EP 3 306 160 B1 relates to adhesive transfer hoses, and more specifically, to adhesive transfer hoses having a barrier layer preventing or minimizing the ingress of air into a conduit of the hose.
Brief outline of the case
The OD revoked the patent as the claims in the patent as granted, and in all admitted requests, were not in compliance with Art 123(2).
Up to AR5c, the board confirmed the non-compliance with Art 123(2). The board held that AR5c was compliant not only with Art 123(2) but also with Art 84, taking into account G 3/14. The board remitted the case to the OD.
The decision is interesting in that it deals with the format of OP.
The proprietor’s point of view on the OP format
The proprietor would have prefered OP in person, but would not have objected to an OP in mixed-mode format.
The opponents’ point of view on the OP format
For all three opponents, the OP should be conducted by ViCo. This would save the parties and their professional representatives significant travel time and high travel and accommodation costs.
The subject-matter of the proceedings was also suitable for OP by ViCo, as demonstrated by the OP before the OD, which were already held as a ViCo.
In the age of digital files, accessing case documents during in-person OP was, in view of the relatively small size of the laptops that must be brought along, significantly more difficult and generally slower to manage than when using large-format screens, such as those usually available at the representative’s office.
This applied all the more in the present case, given the considerable number of documents on file.
The board’s decision on the OP format
The board first noted that, Art 15a(1) RPBA gives the boards the discretion on the OP format.
The board then noted that, unlike in appeal proceedings, OP before EDs and ODs are, as a rule, held by ViCo. Only in exceptional circumstances where there are serious reasons against holding the OP by ViCo, they may be held on the EPO premises, either at a party’s request or at the instigation of the division.
The fact that, in the present case, OP before the OD were held in the form of a ViCo does, therefore, not necessarily demonstrate that the ViCo format would have been appropriate to discuss the subject-matter of the present case before the board.
Any purported advantage arising from screen size in a ViCo setting is not an objective characteristic of that format. It merely reflects a subjective preference and overlooks the diversity of established practices adopted by parties in both ViCo and in-person OP. Some representatives primarily rely on electronic documents and multiple-screen setups, whereas others continue to work extensively with paper files.
On balance, the board took all circumstances and arguments into account in the exercise of its discretion. However, in view of the complexity of the appeal case involving four parties and a large number of ARs as well as a request for simultaneous interpretation, the board concluded that in-person OP was the appropriate format.
Comments
The board deserves commendation for adhering to the “gold standard” in matters of OP.
If the OP format by ViCo was not appropriate for the OP in appeal, it is difficult to understand why it was at all appropriate for the OP before the OD. The different practices mentioned by the board in matter of file preparation, apply mutatis mutandis to OP before ODs.
Insofar as Art 116 and R 116 do not differentiate between OP before first instance divisions and board of appeal, I still fail to see a legally valid reason to impose OP by ViCo in first instance. It was a political reason which led to this differentiation and led consequently to the amendment of R 117.
G 1/21 was a political decision in that it artificially distinguished between OP before first instance departments and boards of appeal, although the referring board had not limited its referral to OP before the boards.
Whilst during the Covid pandemic, OP by ViCo were fully acceptable, with the end of the pandemic, the gold standard of in-person OP should have been reinstated.
OP by ViCo are problematic for a series of reasons:
Members of deciding bodies at the EPO are not sitting together
I do not known that in any EPC member state a deciding body, be it administrative or judicial, does not sit together when it has to decide upon a case.
Examiners are mainly in home office and can be sitting at great distance from each other. Communication by electronic means is certainly possible, but does not enhance mutual understanding.
The same applies for board members. I also know for a fact that, even if all board members are in the EPO premises, they stay in their room. Art 15a(1) RPBA should have been revised after G 1/21. Discretion of the board in matters of OP format, should not mean convenience of the board.
It would be interesting to see what are the practices in this matters of administrative and judicial bodies in the EPC member states, cf. Art 125.
Hearing of witnesses by ViCo are problematic
Hearing of witnesses by ViCo does by no means guarantee the witness is not listening into the OP before he is heard during the OP. If the witness is heard by ViCo it should only be heard if he is sitting in room which can be watched by third parties, like for example in a court room in his place of residence. Sitting on the premises of a party is a no go.
In T 1283/22, commented in the present blog, as well as in T 2250/21, also commented in the present blog, boards of appeal have refused to bring this important question to the EBA under Art 112.
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