Those two decisions have taken place on 22.11.2022 (T1158/20) and on 13.12.2022 (T 1624/20), but have only been published recently.
Both cases are interesting in the way they dealt with the requests for OP of the parties.
The patent relates to “a method of controlling mass flow in the form of multi-layer stream of rod-shaped articles, particularly tobacco industry products [actually cigarettes], and a device for controlling the said flow”.
The opposition was rejected and the opponent appealed.
The board set aside the rejection of the opposition as claim 1 as granted was infringing Art 123(2) and decided maintenance in amended form. The opponent had only raised N objections which were not convincing for the board.
The patent relates to an “Extrados structural element made from an aluminium copper lithium alloy”.
The opposition was rejected and the opponent appealed.
The BA confirmed the rejection of the opposition.
Forced OP by ViCo in T 1624/20
In T 1624/20, it was initially planned to hold the OP at the appeal stage in person. Almost two months before the date of the OP, the proprietor/respondent requested that the OP be held by ViCo. One month before the date, the board informed the parties that, in view of the situation of the COVID-19 pandemic at that time, the OP would be conducted by ViCo.
The opponent’s/appellant’s point of view
The opponent/appellant challenged the new format and argued, inter alia
– that the state of emergency relating to COVID-19 had ended and that imposing a video conference in these circumstances was at odds with G 1/21.
– that, in the absence of an official declaration by a government agency, the incidence rates could not prove that the state of emergency persisted, especially as the Christmas market was taking place in Munich
– Art 15a RPBA20 could not be invoked as it was, in this case, in contradiction with G 1/21.
– that there were no longer any restrictions on access to the EPO’s Isar building. A negative test for COVID-19 was no longer required there.
– that a hybrid mode – with the appellant attending in person and the respondent by ViCo – best respected the wishes of each party
– that the opponent had not been invited to comment on the format of the OP before this decision was taken
– that the majority of the OP on 13 December 2022 were scheduled to be held in person.
– that the risk of cancelling the OP also existed for other diseases.
The board’s decision
The board held that Art 15a(1) RPBA20 gives the board the discretion to decide on its own volition to hold OP by ViCo where it considers it appropriate, either at the request of a party or of its own motion.
For the board, in the latter case, a ViCo is not in contradiction with G 1/21.
The board noted that reasons 47 to 49 in G 1/21 justified the rejection of a party’s request for the OP to be held in person.
The opponent/appellant has not presented any reason why a ViCo would not be appropriate in the present case. In the opinion of the board based on the experience of many similar cases, the present case is not excessively complex and the number of parties (only two) is not excessively high. The board therefore concluded that the present case is suitable for a ViCo.
There must also be circumstances peculiar to the case which justify the decision not to hold the OP in person. These circumstances are not limited to travel restrictions. Indeed, as mentioned in paragraph 49 of the grounds of G 1/21, the presence of “other health-related measures aimed at preventing the spread of the disease” is another example of circumstances which jeopardise the possibility for the parties to participate in OP before the BA in person on the premises of the EPO.
The proprietor was as well not in favour of mixed mode OP, i.e. OP where the opponent/appellant would attend in person and the proprietor/respondent remotely. Furthermore, the board considered that, for reasons of prevention, a ViCo was more suitable than a mixed format or a face-to-face format during the pre-Christmas period when the participants in OP were certainly exposed to a high number of contacts leading to a higher risk of contamination.
There were therefore specific circumstances that justified the board’s decision not to hold the OP in person. Thus, the board decided to exercise its discretion to protect the parties and the board by organising the OP in the form of a ViCo, even without the opponent’s consent.
Forced OP by ViCo in T 1158/20
The opponent’s point of view
For the opponent, holding the OP in appeal proceedings by ViCo was not allowable.
In line with G 1/21, parties could only be denied the option of in-person hearings (these representing the gold standard) for good reasons. G 1/21 allowed holding OP by ViCo in the absence of the parties’ consent only during a general emergency, a situation that no longer prevailed due to the absence of travel restrictions, a negligible number of infections and very low incidences.
