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OP by ViCo in first instance – The latest communiqué of the EPO

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A publication on the home page of the EPO of 15.06.2022 deals with op by ViCo

https://www.epo.org/news-events/news/2022/20220615.html

It was made clear that “oral proceedings before examining divisions will as a rule continue to be held by VICO“.

In this communication it has been added that “if there are serious reasons against holding them by VICO. In such cases, the oral proceedings are postponed until after 31 December 2022”.

Furthermore “Contrary to oral proceedings in opposition, the conduct of oral proceedings in examination by VICO is not subject of a pilot project“.

As far as OP in opposition are concerned, it is not a mere guess that the “pilot” will be made permanent. It is to be expected that OP by ViCo before OD will become mandatory as of 01.01.2023 as they are before ED.

Claiming that in “G 1/21, the Enlarged Board of Appeal has confirmed that oral proceedings in the form of a VICO are oral proceedings within the meaning of Article 116 EPC and comply with the principles of fairness of proceedings (Article 6(1) of the European Convention on Human Rights) and the right to be heard under Article 113(1) EPC”, is either a very biased view or at best a “dynamic interpretation” of the reasons brought forward by the EBA in G 1/21!

According to the EBA, the “gold standard” for OP is in-person OP, see Point 45 of the reasons in G 1/21.

Art 113 and Art 6 ECHR are mentioned in this Point 45 of the reasons in G 1/21, but only with respect to in-person OP. It is difficult to see in this point a link between Art 113 and Art 6 ECHR and OP by ViCo. To use a standard formulation in European practice, it is possible to see “added-matter” in this statement of the EPO as it is not directly and unambiguously derivable from the reasons of G1/21.

The EBA has made clear that it is only “during a general emergency impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises”, that holding OP by ViCo can be exceptionally accepted.

As Art 116 (as well as R 115-116) makes no difference between OP before the first instance or before the boards of appeal, it is difficult to understand that OP are of such different nature whether they are held be before the first instance or before the boards of appeal.

If the gold standard, in-person OP, is valid before the boards, it is difficult to conclude that it does not apply to OP in first instance. If there is any, the logic of this statement is not easy to grasp.

The choice of the form of the OP, in-person, by ViCo or in mixed mode should be left to the parties and not decided by the EPO for whatever reasons.

In G 1/21 the EBA considered that OP by ViCo are “a suitable, even if not equivalent, alternative”, but only during an emergency situation. This should not be forgotten.

Although it has not been subject to a referral, there remains a fundamental problem in case of OP by ViCo.

As foreseen in Art 15a(3) RPBA20, the chair or any member of the board may participate in the OP by videoconference.

The same apparently applies to members of examining and opposition divisions when holding OP by ViCo.

Both in first instance and in appeal, in case of OP by ViCo, the deciding body does thus not need to sit together when it comes to determine the fate of an application, patent or opposition.

One can look and interpret the EPC in every possible way, with or without Art 31/32 VCLT, but it is manifest that there is no legal basis for the deciding body not sitting together when taking a decision.

Art 125 seems also of very little use as in some contracting states, even if the parties are connected by ViCo, the deciding body has to sit together, e.g. Germany, Art 128a ZPO. This seems a normal and reasonable practice. If the EPC is amended, cf. Art 172 and Art 164(2), this would be possible, but not with the EPC as it stands.

Last but not least, when hearing witnesses by ViCo there is no guarantee whatsoever that the witness is not watching the OP as public or sitting next to a member of the public prior to its hearing. During in-person OP, a witness is identified at the beginning of the OP, but then has to leave the room so that it cannot be influenced by the OP before giving its testimony.

If a witness is residing in a contracting state, and in case of hearing by ViCo he should deliver its statement in the premises of a national court or the like. This is already foreseen in R 120. This would guarantee that the witness cannot be influenced by the way the OP progresses as in case of an in-person OP, as it is the case for in-person OP.

Simply hoping of the professionalism of all those involved might be a nice thought, but is not a guarantee. This is however the reply I received from a member of the EPO during a session about OP by ViCo.

Another possibility would be to only allow hearing of witnesses during in-person OP, if the witness has not requested prealably to be heard before a national court pursuant R 120(1).

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