CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 423/22 – Hearing of witnesses by ViCo

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The patent relates to a RFID enabled tire control system and method.

Brief outline of the case

In a first decision T 393/16, the board remitted the case to the OD as it considered  that the alleged public prior use “eTire II”, if proven, would disclose all features of claim 1 of the MR=AR 4 as maintained.

The OD summoned the witness, Mr Marques, and had, inter alia on the question of whether, during the prior use “eTire II”, the claimed features were disclosed to members of the public.

The OP and the witness hearing were held by ViCo without the consent of the proprietor.

The OD came to the conclusion that the prior use “eTire II” had been public and the patent was revoked.

The proprietor appealed and the present decision is the result of this appeal.

The board summoned the parties to OP at the EPO premises.

The proprietor requested that the case be remitted to the OD with the order to hear the witness, Mr Marques, in person at the premises of the EPO, or alternatively to hear him in person during OP before the board.

The proprietor also requested the reimbursement of the appeal fee as he considered that its right to be heard under Art 113(1) had not been respected.

In case the board denied these requests, the proprietor requested that the following question be submitted to the Enlarged Board of Appeal:

“In the context of proceedings before the OD, is it compatible with the EPC to hear a witness on whose testimony concerning an alleged obvious prior use the outcome of the proceedings before the OD substantially or exclusively depends and who, moreover, is an employee of the opponent’s parent company, only by ViCo at the premises of the opponent’s parent company, even though not all parties have consented to such a hearing as a videoconference?”

The two requests were denied and the board confirmed the revocation of the patent.

The case is interesting as it deals with the hearing of witnesses by ViCo.

The hearing of a witness by ViCo

The proprietor’s position

The proprietor argued that it was not able to observe the witness’s body language during his hearing, and therefore it had been deprived of the opportunity to objectively judge his credibility. This allegedly amounted to an infringement of its right to be heard.

Legal basis

For the board, R 117 and 118 as amended by the AC in December 2020 were the legal basis for allowing hearing of witnesses by ViCo.

The board further referred to the “Notice from the European Patent Office dated 17.12.2020 concerning the taking of evidence by videoconference by examining and opposition divisions”, cf. OJ 2020, A135. It referred in particular to paragraph 2 of this Notice indicating that if OP are held by ViCo, evidence must be taken by ViCo as well.

The board’s position

Hearing a witness by ViCo does not infringe the proprietor’s right to be heard under Art 113(1).

During OP, participants interact based mainly on arguments that are expressed orally. The same applies to the interaction with a witness when the OD (and the parties) pose questions that are answered by the witness.

For the board, hearing a witness by ViCo does not substantially limit the interaction between the OD, the parties and the witness compared to hearing a witness in the courtroom.

As far as the credibility is concerned, the board noted that it is the deciding body’s responsibility, not the parties’, to judge the personal credibility of a witness and the plausibility of a witness’s statement.

The department hearing the witness has to assess thoroughly whether it deems itself able to properly make a judgement on these issues despite the fact that it won’t be able to see the witness’s whole body and that a person heard at a familiar location via videoconference might feel more comfortable and less affected by the situation than a witness heard in a courtroom.

Thus, there might be cases where hearing witnesses in person is the better choice, whether because the alleged facts in respect of which one or more witnesses are to be heard deviate from evidentiary assertions by other parties or from facts which follow from other evidence on file, or for other reasons.

For the board, the parties do not play a central role in this process. They do have, according to R 119(3), the right to attend an investigation and they may put relevant questions to the testifying witness. In the present case, the parties had the opportunity to ask the witness questions and did indeed ask the witness questions; this was not contested by the proprietor.

The credibility of a witness is not determined based largely on their body language and even less on body language outside the frame visible in a videoconference. On the contrary, the credibility of a witness depends primarily on the plausibility and conclusiveness of their testimony and the absence of contradictions, in particular contradictions within the witness’s own testimony, but also contradictions between the testimonies of several witnesses and/or contradictions between the witness’s testimony and supporting documents or other evidence on file.

Most of the body language relevant for determining secondary information such as whether a witness is nervous or feels uneasy when responding to specific questions can be perceived in the camera-section visible to the other participants of the videoconference anyway.

Facial reactions, and the way the witness answers questions (e.g. reluctantly, self-confidently or too quickly and without reflecting), can often be seen in even greater detail when choosing speaker-view on a screen, as compared to watching a witness from several metres away in a courtroom.

Movements of the body outside the camera image section, like trembling knees (if such a thing can be expected during a patent case), may cause movements of other, visible, parts of the body.

Even if part of the body language could not be seen, this drawback could never affect a party’s right to be present and to put questions to the witness, cf. R 119(3), to such an extent that its right to be heard, i.e. the “opportunity to present comments on grounds or evidence”, cf. Art 113(1), is violated.

This opportunity is also given during a ViCo. Such a format does not significantly limit the possibilities of interaction with the witness, which is mainly based on an oral exchange of questions and answers as set out above.

Hearing of a witness and G 1/21

G 1/21 sets out in Reasons 40 that OP held by ViCo are normally sufficient to comply with the principle of fairness of proceedings and the right to be heard. OP held by ViCo allow adequate interaction between the participants based on orally expressed arguments.

The EBA held that a participant’s body language is only an additional side-effect, and therefore its absence still allows sufficient interaction between the participants (see Reasons 42 of G 1/21). The same is true in the case of a witness hearing with regard to providing answers to the posed questions.

Furthermore, the EBA emphasised that unlike telephone conferences, a ViCo allows a major part of the participant’s body language to be seen since their face and the upper part of their chest are visible to all participants of the hearing, albeit on a screen (see Reasons 41 of G 1/21).