The opponent was represented by a representative located in Munich such that no long-distance travel was required. The representative of the patent proprietor could find a representative in Munich to act on his behalf.
The same board dealing with this case did not grant in another case (T 996/20) a request for OP by ViCo in the absence of the consent of all parties.
The board’s position
In T 1158/20, the board decided of its own motion to hold the OP by ViCo pursuant to Art 15a(1) RPBA20.
The board took the view that it is not possible to objectively define a threshold for the number of infections (or for any other parameter) below which it would be acceptable to expose the parties or the members of the board to the virus. The board is also not empowered to force a participant to participate in OP in person against their will and contrary to their belief that they would be at risk of being infected during OP or while travelling to and from the board’s premises.
From the expression “if the board considers it appropriate” in Art 15a(1) RPBA20, it is evident that the board has the discretion to decide whether to hold OP by ViCo.
The provision does not explicitly set criteria to be applied when exercising this discretionary power. Nor does this provision require the consent of the parties.
The board considered it appropriate to hold the OP by ViCo.
Before deciding the form of the OP, the board informed the parties that it intended to hold the OP by ViCo in view of the increasing number of COVID-19 infections and because the case appeared suitable for being dealt with in a ViCo.
The proprietor agreed but the opponent disagreed.
Contrary to the opponent’s allegation, the COVID-19 pandemic was ongoing at the date of the OP before the board. On the day of the OP, there were still access restrictions in place for the premises of the boards in Haar (obligation to test prior to entering the premises, wearing face masks within the premises) that could hinder a party or a member of the board from attending oral proceedings in person.
Holding OP by ViCo avoided the risk that a participant of the OP might, on quite short notice before the OP (or even on the very same day), be barred from attending them.
For the board, the absence of travel restrictions is not a clear indication that OP must therefore be held in person. The board still has the discretion to decide on the form of the oral proceedings.
The risk for the parties and the members of the board of being infected, irrespective from whether the probability of an infection was low or near to certainty has to be taken into account.
It is however possible to agree with the board that it cannot be expected of the proprietor’s representative to find a colleague of the same firm located in Munich as a replacement just for the purpose of attending OP in person while the representative located in London was available to participate in OP by ViCo.
The board went however a far as to claim that “Holding OP by ViCo can meanwhile be often considered an equivalent alternative to OP in person because the boards and the parties have gained such extensive experience with videoconferencing and using the tools involved since G 1/21. Holding OP by videoconference is hence no longer that disadvantageous as it was when the decision G 1/21 was issued.
Those decisions show that it has become a necessity to align the wording of Art 15a(1) RPBA20 to the reasons given in G 1/21. Another possibility could be to define how, in the framework of G 1/21, the discretion could be exercised in a reasonable and reliable way for parties.
It has become a lottery whether OP before the boards are held in-person or by ViCo.
In T 1158/20 and in T 1624/20, the boards seem to have added a new criterion to be justified by the party requiring OP by ViCo: the requesting party has to show why an OP by ViCo would not be “appropriate” in the actual case. Whilst the term “appropriate” is to be found in four places in G 1/21, cf. reasons 19, 37, 39 and 43, it is nowhere to be found in reasons 48 and 49 of G 1/21.
In reasons 48, one reads “If in a particular case a ViCo is not suitable, the OP will need to be held in person”. The EBA did not define in general when an OP by ViCo is not suitable. It simply added that “In the case underlying the referral, the Board expressed the view that the reasons brought forward why a ViCo would not be suitable for this particular case were not convincing”.
In reasons 49, the EBA held that “there must also be circumstances specific to the case that justify the decision not to hold the OP in person”. It then added that “These circumstances should relate to limitations and impairments affecting the parties’ ability to attend OP in person at the premises of the EPO”.
G 1/21 established a double condition for OP to be held by ViCo. The parties should be impaired in coming to the premises of the EPO and only then the case should be suitable for holding the OP by ViCo. The EBA never said that the EPO or the boards can have their own medical criteria when deciding to hold OP by ViCo.
