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T 2791/19 - OP in July 2022 held in Form of a ViCo against the wish of the opponent – Is this reasonable? – Diverging case law in matters of form of an OP

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Brief outline of the procedure

The appellant/opponent appealed the OD’s decision to reject the opposition.

By letter dated 29.06.22, the opponent requested that the OP be held in person instead of by ViCo.

Opponent’s representative is based in Munich. Respondent’s/proprietor’s opponent is based in Wiesbaden.

The board decided on 21.07.2022 to hold the OP by ViCo.

 The OP by ViCo took thus place on 26.07.2022.

The board confirmed the rejection of the opposition.

Opponent’s arguments for an in-person OP

The opponent had already indicated in the preparation of the OP that he would not agree to a video conference and maintained his objections also during the OP.

In its submission of 29.06.2022, the opponent referred to the fact that the current pandemic situation did not give reason to hold the OP as ViCo instead of in person. An exception to the holding of the OP in person within the meaning of G1/21 was not appropriate, as the actual circumstances did not make it necessary to hold the OP otherwise than in person.

At the OP, the opponent additionally argued that OP by ViCo was not an OP within the meaning of Art 116. He also repeated its argument that there was currently no longer an emergency situation within the meaning of G1/21, as there were no longer any restrictions on public life. The Corona virus was now to be regarded as a general risk of life, which was also proven by the fact that he personally was not aware of any severe courses of the disease. Therefore, there was no understandable reason not to hold the OP in person.

The opponent also complained that due to the poor sound quality of the proprietor, the OP by ViCo were more strenuous than in-person OP. In addition, a ViCo did not make it possible to capture emotions in the faces of the Board members.

The Boards position

For the board, the possibility to hold ex-officio OP as a ViCo is explicitly provided for in Art 15a RPBA20.

The board also added that OP by ViCo is to be regarded as OP within the meaning of Art 116, as the EBA decided in G1/21 in section C.3 (“Interpretation of Article 116 EPC”, in particular paragraph 30).

For the board, the question to be answered here is therefore whether the OP could be held as a ViCo against the opponent’s will.

The board reminded of the Headnote of G 1/21 in which it is stated that during a general emergency impairing the parties’ possibilities to attend in-person OP at the EPO premises, the conduct of OP before the boards of appeal in form of a ViCo was possible even if a party disagreed.

The board agreed with the opponent that its representative could have been granted access to the Isar building (where the OP were initially scheduled) – under the access conditions applicable there.

In the Board’s view, the circumstances in the present case justify not holding the OP in person

As the EBA noted in decision G1/21 (point 49 of the grounds), such circumstances “should relate to restrictions and impediments preventing a party from attending OP in person at the EPO’s premises. In the case of a pandemic, such circumstances may include general travel restrictions or interruption of travel connections, quarantine requirements, access restrictions at EPO premises and other health-related measures to contain the spread of disease.”

The board noted that it was not disputed by the opponent that in the weeks before the OP the number of new infections in the Munich region had steadily increased – as was also emphasised in the Board’s decision of 21.07.2022. The risk of infection of one of the parties by holding the OP in person was therefore relatively high.

In the Board’s view, this risk constituted an aggravating circumstance which objectively prevented a party from attending OP in person.

In the Board’s view, contrary to the opponent’s assertion, an infection with the coronavirus cannot be regarded as a harmless disease, but may, on the one hand, result in a protracted loss of working capacity on the part of the person concerned. On the other hand, severe, sometimes even life-threatening courses cannot be ruled out – even if the representative of the opponent is not aware of any such cases in his personal environment.

The avoidance of direct contact and thus the minimisation of the risk of infection of one (or more) of the parties to the OP was the main consideration in the decision. The board found this advantage to be so decisive that it outweighed the disadvantages to the parties of OP by ViCo.

Thus, the board decided to exercise its discretion, for the protection of all parties (parties and members of the board), to hold the OP by ViCo even without the opponent’s consent.

As far as the inconvenience of OP by ViCo is concerned and the quasi impossibility to capture emotions in the faces of the Board members, the board noted that this may be correct in principle.

However, the EBA, in answering the question whether a videoconference should be considered equivalent to a face-to-face hearing, held in decision G1/21, in section C.4 (“Is a videoconference equivalent to in-person oral proceedings and, if not, is it a suitable format for conducting oral proceedings?”, in particular paragraph 43), that such complications, while annoying, did not violate the parties’ right to be heard.

