving video evidence and guaranteeing its accessibility over time as needed for EPO proceedings or for further judicial proceedings before the boards of appeal of the EPO or national courts (Article 131(1) EPC). The Board concluded to be not in a position to make its own assessment of the relevant evidence in its original presentation in an objective and independent manner. In view of this, the Board concludes that the decision under appeal is not sufficiently reasoned and violates Rule 111(2) EPC. This constitutes a substantial procedural violation. The measures recommended by the Guidelines for Examination of November 2018, B-X, 11.6, which were followed by the examining division, did not adequately preserve the relevant electronic evidence to guarantee accessibility over time.

Tuesday, February 01, 2022 Referral by T 1513/17 and T 2719/19 - Priority from an earlier application having different applicants for different states

In the present case (T 1517/17, consolidated with T 2719/19), the patent proprietor filed an appeal to the interlocutory decision of the opposition division revoking its patent. The application on which the patent was granted had originally been filed as an international application under the Patent Cooperation Treaty (the PCT application). It claims priority on the basis of the US provisional patent application (the priority application). The priority application was filed in the name of the two inventors H. Wang and Z. Zhong. The PCT application names the same two persons as inventors and as applicants with designation for the US only. It also names as applicants Alexion Pharmaceuticals, Inc. and the University of Western Ontario as applicants for all designated States except the US. The patent in suit names Alexion Pharmaceuticals, Inc. as patent proprietor and R.P. Rother, H. Wang and Z. Zhong as inventors.

The Board decided to refer the following questions to the Enlarged Board of Appeal:
I. Does the EPC confer jurisdiction on the EPO to determine whether a party validly claims to be a successor in title as referred to in Article 87(1)(b) EPC?

II. If question I is answered in the affirmative [note: which seems likely, in view of it being a substantive requirement in Art.87(1) EPC]

Can a party B validly rely on the priority right claimed in a PCT-application for the purpose of claiming priority rights under Article 87(1) EPC

in the case where

1) a PCT-application designates party A as applicant for the US only and party B as applicant for other designated States, including regional European patent protection and

2) the PCT-application claims priority from an earlier patent application that designates party A as the applicant and

3) the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?
In reason 37, the Board also indicted that "a separate question relating to conflict of laws-rules to be applied to a transfer of the priority right is nonetheless not necessary because it is inherently contained in the questions posed and it will be addressed in the considerations of the EBA, as needed."

Thursday, December 23, 2021 T 1989/18 - As a general rule, not required to bring the description in line with (amended) claims intended for grant

In the present case, the examining division found the set of amended claims of the main request to be allowable, but nevertheless it held that the amendments to the description adapted to those claims (submitted with the same letter) did not comply with the requirements of Article 84 EPC, in particular because they related to subject-matter which was broader than the subject-matter of independent claim 17 of the request, and refused the European patent application for that reason. The Board carefully assessed the applicability of Art. 84 EPC as well as of Rule 42(1)(c) and Rule 48(1)(c) EPC as possible legal basis requiring adaptation of the description, and concluded that such basis does not exist (except possible in the case of non-unity). The Board also argued why it distinguished from earlier decisions (some of whuch being cited in the Guidelines in support of such alleged requirement).

Tuesday, December 21, 2021 J 8/20 & J 9/20 - Inventor has to be a person with legal capacity

In the oral proceedings before the Legal Board of Appeal in the two DABUS cases earlier today, the Board decided that the appeal is dismissed and that the request for a referral to the Enlarged Board is refused.

The Board concludes that DABUS, an AI machine, cannot be considered an inventor in the meaning of the EPC, as the Board concluded that an inventor has to be a person with legal capacity.

Tuesday, December 14, 2021 Moving back from Haar?

Today, an EPO news message was published in the EPO website indicating that the President of the EPO and the President of the Boards of Appeal have proposed to the Administrative Council to relocate the Boards back from Haar to the city center, more specifically to Pschorr-Höfe 7 in Munich, owned by the EPO (Bayerstrasse area).

The news message reads:

Plan to relocate Boards of Appeal presented to EPO member states

14 December 2021

EPO President António Campinos and President of the Boards of Appeal Carl Josefsson have made a joint proposal today to the EPO's member states to relocate the Boards of Appeal from the Munich district of Haar to the city centre. A detailed proposal for the relocation of the Boards of Appeal will be presented for approval of the EPO member states by spring 2022.