In reasons 45 of G 1/21, the EBA held that the “gold standard” for OP before the boards is OP in person and not OP by ViCo. It is only after having established this fact, that the EBA decided under which circumstances OP could be held by ViCo against the wish of the parties.
In both T 1158/20 and in T 1624/20, it is clear that parties were not imparted in coming to the premises of the EPO.
That parties are getting better acquainted with OP by ViCo is not a reason to claim that OP by ViCo are equivalent to OP in person, or in other words to ignore the gold standard established in G 1/21.
It is for parties to be given the choice of the form of the OP.
If all parties agree to OP by ViCo there is no problem with it.
If one party wants a mixed mode OP or if both parties request OP in person, it is not for a deciding body of the EPO to ignore those requests and quash them for reasons of “discretion”. This is not exercising discretion, but acting arbitrarily and therefore not acceptable.
It is bordering on bad faith, when in T 1158/20, the board claims that in it was correct in T 996/20 to hold the OP in person on 02.11.2022 and it was also correct to deny OP in person on 27.11.2022 as in both cases it was a discretionary decision. The board claims that it had a different composition in those cases. The problem is that in both cases the same chairman and rapporteur were acting and only the legal member was different.
In T 1624/20, I would allow myself to claim that the board wanted primarily to protect itself. The same manifestly also applies for T 1158/20, whereby the aspect of convenience for the board could also have played a role as in one case it accepted OP in person and in the other case it refused OP in person. The COVID-19 situation has been steadily improving and it is difficult to justify not holding OP in person at the end of November, but at the beginning of the same month.
In T 2341/16, commented on this blog, OP scheduled for 20.05.2022 were cancelled after the announcement of the applicant that he would not be present at the PO. Prior to this announcement the BA refused to hold an OP by ViCo and applied the gold standard in matters of OP as foreseen in G 1/21.
In T 1708/19, commented on this blog, OP took place on 30.06.2022. End of June was just the period in which the board considered in T 2791/19 that the infection rate has increased drastically. This did not withhold the board in T 1708/19, which must also have been aware, should it actually have been the case, of the increasing number of infections, to hold OP in person.
In T 2791/19, commented on this blog, the board refused OP in person and held OP by ViCo on 26.07.2022. It is interesting to note that in T 2791/19 it was again the same chair and rapporteur than in T 1158/20 and T 996/20.
I leave any conclusions about those coincidences to the readership.
The EBA has not indicated any circumstance in which the “gold-standard” can be dispensed with once the conditions of the pandemic and the impairment of travel is not any longer present.
It is more than doubtful that the discretion of the boards goes as far as to decide by themselves when there is a risk of contamination or not by the COVID-19 virus. As long as the EBA has not done so, it is not for a board to decide, most probably for its own convenience, to hold or not OP in person in the absence of any impairment as to travel or access for instance to the Isar building of the EPO.
The EPO premises might benefit from a statute of ex-territoriality, but they are not on another planet. It can thus be expected that they conform to the COVID regulations valid for the places in which the EPO has buildings.
I would allow myself in stating that the present boards can be considered to have had a “dynamic interpretation” of what is said in G 1/21. I would in any case need more reasons to justify this attitude and not simply coming up with the “discretion” given in Art 15a(1) RPBA20.
One question remains unanswered: what is the legal basis allowing the members of a board not to sit together when deciding on the fate of an application or of a patent. cf. Art 15a(3) RPBA20.
The same applies mutatis mutandis to deciding bodies in first instance, in which OP can only be held in form of a ViCo. In view of the wording of Art 116, which does not make any difference between OP before the first instance and the boards, the legal basis for mandatory OP by ViCo appears also to be missing.
The only mechanism known to amend the EPC is Art 172. Art 164(2) puts strict limits to amendments of the Implementing Rules by the AC. The EPC cannot be amended by secondary legislation.