The present board added that the current technical possibilities are even better than at the time the EBA’s decision was given and do not hinder the participants of a ViCo in terms of the way they act and react and in terms of perceiving body movements and face colour and changes thereof.

Thus, under the current conditions it cannot be assumed that the EBA would have considered there to be a general obstacle against holding a witness hearing via ViCo.

Whether G 1/21 requires a general emergency in order to hear a witness by ViCo to the parties’ requests, does not have to be addressed since G 1/21 does not concern OP in opposition proceedings nor taking of evidence but instead is limited to OP in appeal proceedings (see referred question in Reasons 20 of G 1/21).


A witness can be an employee of the opponent

That a witness is an employee of or has economic links with the opponent is not enough to render his statement without credit or automatically nullify the veracity of the statement. Free evaluation of evidence applies, see T 1337/04 or T 1060/06.

It was thus a bare minimum for the OD to enquire about the position of the witness vis-à-vis the opponent. But the OD did apparently not bat an eyelid at the fact that the witness was sitting on the premises of the opponent’s parent company.

Any argument relying on the possible body language of the witness is of relatively low value.

Not excluding the possibility for the witness to “listening” or “participating” in the OP before giving its statement appears much more relevant.

It is certain that it is the deciding body which has the task to evaluate the credibility of the witness on the basis of free evaluation of evidence.

This was done in T 1337/04 (PPU acknowledged but not N destroying) and T 1060/06 (PPU acknowledged and IS destroying). In this respect T 1418/17 referred to by the present board simply confirms T 1337/04 and T 1060/06.

Hearing witnesses by ViCo poses a problem

For the board, regardless when the witness is heard by ViCo, it does not substantially limit the interaction between the OD, the parties and the witness compared to hearing a witness in the courtroom, there is one major difference.

For a start a witness heard by the EPO is not heard in front of a court.

With the ViCo system in place, there is no guarantee that the witness is not “listening” or “participating” in the OP before being heard, either as public or sitting next to a member of the public.

I am not implying whatsoever, that in the present case, the witness actually did so, but the there is no guarantee that it could not happen.

During on-line presentations about OP by ViCo, one lawyer in DG 5.2 hoped on the professionalism of all involved. This is by no way an acceptable answer.

When it is decided to hold OP by ViCo, and a hearing of a witness has been concurrently decided, a witness should be heard in a place where it can be guaranteed that the witness does not gain any information from the way the OP progresses, be it directly or indirectly.

It is clear that a witness heard at a familiar location via ViCo might feel more comfortable and less affected by the situation than a witness heard in a courtroom. The question is then: why should the witness be heard on the premises of its employer or of a parent company of its employer?

R 120 could be a solution

According to R 120(1) a witness may request to be heard by a competent court in his country of residence.

If the witness is heard in front of a court, then there is an intrinsic guarantee that the witness cannot be influenced by the course of OP.

According to R 120(2) a witness who has been heard by the EPO, may, at the request of the EPO, be required to give its statement under oath or in an equally binding form, before a competent court in the country of residence of the person concerned.

This is presently only done when there are doubts about the credibility of the witness.

If the witness has only be heard during a ViCo the re-hearing of a witness in a binding manner according to R 120(2) should be systematic.

Other possibilities

Other possibilities for guaranteeing the total independence of the witness, would be to have the witness sitting in a room of the patent office in a contracting state, or any place, for instance a public notary, in which it can be guaranteed that the witness does not acquire any knowledge of what is going on at the OP before it being heard.

When OP were held in person, after having been identified, the witness had to wait outside the room in which the OP was held, and was only allowed to enter the room when the witness was due to be heard.

The best solution would nevertheless to hear a witness in person on the premises of the EPO and hence not to hold OP by ViCo in such a situation.

G 1/21

Any assumption by the present board about the hearing of witness by the EBA is a mere allegation. What was at stake in G 1/21 was holding OP by ViCo in general and not even directly or indirectly the hearing of a witness by ViCo.

It has to be noted that in G 1/21 the EBA limited its reply to OP by ViCo before the BA, whereas the original question by the referring board T 1807/15 was not limited to OP before the BA.

When looking at Art 116, R 115 and R 116 it is not possible to see any difference between the instances before which OP are held.

By interpreting the question referred and adopting a restrictive reply to the question the EBA deprived parties in first instance to have OP in person outside a situation of emergency impairing parties to attend in-person. This is regrettable to say the least.

Referral to the EBA

Contrary to what the present board claims, the question raised by the proprietor about the fact that the witness sits at the premises of the opponent’s parent company is of general interest and represents a point of law of fundamental importance.

As explained above here, there is no guarantee that the witness does not “listen” or “participate” to the OP before giving his statement. It is like the suspicion of partiality, even the remotest possibility has to be nipped in the bud.

It can however be agreed with the board that the questions about the witness being an employee of the opponent have found a reply in the case law and did not warrant a referral to the EBA.  

Final comment

In the present instance OP were held on the premises of the EPO. As the OD was held with 4 members as it is usual when a witness id heard, the present board comprised 5 members.

That the present board did not see any problem of hearing a witness by ViCo is not a surprise.

In previous decisions, like T 618/21, commented on this blog, T 758/20, also commented on this blog, the present board, at least the chair and the rapporteur have considered that the current technical possibilities are even better than at the time the EBA’s decision was given. This can be disputed, but does not free a board to abide by a decision of the EBA, see Art 21 RPBA21.

On the other hand, I would like to refer to T 2432/19, also commented on this blog, in which the board held that, at least with current technology, OP by ViCo can only provide a suboptimal form of communication, parties have a right to the optimum format for OP. In T 2432/19, the board explicitly disagreed with T 618/21 and T 758/20.

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