Chairman and Enlarged Board criticised for lack of impartiality in ViCo oral proceedings referral (G1/21)

The EPO’s swift move to mandatory ViCo oral proceedings has received vociferous criticism from some quarters. It was therefore unsurprising when news broke of a new referral to the EBA on the legality of the new provision. The referral stems from appeal T1807/15 of the opposition decision to maintain EP1609239 in amended form. 

The party requesting the referral withdrew their request “after speaking with their client”. Undaunted, the Board of Appeal (3.05.02) continued with the referral (IPKat). Less than a week after the Board of Appeal decision, the EBA set a date for oral proceedings to consider the referral. Oral proceedings will take place by Zoom on 28 May 2021. Third parties have been invited to submit amicus curiae by 28 April 2021. 

Stay of proceedings?

Understandably, there was some concern from parties to long-pending proceedings before the Board of Appeal that there would be further delays to proceedings in view of the referral. After-all, could the Boards be expected to continue with hearings that may subsequently be found unlawful? The EPO issued a notice on 24 March 2021 that oral proceedings before the examining and opposition divisions would continue by ViCo, without requiring the agreement of the parties. However, to this Kat’s knowledge, no statement has been issued with respect to Board of Appeal ViCo proceedings conducted without the consent of the parties. 

EBA criticised for lack of Impartiality of the Enlarged Board of Appeal ?

Criticism has already been levelled at the EPO for the composition of the Enlarged Board handling the referral (see IPKat comments here). Anonymous third party observations (TPOs) submitted a few days after the announcement of the composition of the Board for G1/21, questioned the impartiality of the board, and the inclusion of Mr Carl Josefsson. The TPOs cited Article 24 EPC, which states that members of the EBA may not take part in a case “in which they have any personal interest”. The TPO quotes the statements of Mr Carl Josefsson supporting the adoption of new Article 15a RPBA. In the submissions, the anonymous third party observer argued that Mr Josefsson proposed new Article 15a and “is now, in his function as the chairman of the Enlarged Board of Appeal, to decide on the exact lawfulness of exactly this Article, i.e. the Article he himself proposed to be introduced…Mr C. Josefsson would have a personal interest in that his “own” new Article is not overturned by the Enlarged Board of Appeal in order to avoid the disgrace of having proposed a new Article that is unlawful”. 

Importantly, the Chairman of the Board has the role of determining the composition of the EBA for a particular referral (Article 2(2) Rules of Procedure of the Enlarged Board of Appeal, RPEBA). This raises the interesting questions of whether, if Mr Josefsson were to excuse himself from the proceedings, the composition of the Board could be impartially determined. 

The TPOs further observed that the decision on the EBA to hold the hearing on the referral itself by ViCo seems to pre-empt the decision on the referral in favour of ViCo oral proceedings “since it is assumed that the summons to videoconference were issued with the consent of all members of the Board in the present composition“. However, notably, Article 15a is a Rule of Procedure of the Boards of Appeal, not the Enlarged Boards of Appeal. 

The European Patent Institute (epi) has also written to Mr Josefsson, noting that, given the controversy surrounding new Article 15a EPBA “it appears to epi that it is necessary for the Enlarged Board not only to be unbiased but also to appear unbiased. It is therefore suggested that the panel of the [EBA] should not include anyone who was involved in the drafting and approval of the proposed Article 15a“. 

This Kat looks forward to reading the amicus curiae on the referral, which unlike the submission to the user consultation on Article 15a, will be available on the public file. If the furore surrounding the introduction of Article 15a is anything to go by, we can expect some strongly worded submissions. It will also be interesting to see if there are any observations from supporters of ViCo oral proceedings and Article 15a RPBA. The Chartered Institute of Patent Attorneys (CIPA) has so-far been an enthusiastic supporter of the EPO’s digital strategy and ViCo oral proceedings. The latest issue of the CIPA journal (CIPA membership login required) reported that of the large number of submission to the user consultation on Article 15a RPBA, CIPA’s support for new Article 15a RPBA had been contrary to the majority view, but that there was agreement “that mixed video and in-person oral proceedings are not a good idea”.  

Commendable urgency or unjustified haste?

Given the legal uncertainty generated by the referral, the EPO could be commended for attempting to deal with the matter swiftly. The EBA’s hasty scheduling of oral proceedings is on the edge of the 2 months’ notice legally required (Rule 115 EPC). 

Although strictly legal, the EPO’s swift summons to oral proceedings has been criticised for not giving parties sufficient time to prepare their submissions and observations. Whilst it is worth noting that a notice period of even less than two months is not without precedent, when the urgency of a case requires it (J14/91), such decisions have been taken only when the facts of the case were deemed “straightforward” (J14/91, r.2.5). Whilst the case in G1/21 may be considered urgent, is it straightforward? 

The IPKat will keep you updated on further developments. 

Further reading

18 Jan 2021: The inexorable rise of EPO oral proceedings by video conference

9 Feb 2021: The legality of Board of Appeal oral proceedings by video conference has been referred to the EBA

16 March 2021: Board of Appeal in T1807/15 continues with ViCo oral proceedings referral