In the context of the present case, in the event of momentary sound distortions, the Chair stopped the presenting party’s presentation and allowed the presenting party to repeat its argument so that all parties could grasp the completeness of each of the arguments presented.

Comments

The present decision is difficult to understand and to follow for a series of reasons.

When the board agreed with the opponent that its representative could have been granted access to the Isar building (where the OP were initially scheduled) – under the access conditions applicable there, the rest of the reasons are not convincing.

Even for the board, there was thus no proper impairment of parties to come to Munich and gain access to an EPO building.

With appropriate distancing of the participants and the board and with protective shields between them, as well if necessity arises, wearing masks, there was no reason not to hold OP in person at the end of July 2022.

The risk of infection of one of the parties by holding the OP in person might be relatively high, but the same risk exists when people go shopping, take public transport and/or go to the restaurant or the cinema. And in this respect the members of the BA are not different from other people in Munich or coming to Munich. It is difficult to follow why the general risk of life represented by Covid constituted an aggravating circumstance which objectively prevented a party from attending OP in person.

In all confined places a certain risk exists, but the sanitary authorities in Germany in general and Bavaria in particular see no reason to restrict contacts.

The premises of the EPO might benefit from an extra territorial status, but they are embedded in a city. It is difficult to understand why the sanitary conditions valid in general in the city could not apply to a building well anchored in it.

It is to be noted that the EPO has refrained from any official announcement of the end of the pandemic. One wonders why? It is most probably not innocent.

The headnote in G 1/21 made it clear that the impairment of parties plays an important role when depriving parties from the “gold standard” in matters of OP, cf. Reasons, Point 45.The board itself acknowledged that the representative of the opponent could obtain access to the Isar building. Therefore, discretion or not, it cannot be that a board decides on its own sanitary standard.

The RPBA20 have given the boards a great amount of discretion. The discretion in matters of OP should not end up with decisions going into different directions as it is already the case with deletion of claims or combination of claims as granted.

In T 2341/16, commented on this blog, OP 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 present board considered that the infection rate has increased drastically. This did not withhold the board in T 1708/19, which must also have been aware of the increasing number of infections, to hold OP in person.  

In T 2526/19, not commented in this blog, the board made clear that it would still summon to OP by ViCo as it was of the opinion that Art 15a RPBA remains applicable without any qualification to “these and future appeal proceedings”.

Art 15a is also one of the reasons why the present board decided to hold the OP by ViCo.

The problem lies manifestly in Art 15a(1) RPBA20.

The question at stake is thus the following: in view of the divergent decisions of the boards in matter of OP in person or by ViCo, would it not be better to:

  • Establish a mechanism by which, the EPO in general and the BA in particular, aligns itself with the sanitary requirements in places where the EPO has offices?
  • Revise Art 15a(1) to bring it in line with the reasons given in G 1/21?

The discretion given to the BA in matter of form of an OP should not end up in a lottery depending on which board an appeal arrives.

However concern remains that there is no legal basis in the EPC for allowing the deciding body not to sit together when deciding on the fate of an application, patent or opposition, cf. Art 15(3) RPBA20.

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

https://www.epo.org/law-practice/case-law-appeals/recent/t192791du1.html

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Comments

5 replies on “T 2791/19 – OP in July 2022 held in Form of a ViCo against the wish of the opponent – Is this reasonable? – Diverging case law in matters of form of an OP”

Anonymoussays:

Is holding OP by ViCo against the will of a party (also) objectionable under Art. 112a(2)(d) EPC in combination with Rule 104(a) EPC?

DXThomassays:

Dear Anonymous,

You raise an interesting question.

Art. 112a(2)(d) provides that a petition for review can be justified by “any other fundamental procedural defect defined in the Implementing Regulations [which] occurred in the appeal proceedings”.

As procedural defect defined in R 104(a) is the failure of a board to arrange for the holding of oral proceedings requested by the petitioner.
Failure of a board to arrange for the holding of OP boils down to a board overlooking a request for OP.
I doubt we will ever witness such a situation.

A petition for review has only a chance to be deemed admissible if an objection under R 106 has been raised during the OP and the board has dismissed it.
In the present case there has been no objection under R 106 raised during OP so that a petition for review would thus most probably not be deemed admissible.

Even if such an objection under R 106 would have been raised during OP, it would be easy for a board to dismiss it.
After all, the board summoned to OP and OP were held, but not in the form requested by the party.

According to Art 15a(1) RPBA 20, a board has the discretion to decide upon the form of the OP.
I would thus even consider that in exercising its discretion there is no need to refer to G 1/21.

