Confusion over the application of G 1/21 outside of a general emergency – is a new referral needed?

The use of videoconference (ViCo) in oral proceedings held before the Examining, Opposition and Legal Divisions, and the Receiving Section, is clear – ViCo is the default format.  However, the same level of clarity has not been afforded to oral proceedings before the Boards of Appeal.

In January 2021, the Enlarged Board of Appeal issued the decision of G 1/21 which authorised the mandatory use of ViCo in an emergency.  However, following conflicting rulings by the Boards of Appeal since that landmark decision, there is confusion over the use of ViCo for oral proceedings before the Boards outside of a general emergency.  This has led to the question: is a new referral needed to clarify the application of G 1/21 outside of a general emergency?

G 1/21 – July 2021

The case dealt with the following question:

“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 decision confirmed that ViCo was compatible with the EPC and that it could be used in an emergency without the consent of the parties, i.e. parties would effectively be obliged to attend oral proceedings by ViCo, or not at all.  However, the decision also highlighted that in-person proceedings represented the “Gold-Standard” and should be the default position in the absence of an emergency, and thus it was widely expected that oral proceedings before the Boards of Appeal would revert to an in-person format post-pandemic.


Statement by the President of the Boards of Appeal – January 2023

On 25 January 2023, the EPO decided that for the purposes of oral proceedings before the Boards of Appeal, the pandemic was officially over (and the World Health Organisation has since declared that Covid-19 is no longer a public health emergency of international concern).  Since G 1/21 related to the legality of ViCo oral proceedings during an emergency, and the emergency was now deemed over, it was necessary to give some direction on the state of play moving forwards.  However, rather than provide a clear ruling, the President’s statement merely suggested that each Board has the discretion to decide on the format.  Whilst oral proceedings via ViCo would still be available, it was ultimately up to the Board which format would be used.


Conflicting Decisions – May 2023

Following the President’s statement, it was somewhat inevitable that conflicting approaches would be adopted by different Boards, and so it has proved.  This is exemplified by two recent T decisions published in May 2023, namely T 0618/21 and T 2432/19.

In T 0618/21, the Board decided to use ViCo as the format for oral proceedings despite both parties requesting an in-person hearing.  Key points in the decision (translated from German) include:

“Article 15a RPBA 2020 gives the Chamber discretion when deciding to hold the oral hearing ex officio, possibly also against the will of the parties, as a video conference. The key criterion is expediency.”

 “Due to the technical developments that have occurred in the meantime and the greater experience of all those involved, video conferences can in most cases now be regarded as an almost equivalent alternative to face-to-face negotiations.”

The decision thus justifies the use of ViCo on the basis that, in the Boards opinion, there is technically very little difference between holding oral proceedings in-person or via ViCo.  A similar view was held by other Boards, for example in T 1158/20.

However, the latest decision, T 2432/19, offers a different view.  In this case, the patentee requested that the oral proceedings be held via ViCo.  However, despite the opponent not objecting to the patentee’s request, Board 3.2.06 summoned the parties to in-person oral proceedings.  The catchwords of the decision explicitly disagree with T 0618/21 (emphasis added):

  1. Although the order of G 1/21 refers to an emergency situation, it follows from the ratio decidendi of this decision that in-person oral proceedings can only be denied under very limited conditions, even in a situation of general emergency such as a pandemic.

  2. Due to the fact that videoconferences, at least with current technology, can only provide a suboptimal form of communication, parties have a right to the optimum format for oral proceedings, i.e. in-person oral proceedings, that can only be denied under very limited conditions.

  3. Further, e contrario it also follows from the reasons underlying the Enlarged Board’s decision, that parties cannot force Boards to conduct videoconferences instead of in-person oral proceedings.”

T 2432/19 thus follows G 1/21 in ruling that in-person oral proceedings remain the “Gold-Standard” format.


Dehns Insights

In respect of T 2432/19, it seems that there may be case specific reasons for a Board’s insistence upon an in-person hearing.  At point 1.15 of the reasons the Board make the following comments:

“…experience of appeal cases in the technical field of the case in question has shown that a party wishing to explain functional effects of structural features can often do this more easily by use of the flip chart, gradually building up features whilst explaining them in a dynamic situation of use, and of course allowing the same sketches to be used by the opposing party(ies).

It goes without saying that should an advocate regard some aspect of their case as best presented in-person (for whatever reason), then they should put those reasons to the respective Board at the earliest opportunity.  Indeed, Dehns attorney Alex Gittins thought that the “complex geometric considerations” of a recent case warranted an in-person discussion.  The Board in that case held the oral proceedings in-person, despite a request from the respondent for ViCo.

In general, our experience is that ViCo is a suitable format for many oral proceedings before the Boards, who are happy to consider such requests and, more often than not, grant them.

When considering such requests, a party should cite all relevant factors.  The length of the reasoning in case T 2432/19 (and others) shows that this is a serious consideration that needs all factors to be weighed against each other.

It is advisable in our view to include as many case-specific comments as possible.  Factors typically mentioned include the issues to be discussed not being particularly complex, the parties/documents being limited in number, and no translation being required.  In view of T2432/19, it would seem worth including more specific points on the arguments themselves (do they need complex illustrations, for example).  Parties also often request ViCo citing various other factors that are not case-specific.  For example, the benefits of avoiding unnecessary travel, which is in line with the UN sustainable development goals as referred to by the EPO.


Concluding Thoughts

Given the various differing views, it only seems a matter of time before a referral to the Enlarged Board of Appeal will be needed to clarify the use of oral proceedings by ViCo before the Boards of Appeal outside of a general emergency.

Whilst some would argue that in-person hearings are important to ensure the perception of true justice (it is noted that national court proceedings in patent disputes have reverted to in-person), considering the continued advances in technology and the EPO’s stated goal of reaching the United Nations Sustainable Development Goals, in particular Goal 13 – Climate Action, by 2030, one might expect that any decision would err on the side of favouring holding oral proceedings via ViCo.  Indeed, it is noted that CIPA have issued guidance which supports the idea that ViCo should be widely adopted.

Dehns broadly agrees, in that we regard ViCo as normally acceptable.  Based on the current level of ViCo technology, it seems there will always be particular cases where arguments are better presented in-person.  In the future we hope that ViCo becomes equally effective.  At the very least, this would allow more participation in oral proceedings at the EPO from attorneys across Europe, and reduce the need for business travel.