http://ipkitten.blogspot.com/2021/03/board-of-appeal-in-t180715-continues.html
The Enlarged Board of Appeal (EBA) referral from T1807/15 concerns the legality of oral proceedings conducted via Video Conferencing (ViCo) without the consent of all parties (IPKat). There was some doubt as to whether the referral would actually go ahead, given that the party requesting the referral had already withdrawn their request. The Board of Appeal interlocutory decision in T1807/15 reveals that the Board of Appeal (3.05.02) has determined to continue with the referral. All eyes will now be on the EBA, and on whether they will accept the referral as admissible. In the meantime, until the issue of the legality of ViCo oral proceedings is clarified, parties anxiously waiting for their case to be heard by the Boards of Appeal could face further delays.
ViCo oral proceedings: Background
In the early stages of the coronavirus pandemic, the EPO cancelled all Board of Appeal hearings in view of the risk and difficulty of parties attending the EPO in-person. As it became apparent that the pandemic was unlikely to have a swift resolution, the EPO initiated, for the first time, Board of Appeal oral proceedings via video-conference (ViCo).
| Attending oral proceedings |
However, far from presenting ViCo oral proceedings as an interim measure, the EPO has attempted to pave the way for ViCo hearings as the new standard, even once the pandemic is over. Towards this purpose, the EPO introduced new Article 15a of the Rule of Procedure of the Boards of Appeal (RPBA). Article 15a permits a Board of Appeal to hold oral proceedings by ViCo whenever “the Board considers it appropriate to do so”, i.e. even without consent of the parties (IPKat: The inexorable rise of EPO oral proceedings by video conference).
The EPO’s apparent attempt to steamroller the new provision through (with only a very short consultation period) raised some protest. It was therefore perhaps not a surprise when, last month, news broke of a referral to the EBA on the legality of mandatory oral proceedings by ViCo (IPKat). The referral stems from appeal T1807/15 of the opposition decision to maintain EP1609239 in amended form.
How did the referral come about?
Patentees generally have more to gain than Opponents from delaying a final decision on the substantive issues of a case before the EPO. It might therefore have been expected that a request for a referral on the issue of ViCo would come from a Patentee as opposed to an Opponent. Surprisingly, however, the party requesting the referral in this case was the Opponent. Although, admittedly, both the Opponent and Patentee had previously indicated that they did not think the case suitable for ViCo oral proceedings.
The Opponent requested the referral at the hearing on the grounds that mandatory ViCo oral proceedings violated their right to be heard. The Opponent also raised the general point of whether oral proceedings by ViCo was compatible with Article 116(1) EPC. The Opponent argued that “[t]he concept underlying Article 116(1) EPC was that the parties involved have the right to be physically present in a courtroom so that the Board members could get an immediate personal impression of the pleading parties”. Furthermore, it was argued that changes to the RPBA could not be used to amend the EPC (i.e. Article 116(1) EPC), given that revision to the EPC should be via a Diplomatic Conference (in arguments very reminiscent of G 3/19 (Pepper), IPKat)
The Referral
For whatever reason, the Opponent’s Representative subsequently withdrew their request for a referral to the EBA on the issue of ViCO oral proceeding “after speaking with their client”. This left the IP community in suspense on whether the Board of Appeal would decide to continue with the referral.
With the release of the interlocutory decision in T1807/15, we now have confirmation that the Board of Appeal does intend to pursue the referral. The Board’s grounds for referral presented in the decision were that “it appears self-evident that the point of law addressed in the question below is of fundamental importance for an indefinite number of cases”. The Board of Appeal dealt with the withdrawal of the referral noting that a referral to the EBA does not necessarily depend on a party’s request for that referral. Given that the Opponent had still not given their consent for oral proceedings by ViCo, the Board argued that the point of law remained as to whether oral proceedings conducted by ViCo without all parties’ consent, were legal.
The Board of Appeal was also keen to stress in their decision that they did not wish to refer the question of whether ViCo oral proceedings per se were legal (i.e. including those conducted with the consent of the parties). The Board of Appeal noted that any party may choose to not even attend oral proceedings, which will then proceed in their absence. Given that ViCo oral proceedings could not be considered an option worse than non-attendance at a hearing, ViCo oral proceedings must be a legal option to give a party. The Board of Appeal thus restricted their referral to the question of whether ViCo oral proceedings, without the consent of all parties, are compatible with the EPC. The referred question is as follows:
“Is the conduct of oral proceedings in the form of a videoconference compatible with the right to oral proceedings as enshrined in Article 116(1) EPC if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference?”
The Board of Appeal also noted that it had already received third party observations (TPOs) regarding the appeal. The Board of Appeal dismissed these submissions on the grounds that they do not consider TPOs that do not relate to the question of patentability. We can however probably expect many Amicus Curiae submissions on the referral.
So will the EBA accept the referral? Currently, all bets are off. However, even if the EBA side steps the issue in the particular instance of T1807/15, it seems highly likely that the question would be referred in another case, either because of genuine concerns with the ViCo format or as a strategy to delay a final decision on a patent. Finally, it seems to this Kat that the EPO has an interest in settling this matter as soon as possible, if they are to avoid the backlog of Board of Appeal cases growing even further. We can therefore predict a relatively speedy decision from the EBA.
In the meantime, stay tuned to IPKat for further developments!
Acknowledgements: Thanks to Martin Wilming for providing the decision.
Content reproduced from The IPKat as permitted under the Creative Commons Licence (UK).