CASELAW - reviews of EPO Boards of Appeal decisions

T 2341/16 – A BA refusing to hold OP by ViCo!

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The applicant appealed the refusal and requested that OP to be held by ViCo.

In a letter received on 01.04.2022 the applicant/appellant referred to the Covid-19 infection rates in the United Kingdom and in Munich and requested that the OP be held as a ViCo.

In a communication dated 11.04.2022 the board noted that there seemed to no longer be any official limitations or impairments affecting the appellant’s ability to attend oral proceedings in person. Hence the board was not convinced by the appellant’s arguments and still intended to hold the oral proceedings in person.

On 13.05.2022 the appellant’s representative indicated that the appellant would not be represented at the OP. The board then cancelled the OP and decided in writing.

It is interesting to note that the decision of holding the OP by ViCo is only mentioned in “Facts and submissions” and no word about it is lost in the decision itself.

After the appellant had declared that he would not attend the OP in person, it was legitimate for the BA to cancel the OP and to decide in writing.

The appellant had been informed in a communication about the objections of lack of IS by the board.  

The refusal was confirmed.

Comments

It seems thus that a board has decided that the pandemic has ended and that the representative, even coming from the UK, was not any longer impaired in attending in-person OP.

The board thus applied the “golden standard” for OP as defined in G 1/21.

It is interesting to note that there is no communication of the EPO or of the chair of BA that the pandemic period has officially ended for the EPO and its BA.

I wonder when such a communication will be issued.

The present decision is in contrast with T 2526/19. In this decision the BA made clear that it would still summon to OP by ViCo as the for the board, Art 15a RPBA remains applicable without any qualification to these and future appeal proceedings.

In other words this board intends thus to ignore the “golden standard” for OP defined in G 1/21.

If the “golden standard” for OP before the BA is in-person OP, it is difficult to understand why this standard is not valid to OP before first instance divisions. After all, Art 116 does not make any difference between instances when it comes to OP.

I will refrain from any comment about OP before first instance divisions as it appears clearly that the reasons for holding OP by ViCo are not directly related to the pandemic. The pandemic rather appears to have been an opportunity to amend the workings processes at the EPO. Whether those amended procedures find a basis in the EPC is also a question worth asking.

Last but not least, I fail to find in the EPC a legal basis for allowing the deciding body not to sit together when deciding on the fate of an application, patent or opposition.

When looking at Art 125 and what is happening in contracting states, it difficult to see that this Art could cover the present practice.

https://www.epo.org/law-practice/case-law-appeals/recent/t162341eu1.html

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6 replies on “T 2341/16 – A BA refusing to hold OP by ViCo!”

Cornelia Neidl-Stipplersays:

The in-person hearings were introduced with good reason. It is easier to communicate and there is always the full spectrum of reactions from all attendants. In Vico there is only a fraction of this information conveyed – which I consider a great loss of information important for the case.

DXThomassays:

Dear Mrs Neidl-Stippler,

I can only but agree with you.
It is not for nothing that the EBA has decided in G 1/21 that OP by ViCo are not equivalent to in-person OP.
The gold standard for OP is in-person OP.
What is there to add?

What is there to add, Daniel. Here is something.

Cases should be decided on their facts, and on the the applicable law, and not on the advocacy skills of the speakers in the room, or by the prejudices of the members of the Board or Division who pride themselves on their ability to tell (whether by their keen eyesight, their experience with their own children or carried to their unconscious mind by their refined sense of smell) which of the stories told by the various speakers in the room they tend to prefer and so ought to be followed in their Decision. In these days of debate whether human drivers (of trains or planes or heavy trucks) always make safe decisions, it is no longer a “given” that the quality of decisions taken at in-person OP’s will always be better than those taken via VICO.

But perhaps you disagree?

What troubles me is the use of VICO to connect the members of the Division or Board, s they work together to arrive at a collective Decision. What next: distributing the twelve honest men of a jury tasked with deciding on the death penalty in twelve different States of the USA. I don’t like the thought of that one little bit.

Maybe cases should be decided on their facts and not on the advocacy skills of the speakers in the room but why stop at the advocacy skills *of the speakers in the room*? Should cases not also be decided on their facts rather than the advocacy skills of their speakers, regardless of the location of the speakers? Is written advocacy, including the selection of facts, even right because some advocates are much more skilled at this? Applications could be judged without any commentary (at least a few in the EPO would prefer this).

The EPC might have set-up the EPO in this (arguably more egalitarian) way. However, for various reasons, it instead supported advocacy including oral proceedings. It is untenable to argue that the EPC did not envisage oral proceedings in person before a Board/Division sitting together, given its age and context.

Still, maybe times have changed and EPO practice must be updated. I would support such change. However, this change should be debated transparently (not hiding permanent change under the cover of a temporary Corona measure) and those opposing it have the right to refuse in the adjusted practice, at least until the underlining EPC is amended accordingly. The alternative idea of simply unilaterally changing practice away from the clear intention of a multi-national treaty is just not right.

DXThomassays:

Dear Henry,

I cannot but agree with you.

That the EPO takes the opportunity to use more modern ways of communication or holding meetings is not at stake.

The choice of the form of OP should however be left to the parties and not be decided ex officio by the EPO for whatever reason.

This is the more so since OP have no legal basis in the EPC. They could at least deserve a mention in the implementing rules.

If for the EBA the golem standard is in-person OP and OP by ViCo are not equivalent, how can this be the case before the first instance?

Last but not least the deciding body does not sit together has no legal basis whatsoever.

DXThomassays:

Dear Max Drei,

I will certainly not disagree at all with you that “Cases should be decided on their facts, and on the applicable law, and not on the advocacy skills of the speakers in the room, or by the prejudices of the members of the Board or Division”.

I also think like you that “it is no longer a “given” that “the quality of decisions taken at in-person OP’s will always be better than those taken via VICO”. Even the EBA only said that for the time being, OP in-person should be the gold standard. This leaves headroom!

I would add that the best representative cannot be successful if the “ammunition” given to him by his client is no good. Some representatives might be better speakers than others, but if at the end of the day there is no substance, there cannot be a positive result.
I find it thus incorrect to give the blame to representatives when an OP in whatever form is not progressing like a division or a board would like it to see progressing.

What I am pleading for is to give the parties the right to choose in which form they would like OP to be held.
If a party prefers in-person OP or in form of a ViCo, this choice is to be respected.
If two parties have a different opinion on this matter, then mixed-mode OP should be offered.

It is my humble opinion that it is not for the EPO to decide ex-officio the form OP should take. After all, the EPO has been set up as a service organisation and not as an institution in which financial questions should prevail. Financial aspects cannot be neglected but they should not give the impression that they are overwhelming.

What to me is fundamentally problematic, is the fact that during OP by ViCo the deciding body is not sitting together.
This is not covered by the EPC!

I invite you to look at my latest comments on OP by ViCo published yesterday, 17.06.2022:

https://blog.ipappify.de/op-by-vico-in-first-instance-the-latest-communique-of-the-epo/

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