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T 2432/19 – A pungent reply to T 618/21 and similar decisions

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The patent relates to a disposable diaper.  

Brief outline of the case

The proprietor appealed the revocation of the patent.

The OD had decided that the ground of opposition under Art 100(c) was prejudicial to maintenance of the patent as granted. The other AR were offending Art 123(2).

The board confirmed that claim 1 as granted was not allowable in view of Art 76(1).

AR 1-4 were offending Art 123(2) and AR 5 was not admitted under Art 13(1) RPBA21.

The revocation was thus confirmed.

The case is interesting in that it deals with the application of G 1/21.

In-person oral proceedings

In the communication under Art 15(1), the parties were informed that if the board found it appropriate to do so, OP might be held by ViCo, and were also asked to inform the board if they wished to invoke any reasons against holding the OP by ViCo, for the case that the board decided to use that format.

The opponent invoked no reasons against holding OP by ViCo.

The proprietor had, in two letters, the last roughly one month before the scheduled date, requested that the OP be held by ViCo. The proprietor has not given any arguments as to why the OP should be held by ViCo. He was of the opinion that there were no reasons why the OP could not be held by ViCo.

The board decided to hold in-person OP.

In-person OP took place on 25.04.2023 at the premises of the EPO in Haar.

Art 15a(1) RPBA21 and G 1/21

What does appropriate in Art 15a(1) RPBA21 mean

From the expression “if the board considers it appropriate“, the board concluded that it is evident that is has discretion to decide whether to hold OP by ViCo or not. Nevertheless, the board was of the view that G 1/21 puts certain limits on how this discretion is to be exercised.

In a recent case T 618/21, the view has been expressed with regard to Art15a RPBA21 that the exercise of discretion in deciding on the format of the oral proceedings was to be based on the criterion of the “appropriateness” of the format only – as set out in that provision -, and that no further criteria are binding for the exercise of discretion.

G 1/21 is not only applicable in situations of general emergency

In the present board’s view, G 1/21 has established general criteria which need to be taken into account for the denial of a request for in-person OP, which apply not only to a situation of general emergency, but are valid also in non-emergency times.

The board referred directly to points 44 (OP by ViCo are not equivalent to in-person OP), 38 (communicating via ViCo cannot, …., be put on the same level as communicating in-person), 45 (in-person hearings should be the default option) and 46 (at this point in time ViCos do not provide the same level of communication possibilities as in-person OP), of the Reasons in G 1/21.

Not least from the general applicability of the statements in the points referred to, it was evident for the board, that this holds true regardless of the existence of an emergency situation, i.e. even in ‘normal times’. The present board considered this to be the key ratio (ratio decidendi) underlying G 1/21, the validity of which is not limited to any emergency situation.

The board added that, although the concept of a situation of general emergency was defined quite narrowly, indeed even restricted to those situations impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises, the EBA explained by way of example which criteria are to be used in the exercise of discretion and which should in any case play no role and referred to Point 49 of the Reasons: “This decision should not be influenced by administrative issues such as the availability of conference rooms and interpretation facilities or intended efficiency gains.”.

Correct administration of justice

For the board, it must be borne in mind that the EBA justified the denial of in-person OP in order to avoid the administration of justice being seriously impaired during a pandemic, cf. Point 51 of the Reasons.

However, comparable risks do not exist in non-emergency times. The board therefore can only understand the decision in such a way that, in principle, OP in person can exceptionally be denied in a situation of general emergency in order to prevent serious impairment of the administration of justice.

No automatic right to OP by ViCo

Further, the board noted a contrario, that it follows from the reasons underlying G 1/21, that parties do not have a right to a format having deficiencies and referred to the “shortcomings” of such a format as mentioned in G 1/21, Point 40 of the Reasons, i.e. parties cannot force boards to conduct ViCos instead of in-person OP.

Hence, in a non-emergency situation, such as in the present case before the Board, where the parties are able to travel and no other restrictions exist, see G 1/21, point 49 of the Reasons, the general considerations underlying G 1/21 are to be taken into account.

No improvement in technology since G 1/21

The Board could not recognise any improvements that can be said to provide the level of communication which is possible when all participants are physically present in the same room.

Unlike found in T 758/20, cf. point 1.4.7(b) of the Reasons-commented in this blog, and further elucidated in T 618/21, cf. point 4.1.3 to 4.1.5 of the Reasons-also commented in this blog, the present  board finds that the situation for the time being has not changed since the issue of G 1/21.

Choice of format to be given to the parties

The board further referred to Reasons point 46 of G 1/21, where it is stated that “The vast majority of OP are held upon request by a party. It therefore makes sense that the choice of format for these OP can be made by a party who requested them and not by the board of appeal.”

Last but not least, whilst the board accepts that if there are no objections to holding OP by ViCo, or if all parties request this, the board can exercise its discretion to hold the OP by ViCo (as regularly happens), notwithstanding the fact that the board must additionally consider it “appropriate to do so“, also stated in Article 15a RPBA 2021 when selecting the format.


The present decision of board 3.2.06, also a “mechanical” board is to be welcomed.

