CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1501/20 – “Bastille day” is not a reason for postponement – A proper interpretation of Art 15a(1) RPBA21

chat_bubble 0 comments access_time 5 minutes

The patent relates to a “Centrifugal force pendulum and drive system having centrifugal force pendulum”.

Brief outline of the procedure

The opposition was rejected and the opponent appealed.

The board found that claim 1 as granted lacked IS over a document cited in the ESR.

As the proprietor had filed AR 1-3 in opposition, the case was remitted to the OD for further prosecution.

The case in interesting for the position of the board with respect to a legal holiday in a member state of the EPC, and the decision of the board to hold a mixed-mode OP.

The opponent was a French company and the proprietor a German company.

Postponement or not of the OP due to a bank holiday

The parties were summoned to to in-person OP on 14.07.2023.

The opponent requested that the OP be postponed, as the 14th of July was “bank holiday” in France, or that the OP be held by ViCo.

The proprietor opposed the conduct of the OP by ViCo, as the coordination between the proprietor’s legal representatives and the participating representatives was not possible.

However, the proprietor – in consultation with the opponent – agreed to the OP being held in the form of a “mixed-mode” OP, i.e. with the presence of the proprietor’s representatives and staff at the EPO’s premises and the participation of the opponent’s representative in the OP by means of a ViCo.

The board’s position with respect of a bank holiday

For the board, the existence of a “bank holiday” is in principle not a sufficient reason for postponing OP, unless a holiday or a trip has already been firmly booked, cf. Article 15 (2, b, vi) RPBA21.

For reasons of procedural economy, a postponement of the OP could not be considered.

Holding a “mixed mode” OP

As the proprietor maintained its request to hold in-person OP, but gave its consent to hold a “mixed mode” OP, the OP were held in mixed-mode.  

The requests of both parties were thus granted; the proprietor was given the opportunity to be present on EPO’s premises, and the opponent was allowed to participate by means of video technology.

The board considered that decision G 1/21 sets certain limits to the exercise of the discretion provided in Art 15a(1) RPBA21.

In this respect, the Board expressly followed decision T 2432/19, see Reasons 1.5 and 1.5.1, commented on this blog, according to which Article 15a (1) RPBA21 must be interpreted restrictively with regard to decision G 1/21.

The board thus held that Art 15a(1) RPBA21 does not provide a legal basis for holding OP in the form of a ViCo against the will of one of the parties to the proceedings, unless there is a general emergency impairing the parties to attend OP in person at the EPO premises.

In particular, it must be taken into account that the restriction made in G 1/21 to the situation of a general emergency would not have been necessary if the EBA had been of the opinion that there was a legal basis to conduct video conferences against the will of the parties to the proceedings, irrespective of the existence of such an emergency, cf. T 1171/20, Reasons no. 1.5 (Board 3.5.06).

In this context, it must be taken into account that G 1/21 assumed that the different formats of OP (in-person or ViCo) – at least with regard to the existing technologies – do not offer equivalent communication possibilities, see T 2432/19, in particular Reasons 1.7, 1.8 and 1.10.2.

In addition, it must also be taken into account that G 1/21 in principle grants the parties to the proceedings a right to choose the format of the OP, which in any case exists for in-person OP, cf. G 1/21, Reasons 46; T 2432/19, Reasons 1.10.3.

Moreover, the Board did not follow the view expressed in decision T 618/21, see Reasons no. 4, and in particular 4.1.3, commented on this blog, according to which Article 15a RPBA21 “must be regarded as the successor to G 1/21“. In this regard, reference was made to the corresponding statements of T 1171/20, Reasons no. 1.6.

In view of the above, the board did not see any legal basis in the present case to conduct the OP in form of ViCo against the will of the proprietor The OP were therefore conducted in the form of a “mixed-mode” or hybrid hearing with the consent of both parties.


Bank holiday and OP

The decision of the board not to postpone the OP due to a bank holiday is understandable.

The boards have a lot of OP to prepare and carry out, and it would be asking too much if a board would, before setting the date of OP, have to check whether a bank holiday in a EPC contracting state coincides with the date foreseen.

This also applies for first instance divisions, although they have in general less OP to care for.

Gold standard in matters of OP

The present decision, T 1501/20, has been taken by the mechanical board 3.2.08. T 2432/19 was also issued by another mechanical board, 3.2.06.  

The present decision, T 1501/20, is in clear contradiction with a series of decisions of mechanical board 3.2.01. In T 618/21, board 3.2.01 even considered that G 1/21 as being obsolete as technology had progressed so that OP by ViCo were now equivalent to in-person OP. T 618/21, from board 3.2.01, was preceded by T 758/20, commented in this blog, T 1158/20, also commented in this blog from the same board.

There are now sufficient decisions from other boards making clear that the discretion given to the boards in Art 15a(1) RPBA21 is to be exercised within the boundaries set in G 1/21, that is that in the absence of impairment the gold-standard for OP is and remains in-person OP.

Mixed mode OP upon request of a party

The present board, 3.2.08, accepted “mixed-mode” OP.

It cannot be said that the present board was more lenient than another mechanical board, 3.2.03, in T 1946/21, also commented on this blog.

In T 1946/21, the board refused to hold OP by ViCo as the representatives of both parties were present on the premises of the EPO. The representatives of the opponent and of the intervener requested OP in mixed-mode so that the representatives could attend the OP in person and “other attendees” could attend it remotely.

As the parties were properly represented, and the quality of the “other attendees” were not specified, the board rightly refused OP in a mixed mode. The mixed-mode was merely for the convenience of those “other attendees”.

It is to be hoped that more boards, not only in mechanics, will follow the reasoning of those boards considering that the discretion given to the boards in Art 15a(1) RPBA21 is limited by the considerations in G 1/21,and the gold standard is in-person OP.

This does however not exclude mixed-mode OP when those are accepted by all parties and not decided ex-officio by a board.

After all, the parties should have the choice of the form of OP, even in first instance. Art 116 does not make a distinction between OP in first instance and OP in appeal.

Share this post


Leave a comment

Leave a Reply

Your email address will not be published. Required fields are marked *