Hearings ‘hiatus’ as EPO commits to video review

The European Patent Office (EPO) is pressing ahead with a review into the legality of oral proceedings via video conference without the agreement of all parties, creating concerns over further delays to pending cases.

Last month, the legality question was referred to the EPO’s Enlarged Board of Appeal (EBA), which decides on points of law of fundamental importance raised by a board of appeal or by the EPO president.

A challenge to the EPO’s position arose in an EPO board of appeal patent dispute hearing on February 8. The opponent, Rohde & Schwarz represented by German firm Mitscherlich Partmb, put forward the question of “whether an oral hearing under article 116 European Patent Commission can be replaced by a videoconference if the parties do not agree to it”.

According to the IPKat, there was a question over whether the referral would actually go ahead, after the party requesting the referral withdrew their request on March 8. However, a board of appeal interlocutory decision in T1807/15 dated March 12 confirmed that it had determined to continue with the referral.

Further delays?

Steve Howe, partner at patent law firm Reddie & Grose’s office in London—who represented the patentee at the EPO board of appeal where the referral was made—predicted that these developments could result in a  “hiatus” in board of appeal decisions.

“In the short term, there is potential for people to try and put off hearings until this question is decided. That is where the real difficulty is going to come over the next six months or so,” Howe said.

Speaking to WIPR, the president of the Chartered Institute of Patent Attorneys, Alicia Instone has urged the EPO to swiftly address the legality question to avoid a delay in cases being heard.

“At CIPA we hope that this will be treated urgently for purposes of legal certainty and taking into account the continuing need for access to justice,” she said.

In April 2020, the EPO created a pilot project allowing oral proceedings in opposition cases to be carried out exclusively by videoconference to avoid a growing backlog of cases. Before the pandemic, video hearings were granted only under “exceptional circumstances”.

This ignited debate within the IP sector, especially when the EPO announced in November that videoconference oral proceedings before opposition divisions would become mandatory until September 2021—even without the consent of all affected parties.

In December, the EPO confirmed that the boards of appeal could also adopt the same approach.

The right to be heard

The developments were met with alarm by the European Litigators Association (EPLIT).

“While the option of videoconferencing is welcome, a party should always have the right to attend the oral hearing in person. This also applies if the other party has decided to participate in the hearing by videoconference,” said Leythem Wall, EPLIT’s president and a partner at HGF’s office in The Hague.

According to a survey conducted by EPLIT, 75% of members oppose the possibility of boards of appeal being able to determine, against the will of a party, that oral proceedings should take place in the form of a videoconference. Only 7% believed that the hearings should continue to be mandated, without the consent of all parties.

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