It puts the picture straight, and gives a solid interpretation of G 1/21 contrary to the kind of “dynamic interpretation” of G 1/21 given by board 3.2.01.

The present decision is a stinging denial of the view expressed in T 618/21 and T 758/20 of board 3.2.01, according to which videoconferencing technology has made major progress since G 1/21, whereby OP by ViCo have become equivalent to in-person OP.

The present board goes as far as to state that, even if all parties require OP by ViCo, it is still left to the discretion of the board to decide whether OP by ViCo is an appropriate format. It simply follows the general legal rule that every exception has to be used with precaution and cannot be generalised.

This is also to be welcomed and shows how ridiculous were the considerations on sustainability and protection of the environment brought forward in T 618/21. There are no corresponding legal rules to be followed. G 1/21 is silent on this question. The present board did look at the legal rules to be applied correctly and did not try to distort them for its convenience.

Contrary to what board 3.2.01 thinks and at the same time requests from the parties, it is not for a party to explain why OP by ViCo is not an appropriate format. The appropriate format is by default in-person OP. OP by ViCo should remain an exception.

It is to be hoped that other boards will follow the present board and that G 1/21 will be correctly applied in the future by all TB and the LB.

If the EBA is coherent with its own decision, it should in the future exclusively hold OP in person, besides a general emergency impairing parties to attend OP on the premises of the EPO.

The difference in interpretation of G 1/21 by those two boards illustrates, once again, the divergence of case law in procedural matters applied by different boards.

I can only repeat that filing an appeal should not become a lottery in procedural matters. It is also time to stop this lottery.

It can be expected that some representatives not residing or having a branch in Munich, The Hague or Berlin will be strongly again the present decision and will favour T 618/21 and the like. Wait and see how the situation will develop. 

Although the EBA limited its decision to OP before the boards, the reasoning of the present board applies mutatis mutandis to OP before first instance divisions as well as before the receiving section and the legal division. I still fail to see a distinction in Art 116 and R 115/116 between first instance and appeal. In this respect, I found the comment in G 1/21 that OP by ViCo should not be influenced by administrative issues …… or intended efficiency gains, very interesting and revealing.

OP by ViCo are not quicker than in-person OP and the reasons for imposing OP by ViCo in order to prevent serious impairment of the administration of justice are not any longer valid before the first instance.

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3 replies on “T 2432/19 – A pungent reply to T 618/21 and similar decisions”

francis hagelsays:

Dear Mr Thomas

Thanks for this report and your comments. This decision is welcome but will it be sufficient to discipline BA 3.2.01 back in line with G 1/21 ? At least the distribution code B seems to convey a positive message.

As I suggested in a comment on your post of May 6 related to T 618/21, a proactive (or preemptive) mode of action could be for a party having a case assigned to BA 3.2.01 and eager to ensure OPs will be held in-person to raise an objection of suspected partiality under Art 24(3) EPC against the chairman and the rapporteur of the pro-Vico decisions of BA 3.2.01 (T 618/21, T 758/20 and T 1158/20).

The advantage of this type of action is that it would rely on the procedural rights of the party and on their legitimate concern (based on evidence i.e. the pro-Vico bias of BA 3.2.01 made quite clear from its recent decisions) and it would allow an applicant or party in opposition to directly launch a challenge aimed at restoring the authority of the EBA, and bypass the need for a formal referral.

On the other hand, such an action would be unpleasant since it can only target specified individuals.

Avatar photoDaniel X. Thomassays:

Dear Mr Hagel,

Thanks for your comments.

As far as the distribution code is concerned; I do not think that it has a great significance. The boards can decide themselves what should be the publication scheme, and some do not really care.

Rather than attempting to discipline some directly identifiable members of the boards not abiding by Art 21 RPBA21, or filing a request of partiality it should be, in my modest opinion, the task of the management of the boards and of the presidium to see how to bring some order in the lottery in procedural matters which is presently happening when filing an appeal.

The RPBA20/21 have given a great deal of discretion to the boards, but there is no instance competent to decide whether this discretion has been properly exercised by the boards according to the right principles and in a reasonable way. It should be avoided, under the cover of discretion, to come to what can be considered arbitrary decisions of boards, especially when they refuse to hold in person OP according to the gold standard defined in G 1/21.

A mere request for partiality does not seem to me to be the best way to tackle the problem. Even if a request for partiality is filed again some members or the totality of a board, I am not aware that it has ever been much successful. The case of the president of the BA is particular, as its position in favour of OP by ViCo was well known in advance of the referral leading to G 1/21. When it comes to appreciate a discretionary decision of colleagues, I doubt that the replacing members will dare say that the way their colleagues applied the discretion given by the RPBA shows a real prejudice.

What seems a possibility is to file an objection under R 106 which will make a petition for review at least admissible. But there again the chances of success are rather low as again it is a matter of discretion given to the boards. Up to now the EBA acting under Art 112a has considered that if a party has been heard about a discretionary decision taken by a board, there is nothing more to say.

The real problem is rather of political nature. Without the political will to bring some order in the discretion given to the boards, I fear that nothing much will happen in the future.

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