Board of Appeal finds ViCo is now equivalent to in-person proceedings, and that G 1/21 “gold-standard” no longer applies (T 1158/20)

http://ipkitten.blogspot.com/2023/03/board-of-appeal-finds-that-vico-is-now.html

In G1/21 the Enlarged Board of Appeal (EBA) found that mandatory ViCo oral proceedings were justified in a state of general emergency impairing the parties ability to attend in-person proceedings. However, in the absence of a state of general emergency, the EBA were unequivocal that in-person proceedings were the “gold-standard”, and that in-person proceedings should therefore be the default.  G 1/21 was decided against a backdrop of the EPO’s digital strategy and the EPO’s clear desire to the move the majority of proceedings to a ViCo format (IPKat). How then would the Boards of Appeal navigate the legal reasoning of G 1/21 and pressure from EPO management? 

So far, Boards of Appeal have avoided the question by continuing to find that the general state of emergency justifying ViCo oral proceedings continues to apply. T 1158/20 is the first decision to directly address the EBA reasoning that in-person proceedings should be the default, absent a state of general emergency. In a legal twist certain to raise a few eyebrows, the Board of Appeal in T 1158/20 found that ViCo technology has improved so much since G 1/21, that the EBA’s stipulation that in-person proceedings should be the default no longer applies.

Patchy reasoning?

G1/21: In-person proceedings are the gold standard

In 2021, the EPO introduced a new Rule of Procedure of the Boards of Appeal (RPBA), Article 15a, permitting a Board of Appeal to hold oral proceedings by ViCo whenever “the Board considers it appropriate to do so”. The new rule sparked a referral to the EBA on the legality of the new provision, G 1/21. 

The EBA found that the mandatory use of ViCo during appeal hearings was permitted during a state of general emergency, given that ViCo oral proceedings do not fall below the threshold required by the right to be heard (Article 113 EPC). The EBA’s decision nonetheless included some pointed remarks on the limitations of ViCo. Crucially, the EBA observed that the standard of ViCo technology at the time had limitations. The EBA particularly noted that video technology “cannot yet be said to provide the level of communication which is possible when all participants are physically present in the same room“. The EBA noted the technical difficulties associated with ViCo that may distract both the parties and the deciding body (r.38). 

The EBA further noted that “[h]olding court hearings in person is also preferable from the point of view of the transparency of the justice system and its function in society. In-person hearings held at an appropriate location better reflect the importance of the exchange between a court and the parties seeking justice, before a final decision is taken“. 

EBA thus concluded that “All in all […] 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 […] 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. “

Since G 1/21, Boards of Appeal addressing the question of whether mandatory ViCo oral proceedings is justified, have found that there is a continued state of general emergency impairing parties’ possibilities to attend in-person oral proceedings (IPKat). Anecdotally, Boards of Appeal have also generally been generally willing to accept requests from parties for in-person proceedings based on a simple reference to the reasoning in G 1/21 that in-person proceedings are the gold standard. 

However, the EPO recently updated its guidance with respect to the pandemic, on the basis that the state of general emergency was no longer in effect (IPKat). This acknowledgement raised questions as to the ongoing applicability of G 1/21. Given the reasoning in G 1/21 that in-person proceedings should be the default in the absence of a state of general emergency, how could the EPO justify the ongoing use of ViCo without the consent of all parties?

Rejecting G 1/21

The decision in T 1158/20 is the first decision from the Boards of Appeal to consider the implications of G 1/21 absent a state of general emergency impairing parties ability to attend in-person proceedings. The appeal was filed by the opponent following the Opposition Division decision to uphold the patent (EP2533655) as novel and inventive. The Board of Appeal in the case decided to of its own motion to hold the oral proceedings by videoconference pursuant to Article 15a(1) RPBA 2020.

The Board of Appeal acknowledged that there were no longer travel restrictions barring the parties from attending proceedings in-person (r. 1.3.2), but noted that this did not bar the Board of Appeal from exercising their discretion in holding proceedings in-person according to Article 15a(1) RPBA 2020. The Board of Appeal also considered the ongoing infection risk of COVID-19 as sufficient justification for holding the proceedings in-person. 

The Board of Appeal then went on to directly address the reasoning in G 1/21 that in-person proceedings should be the default (r. 1.4.4). The Board of Appeal concluded that ViCo technology had improved so much since G1/21 that the concerns raised in G1/21 over the quality of ViCo proceedings could now be disregarded:

“[G1/21] was issued when the boards had had little experience with the software tools used for videoconferencing […] Since then, the situation has changed, and the boards but also the parties have had extensive experience with videoconferences and the tools involved. The technical requirements were met on the board’s side but also on the side of the representatives to allow for stable videoconferences with high-quality picture and sound such that holding oral proceedings by videoconference is no longer as far from the gold standard as it was when decision G 1/21 was taken.

On the contrary, in the board’s view, nowadays an oral proceedings held by videoconference is often equivalent to a hearing in person.”

The Board of Appeal thus concluded that oral proceedings by videoconference can now be considered equivalent to in-person proceedings. 

Final thoughts

The Board of Appeal provides no evidence to support its decision that ViCo oral proceedings can be considered equivalent to in-person proceedings. Similarly, the Enlarged Board of Appeal provided no evidence for the contrary view in G 1/21. EPO user consultations on the ViCo oral proceedings demonstrated that users are broadly in favour of oral proceedings. However, the consultations did not directly address the question of whether ViCo oral proceedings are now of such a high quality that they can be considered equivalent to in-person proceedings (IPKat). On the contrary, the latest survey highlighted that there are still significant minority of users who have found ViCo proceedings “poor” or “very poor” (IPKat). The EPO therefore finds itself in a legal quandary, whereby one of the most legal controversial issues of recent years is decided based on a reasoning that has not yet been supported by facts on either side. In this context, it may only take one Board of Appeal to disagree with T 1158/20 for there to be another referral to the Enlarged Board of Appeal on the issue. 

Further reading

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