G1/21 is a recently announced referral to the Enlarged Board of Appeal (EBoA) of the European Patent Office (EPO). The referral relates to whether the consent of the parties is required to hold Oral Proceedings via video conference. This referral was made in March 2021 and has been ‘fast-tracked’ by the EBoA, with Oral Proceedings being appointed for May 2021.

Background

EPO oral proceedings are usually the conclusion of a stage of the proceedings relating to a patent or application before the EPO, and are the only chance for an applicant, proprietor or opponent of a European patent or patent application to make submissions to the relevant division of the EPO in person, as opposed to via written submissions.

Oral proceedings prior to the COVID-19 pandemic were usually held in person, at the EPO sites in Munich, The Hague, or Berlin.

In a Decision of the President of the EPO from 1 April 2020, the default position for oral proceedings before the Examining Division was that they would be held via video conference, with oral proceedings before the Opposition Division and Boards of Appeal being held in person, unless all parties agreed to hold the proceedings via video conference.

However, the EPO has moved to make oral proceedings via video conference the default option post-pandemic, and introduced a new rule of procedure of the Boards of Appeal (RPBA). The new Article 15a RPBA permits a Board of Appeal to hold oral proceedings by video conference whenever “the Board considers it appropriate to do so”.

The referral was made by the Technical Board of Appeal 3.5.02, dealing with an appeal against a decision from the Opposition Division. In-person oral proceedings had been appointed for 8th February 2021 (having been postponed from June 2020 in light of the pandemic).

On 8^th January 2021, the respondent (the proprietor of the previously opposed patent) submitted a request to postpone the oral proceedings, in view of the new travel imposed by the UK government due to the pandemic. The respondent stated, owing to the need for simultaneous translation into the appellant’s preferred language, that video conference was not suitable for these proceedings.

Nevertheless, on 20^th January 2021, the parties were informed that the oral proceedings would take place on 8^th February via video conference. As part of their communication regarding the details of the video conferencing system, the appellant also stated that video conferencing was unsuitable for this case. As this was not a submission to the Board itself, the Board were not informed of the appellant’s view.

The oral proceedings were held via video conference as scheduled on 8 February 2021, despite neither party consenting to oral proceedings via video conference. In addition to the requests of the appellant as usually submitted in oral proceedings, an auxiliary request was made that a referral to the EBoA was made, in respect of oral proceedings being held via video conference without the consent of the parties involved.

The Referral

The Technical Board agreed that a referral should be made to the EBoA, as the question raised is a point of law of fundamental importance, and thus, in the view of the Technical Board, met the threshold for a referral to the Enlarged Board under Article 112(1)(a) EPC.

The specific question given in the referral is worded 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 Enlarged Board have already appointed oral proceedings in this referral which will be held via video conference on 28 May 2021. Given that holding oral proceedings via video conference is the heart of the referral itself, it may be seen that the Enlarged Board, by appointing video conference oral proceedings for this referral, are ‘tipping their hand’, and that they intend to find no issue with holding oral proceedings via video conference without the consent of the parties.

There has been a noticeably quicker turnaround for this referral, presumably to the implications on the sheer number of scheduled oral proceedings which could be affected by this decision.

There is also a further complication, as the impartiality of the EBoA handling the referral has been questioned, as it includes Mr Carl Josefsson. It was Mr Josefsson who first proposed the new Article 15a RPBA, and he would now be in the position of having to decide on the lawfulness of the Article he had himself proposed.

What this means

This decision could have huge ramifications for oral proceedings at the EPO.

If the question in the referral is answered such that the consent of parties is not required for oral proceedings via video conference, it may be the case that a greater proportion of oral proceedings are held via video conference, and also allows for the possibility that video conference becomes the default method for oral proceedings in the future.

If the EBoA decides that consent is required for video conferencing, then it may result in more in person hearings, as previous parties to proceedings may now choose to have the hearing in person as opposed to the current status quo, where some oral proceedings are held via video conference by default.

If the decision is made that consent is required, it raises the question of whether this has an effect on previously held oral proceedings via video conference, if one or more parties to those proceedings retrospectively withdraws consent (on the grounds that they were not aware that they could not consent).

As always, we shall keep you informed of any further developments in this referral, and if they are any decisions or new referrals published by the Enlarged Board. If you have any questions about this decision or would like general advice on practice before the EPO, please get in touch to speak to one of our attorneys.