Stefanie Glassford

The legality of holding oral proceedings without the consent of all parties has been formally questioned with an interlocutory decision from an Appeal Board dated 12 March 2021 (Appeal number T1807/15-3.5.02) referring the following question to the Enlarged Board of Appeal:

“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 the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference?”

In the interim, a different Board of Appeal have published a new decision ruling that oral proceedings by video conference are allowable, even where one party objects.

The written decision for Appeal number T2320/16, published 24 March 2021, relates to a decision taken by a Board of Appeal during oral proceedings dated 4 February 2021. Accordingly, this decision predates the above referral to the Enlarged Board of Appeal. Consequently, the referral has had no impact on the outcome of this decision and is not considered in detail in the published written decision.

In the case of Appeal number T2320/16, the respondent had requested the postponement of oral proceedings scheduled to take place in person because of ongoing Covid-19 pandemic travel restrictions and because they did not consider holding oral proceedings by video conference to be appropriate. The appellant requested that the oral proceedings should go ahead as scheduled but instead using video conferencing. Oral proceedings via video conference took place using “Zoom” on 4 February 2021.

During the proceedings, the respondent outlined that it did not consider the oral proceedings by video conference to constitute oral proceedings within the meaning of Article 116(1) EPC because the parties and the board were not physically present at the proper location. Similar points were raised during the later T1807/15-3.5.02 which resulted in the referral to the Enlarged Board of Appeal. In both cases, the boards agreed that oral proceedings by video conference are consistent with the right to oral proceedings pursuant to Article 116 EPC.

However, on the issue of consent of the parties, in the decision of T2320/16 the board have taken a different approach.

In T2320/16, the respondent argued that even if it were accepted that oral proceeding by video conference were consistent with the EPC, by enforcing the proceedings to take place on the original date by video conference, the board had not exercised its discretion in a reasonable manner. The respondent outlined that since there was no urgent need for the case to beard as soon as possible there was no need to enforce oral proceeding by video conference against the request of the respondent.

The board decided that following the interpretation of Article 116 EPC, the discretion to hold oral proceedings by video conference lies with the board. In particular, the board referred to the communication of the registry dated 15 January 2021, sent on behalf of the board, which states that during the ongoing pandemic, it was incumbent on the board to maintain access to justice for all parties concerned and that this applied in view of the resulting delay if proceedings were to be postponed. As such, the board concluded that delaying the proceedings in this case would be both unnecessary and unacceptable, especially since oral proceedings by video conference are consistent with the right to oral proceedings. Furthermore, the board did not agree that the case was non-urgent, siding with the appellant on the need for timely legal clarity.

The publication of this decision highlights the legal uncertainly around oral proceedings by video conference. Whilst the conclusions reached in this decision do not necessarily have an impact on the outcome of the pending referral, the Enlarged Board of Appeal could take the reasoning applied in this case into account when forming its own decision.

Furthermore, the president of the EPO has also published a notice dated 24 March 2021 which states that oral proceedings before the examining and opposition divisions will continue to be held by videoconference without requiring the agreement of the parties. This notice applies with immediate effect until the Enlarged Board of Appeal announces its decision. According to the notice, this is to guarantee access of justice and ensure the functioning of the EPO. As such, despite the pending referral, the EPO will continue to schedule examination and opposition oral proceedings by video conference without requiring the agreement of the parties. It is notable that the president’s notice does not refer to appeal proceedings.

While the referral is still pending before the Enlarged Board of Appeal, it is still possible to request a stay in proceedings on cases where summons to oral proceedings by video conference have been issued pending the outcome, and where the party considers the use of video conference to violate their right to be heard. However, in light of the president’s notice, the grant of a stay in proceedings before the examination and opposition division may be less likely.

Stefanie Glassford is a Chartered (UK) and European Patent Attorney for Marks & Clerk