For the reasons given above, my answer to the question “Is holding OP by ViCo against the will of a party (also) objectionable under Art. 112a(2)(d) EPC in combination with Rule 104(a) EPC” is therefore negative.

A positive reply to this question would only be possible under two conditions:
– OP by ViCo have a basis, at least in the Implementing Regulations
– Art 15a(1) RPBA20 would be amended to bring it in line with G 1/21

Indeed, in view of G 1/21 an adaptation of Art 15a(1) RPBA20 appears absolutely necessary.
The discretion given to the boards has been clearly limited by G 1/21.

It is only during a general emergency (whatever this means) impairing the parties’ possibilities to attend in-person oral proceedings at the EPO that a BA should have the discretion to summon to OP by ViCo even if not all of the parties to the proceedings have given their consent.

It is worth remembering that according to G 1/21, the gold standard for OP is in-person and OP by ViCo and in-person OP are not equivalent.

OP by ViCo pose a problem which lies at a higher level: OP by ViCo have actually no legal basis in the EPC, and in spite of G 1/21 this defect has not been rectified.

Before deciding on OP by ViCo as done in G 1/21 or in Art 15a(1) RPBA20, it would think that it would have been necessary to anchor OP by ViCo in the Implementing Regulations which are silent on this topic.

During the OP of G 1/21, the president’s representatives have repeated many times that the EPC can be amended by secondary legislation.
I beg to disagree.

The EPC can only be amended by a diplomatic conference according to Art 172.

The AC may amend the Implementing Regulations under Art 33(1)(c), or adopt the RPBA under R 12c.
The power of the AC to amend the Implementing Regulations is limited by Art 164(2).

A decision of the President under Art 10(2)(a) is certainly always possible, but I contend that such a decision can only be taken in the framework of the EPC and its Implementing Regulations.
As there is no trace in the EPC or in the Implementing Regulations of OP by ViCo it is possible to consider the President’s decision of making them mandatory in first instance to hold OP by ViCo lacks a proper legal basis.

Introducing OP by ViCo has changed the structure of the EPC as it implies a totally new procedure having no proper legal basis.

This does not mean that the EPO and its BA should not use modern communication techniques like OP by ViCo or electronic communication with the parties.
Anything else would not be reasonable, but it appears also reasonable to require a proper legal basis for this new procedure.

As Art 116 does not make a distinction between first and second instance, it is difficult to follow that the gold standard at the boards should not apply in first instance.
As far as OP are concerned, whether they are held in an administrative or in a judicial framework does not change their nature.

The form of the OP should be left to the parties and not decided by the EPO or the BA.
That, like any rule, it needs exceptions is not at stake here.
If parties are impaired in their movement, then OP by ViCo are a necessity which nobody will deny.

Anonymoussays:

My line of argument would be as follows:
1. Only in-person OP are to be considered as OP in the sense of Art. 116 EPC.
2. Thus, arranging OP by ViCo is to be considered as having filed to arrange (proper) OP in the sense of Rule 104(a) EPC.
3. The appellant maintained the objection against OP by ViCo and, hence, did (implicitly) raise an objection in the sense of Rule 106 EPC. Rule 106 EPC does not require that the objection is to be raised with explicite reference to Rule 106 EPC.

DXThomassays:

Dear Anonymous,

I can follow and understand your line of argumentation, but I do not think it will be successful.

1. With G 1/21 it is not possible to consider that only in-person OP as OP in the sense of Art 116. According G 1/21, in-person OP are the gold standard, but Art 15a(1) RPBA20 gives the boards the discretion to hold OP by ViCo even if the parties do not consent.

2. Thus, whether the OP is held in-person or by ViCo, OP are held in the sense of R 104(a).

3. I have not gone through the R decisions, but at a glance I do not remember that the EBA has ever consider that an objection under R 106 could be implicit. From the wording of R 106, I would rather consider that an expressis verbis reference to R 106 is necessary. Maintaining an objection against OP by ViCo during said OP is not enough to be considered as an objection under R 106. When filing a petition for review, the only exception foreseen is when an objection under R 106 could not be raised during the appeal proceedings. Such a situation may occur when either there was no OP, or the defect only became apparent after the OP. The number of cases in which the exception has been applied is rather limited. .

This is why I consider it necessary to amended Art 15a(1) RPBA20 following G 1/21.

Not only in appeal, but also in first instance, the choice of the form of an OP should be left to the parties.
Exceptions in case of a “general emergency” (whatever that means) impairing the parties to assist at in-person OP are perfectly acceptable.

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