Further information:

Joint declaration

 

• The Joint declaration reads [colour added]:

Joint Declaration

of the President of the European Patent Office and

of the President of the Boards of Appeal

on the re-location of the Boards of Appeal

CONSIDERING the decision of the Administrative Council of 30 June 2016 (CA/43/16 Rev.1) on a comprehensive reform of the structures, management and career scheme of the Boards of Appeal aiming at improving the organisational autonomy of the Boards of Appeal and the perception of independence in their activities;

CONSIDERING the decision of the Administrative Council of 30 June 2016 (CA/D 6/16) amending the Implementing Regulations to the European Patent Convention and establishing the rules governing the organisation and management of the Boards of Appeal and President of the Boards of Appeal;

CONSIDERING the decision of the Administrative Council of 30 June 2016 (CA/D 7/16) setting up a Boards of Appeal Committee and adopting its Regulations;

CONSIDERING the decision of the Administrative Council of 30 June 2016 (CA/43/16 rev. 1 – Part C) concerning the relocation of the Boards of Appeal in a separate building in Munich;

CONSIDERING the decision of the Administrative Council of 16 October 2016 (CA/82/16) to conclude a rental agreement for the new location of the Boards of Appeal in Haar;

CONSIDERING the Memorandum of Understanding between the President of the Office and the President of the Boards of Appeal on the organisational autonomy of the Boards of Appeal, signed on 29 June 2019;

WHEREAS the rental contract for the building in Haar was concluded in 2017, for the duration of 15 years, ending in 2032, and an additional contract concluded in 2019, for the duration of 84 months, ending in 2026;

WHEREAS the Office will introduce the New Ways of working (CA 77/21) in 2022 for a three-year pilot;

The President of the Boards of Appeal and the President of the Office jointly propose to the Administrative Council to re-locate the Boards of Appeal from Haar to the building Pschorr-Höfe 7 in Munich, owned by the EPO, as of 2025/2026.

Munich, 10 December 2021

António Campinos           Carl Josefsson

President of the Office     President of the Boards of Appeal

Friday, October 29, 2021 G 1/21 - OP by Vico - the full decision is out!

On 16 July 2021, a Press Communiqué was issued by Spokespersons of the Boards of Appeal of the European Patent Office on the decision of the Enlarged Board in G 1/21. The full reasoning of the decision was not yet issued at that time, but only the Order and some comments. E.g, in the press communique, the Enlarged Board of Appeal "limited the scope of its answer  by confining its order to oral proceedings that are held during a period of general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises and moreover are conducted specifically before the Boards of Appeal. Accordingly, in its order the Enlarged Board did not address the question whether oral proceedings by videoconference may be held without the consent of the parties in the absence of a period of general emergency. Nor did the order address the question whether oral proceedings by videoconference may be held without the consent of the parties in examination or opposition proceedings before the EPO's departments of first instance." The full reasoning of the decision was expected to shed some light on the effect on the legality and conditions of oral proceedings by videoconference in first instance proceedings and in "normal times", when the pandemic is over.

The full decision was published today, 29 October 2021. 
In reason 32 of the decision, "Ihe Enlarged Board considers that the limitations currently inherent in the use of video technology can make it suboptimal as a format for oral proceedings, either objectively or in the perception of the participants, but normally not to such a degree that a party's right to be heard or right to fair proceedings is seriously impaired. If in an individual case these rights cannot be respected, it is of course the duty of the deciding body to take appropriate measures to remedy this."
In reason 45, the Enlarged Board indicates that "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. It definitely fulfils the requirements of Article 113 EPC and Article 6 ECHR. It is also the format that the legislator had in mind when drafting Article 116 EPC. Therefore, in-person hearings should be the default option. Parties can only be denied this option for good reasons."
In reason 46, the Enlarged Board indicates that "[...] the holding of oral proceedings is seen as serving the interests of the parties. 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 the party who requested them and not by the board of appeal, especially as this concerns more than just an organisational matter. As stated earlier, the Enlarged Board holds that at this point in time videoconferences do not provide the same level of communication possibilities as in-person oral proceedings. A party may thus have good reasons to prefer in-person oral proceedings to a videoconference." (see reasons 47-50)