A guide to EPO oral proceedings by video conference

With video conference hearings here to stay, Howard Read of Appleyard Lees sets out what participants need to know when appearing at the European Patent Office.

In oppositions and appeals at the European Patent Office (EPO), oral proceedings may be the final opportunity for a party to present submissions before an adverse decision is announced.

Traditionally, oral proceedings are held on the premises of the EPO, in Munich, The Hague and Berlin. However, since 1998, oral proceedings before the examining division have alternatively been held, typically upon request by a party, by video conference. Previously held using dedicated IP technology, video conferences are now held via Skype for Business or Zoom.

Video conferencing and access to justice

The devastating COVID-19 pandemic transformed adoption of holding oral proceedings by video conference, to sustain access to justice for parties. In 2019, about 900 oral proceedings before the examining divisions were held by video conference, increasing to more than 2,300 in 2020. Additionally, oral proceedings are now routinely held before the opposition divisions and the Boards of Appeal.

In 2020, more than 300 oral proceedings before the opposition divisions were held by video conference and the EPO plans to achieve the same number monthly in 2021. Between May and October 2020, 120 oral proceedings before the Boards of Appeal were held by video conference.

Similarities and differences

The implementing of regulations and conduct of oral proceedings differ between the examining divisions, the opposition divisions and the Boards of Appeal. The following table can be used as a reference guide to how each of these conduct their oral proceedings:

Adverse decisions

Here are some examples of an adverse decision: refusal of a patent application is an adverse decision for the applicant while revocation is an adverse decision for the proprietor, respectively. Conversely, maintenance of a patent may be an adverse decision for an opponent while maintenance of a patent in amended form maybe an adverse decision for both the proprietor and the opponent. Such adverse decisions may have substantial economic consequences, thereby motivating the respective parties to achieve desired decisions.

Right to be heard

Oral proceedings are fundamental to the right to be heard under article 113 EPC: the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.

“The implementing of regulations and conduct of oral proceedings differ between the examining divisions.”

This is interpreted as not merely the right of a party to present comments but also as the right for the party to have their comments taken into consideration. The right to oral proceedings is codified by article 116 EPC: oral proceedings may take place at the insistence of the EPO, if it considers it expedient, or at the request of any party to the proceedings.

Useful links on hearings at the EPO

EPO

Coronavirus (COVID-19)—continually updated information

Examining divisions

Decision of the president of the EPO dated December 17, 2020, concerning oral proceedings by video conference before examining divisions

Opposition divisions

Information about access to oral proceedings by video conference before opposition divisions

Examining divisions and opposition divisions

Notice from the European Patent Office dated December 17, 2020, concerning the taking of evidence by video conference by examining and opposition divisions

Boards of Appeal

Oral proceedings before the Boards of Appeal—continuation of the measures adopted due to the coronavirus (COVID-19) pandemic and revised practice on oral proceedings by VICO

Filing of documents

Decision of the president of the European Patent Office dated May 13, 2020, concerning the filing of documents during telephone consultations and during interviews and oral proceedings held by video conference

Taking of evidence

Instructions for witnesses giving evidence by video conference 

Howard Read is a partner at Appleyard Lees. He can be contacted at: Howard.read@appleyardlees.com.

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