EP 2 678 436 B1 relates to a method for preventing bacterial infection in a rmentation process by using performic acid.
Brief outline of the case
The OD decided maintenance according to AR7. Proprietor and opponent appealed.
During OP before the board, the proprietor withdrew his appeal.
Eventually the patent was revoked.
The case is interesting in view of the discussions on the format of the OP.
Originally the board summoned the parties to OP in person.
After the parties were summoned to OP, the then appellant/proprietor requested that OP be held by ViCo. The opponent then requested that OP be held in person; it moreover requested that questions be referred to the EBA if the board decided to hold OP by ViCo.
The board decided then the change of the venue and that the OP were to be held by ViCo.
The proprietor’s point of view
The proprietor submitted that holding OP by ViCo would facilitate full participation and interaction between the parties’ employees and their representatives, reduce travel costs and contribute towards the UN Sustainable Development Goals, particularly the climate action goal.
The opponent’s point of view
The opponent argued that “the optimum form of OP is the proceedings in person on site“. As the pandemic measures had been discontinued, there was no particular reason to hold OP by ViCo.
According to the opponent, the consideration in decision G 1/21 that, at least at that time, OP by ViCo could not be equated to OP in person was still applicable. Therefore, holding OP by ViCo was a disadvantage for the party which had not consented to it and had instead requested in-person OP.
The opponent did not dispute that Art 15a RPBA provides the boards with discretionary power to decide on holding OP by ViCo, but objected that this provision did not define the criteria for exercising this discretion. This gave rise to different practices and legal uncertainty. Since, according to decision G 1/21, OP in person were the gold standard, there could be doubt as to whether Art 15a RPBA was actually in line with the EPC.
The board’s decision
In its communication under Art 15(1) RPBA, the board noted that the decision on the format of the OP is at the board’s discretion pursuant to Art 15a RPBA. The board provisionally considered it appropriate to hold the OP by ViCo and found the case in hand suitable for being heard by ViCo on account of the number of parties involved, the particular requests at stake and the matter under discussion.
The opponent had not provided any case-related circumstances as to why OP in the case in hand could not be conducted by ViCo, but necessarily required the parties to be heard in person on the EPO premises.
The opponent did not respond to the board’s communication under Art 15(1) RPBA, and hence did not object to the board indicating its intention to grant the proprietor’s request for a ViCo. Therefore, the board changed the venue of the OP to ViCo.
The board held that Art 15a RPBA provides the board with the discretion to decide to hold oral proceedings pursuant to Art 116 by ViCo if the board considers it appropriate to do so, either upon a party’s request or of its own motion. Its scope is general and is not limited to a pandemic situation.
In G 1/21, the EBA expressly acknowledged that OP by ViCo are OP within the meaning of Art 116.
It also considered that, although the limitations at that time that were inherent in the use of video technology could make it suboptimal as a format for OP, either objectively or in the participants’ perception, this was not normally to such a degree that a party’s right to be heard or right to fair proceedings was seriously impaired.
The board agreed with decision G 1/21 that OP in person are the gold standard. For this reason, this board issues summons for oral proceedings in person by default, as was also done in the case in hand.
The board added that, decision G 1/21 did not exclude OP by ViCo a priori, but set certain limitations and restrictions, especially when a party does not give its consent. Some of these limitations were due to the technology available at that time and, in relation to this, the EBA considered whether a ViCo was not suitable in a particular case. In this context, it cannot be denied that since case G 1/21 was decided, some technological improvements have been adopted.
The board did not disregard that, at the same time, decision G 1/21 stated that the choice of format of OP can be made by the party which requested oral proceedings, and not only by the board, as this is more than just an organisational matter; however, this latter consideration does not appear helpful in the case in hand, since both parties requested OP, and therefore both can be said to have an equal interest as regards the format of these proceedings.
Comments
Diverging case law on the form of OP
We have here another example of diverging procedural case law of the boards in matter of the format of OP.
It has to be agreed with the opponent that the different practices between boards do not give the impression that the boards are willing to abide by G 1/21.
Some boards decide OP in person, even if both parties required OP by ViCo. See T 2303/19, commented on this blog, and T 1497/23, also commented on this blog.
A very selective reading of G 1/21 by the present board
The present board has had a very selective reading of G 1/21. It willingly did not mention that in the absence of a general emergency, the gold standard for OP was in person OP. Strange….
It is a very biased view when the board claims that since both parties having requested OP, one by ViCo, the other in person, the board can decide against the will of the party having requested OP in person in view of G 1/21 and in the absence of a general emergency.
It is thus not a surprise that the present board refused to send questions to the EBA. It is to be noted, that in a vast majority of situations, the boards do everything possible in order to avoid referring questions to the EBA. Sometimes with reasons which are bordering on bad faith. This the case here, in view of the very selective reading of the board of G 1/21.
A new condition introduced by some boards
The present board, like those having a similar position, have introduced a condition which is nowhere to be found in G 1/21 and in Art 15a(1) RPBA: why OP in the case at hand could not be conducted by ViCo? What is the legal basis for this requirement? I see none, besises the convenience of the board.
It is hypocritical when the present board claims that the opponent did not react to the board’s communication. To be clear, the opponent knew too well that it made no sense to repeat the request for OP in person.
OP by ViCo are decided for the convenience of the board
The only conclusion to be drawn is that the boards are deciding OP by ViCo for their own convenience, as they do not have to sit together during the OP. In case of a mixed mode OP, not excluded at the EPO, the members of the board have to sit together on the premises of the EPO. Be it in first instance or in appeal, the members of a deciding body should sit together during OP, irrespective of the form in which it is held.
May be looking under Art 125 what is done in the contracting states could give some guidance to the upper management of the EPO and to the president of the BA.
Art 15a(1) RPBA should have been revised after the issuance of G 1/21. It is manifest as to why the boards did not push for it.
furthermore, they are very good at inventing further conditions without any legal basis, or go as far as to say that, in view of technical progress, OP by ViCo have the same quality as OP in person, cf. T 618/21, commented on this blog. This is exactly what the present board didI
I would have thought that a board has, under Art 21 RPBA, a duty to refer new questions when it considers not necessary to follow a key issue of a previous decision or opinion of the EBA. Claiming that the technique has evolved and OP by ViCo are equivalent to OP in person in view of technical improvement, is a question which deserves a new referral.
“Dynamic interpretation” of the EPC and refusal to hold OP
In J 6/22, commented on this blog, in a “dynamic interpretation” of the EPC, the legal board had even the nerve to allege that there is no “absolute” right to OP upon a party’s request, but it is subject to inherent restrictions by the EPC and procedural principles generally recognised in the contracting states of the EPO, cf. Art 125. The chair of the legal board is the inventor of the “dynamic interpretation” of the EPC, cf. G 3/19.
I doubt that the procedural principles generally recognised in the contracting states provide for a deciding body to be dispersed all around the world when deciding a case. May be in exceptional situations like in a pandemic, not in a normal situation.
As similar “dynamic interpretation” of the EPC took place in T 1847/23, also commented in this blog. J 6/22 and T 1847/23 have one legal member in common………
The preseent blog entry is rather long, but dictated by the nature of the topics to be discussed.
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