Brief outline of the case in T 758/20
The patent relates to a rotary conveyor drum for transferring rod-like elements for use in tobacco industry machines.
The ISR established by the EPO mentioned 5 A documents.
The OD decided that claim 1 as granted was lacking N over D1=US 3 267 821 (Not in the ISR).
The OD decided maintenance in amended form according to AR1.
The opponent appealed the decision of maintenance in amended form.
The board held that claim 1 as maintained was infringing Art 123(2) and decided maintenance on the basis of AR4.
The file is interesting as far as the reasons brought forward by the board for holding the OP by ViCo.
The proprietor agreed to hold the OP by ViCo.
The opponent requested to hold the OP in person.
The requests of the opponent about the form of the OP in T 758/20
The opponent put forward the following arguments on whether holding OP by ViCo can be imposed on the parties without their consent:
(a) Holding OP in person was the gold standard set out in G 1/21. The parties had a right to the gold standard and hence were not obliged to give reasons when requesting OP in person. Only when deviating from the gold standard did reasons need to be given.
(b) There was a “tension” between the discretionary power granted to the boards by Article 15a(1) RPBA 2021, which contained no indication of any limits to the exercise of that power, and the more limited discretion afforded to the boards by the decision G 1/21, leading to legal uncertainty for the parties.
(c) The criteria to be used when deciding on the form of the OP were defined by G 1/21 and were the following.
(i) A general emergency was required as a prerequisite to force the parties to accept oral proceedings by videoconference contrary to their will.
The opponent considered that the prerequisite in G 1/21 was no longer present since the COVID-19 pandemic ceased to prevail (decreasing number of infections, no travel restrictions in force and no quarantine obligation).
(ii) Furthermore, only reasons that effectively limited and impaired a party from appearing in person at the oral proceedings counted. The abstract possibility of an infection was not sufficient reason.
(d) The case was unsuitable to be dealt with by ViCo because a discussion on the disclosure of Figures 4, 5 and 6 of the originally filed application required pointing to these figures and providing free-hand sketches.
According to the opponent, three drawings, namely Figures 4, 5 and 6 of the application as filed, needed to be examined in combination.
The opponent further submitted that in view G 1/21, a party wishing to choose the in-person format for OP should not be obliged to provide any justification for this choice because, in accordance with that decision, OP in person should be the default option, i.e. the rule, and the party that requested OP – not the board – can choose the format.
Request for referral to the EBA
The opponent further requested a series of questions of to be submitted to the EBA pursuant to Article 112(1)(a) EPC.
Those questions primarily hinged about the relationship between the discretion given to the boards by Art 15a(1) RPBA20 and the findings in G 1/21.
They also related to the circumstances according to which limitations and impairments affecting a party’s ability to personally attend oral proceedings should be taken into account.
The EBA should also decide which objective criteria should be applied by the boards to determine whether a state of pandemic exists and whether this specific state creates limitations and impairments affecting the parties’ ability to attend oral proceedings in person at the premises of the European Patent Office,.
OP by ViCo decided by the board in T 758/20
The board decided of its own motion to hold the oral proceedings by videoconference pursuant to Article 15a(1) RPBA20.
For the board, the expression “if the board considers it appropriate”, makes it evident that the board has discretion to decide whether to hold oral proceedings by videoconference.
The provision does not set criteria to be applied when exercising this discretionary power. Nor does this provision require the consent of the parties.
The board thus considered it appropriate to hold the oral proceedings by videoconference.
One reason given by the board why it decided to hold the OP by ViCo related to the increasing number of COVID-19 infections and because the case appeared suitable for being dealt with in a videoconference.
For the board, the absence of travel restrictions was not a clear indication that OP must therefore be held in person. The board still has the discretion to decide on the form of the oral proceedings.
A further aspect to be taken into account was the risk for the parties and the members of the board of being infected, irrespective of whether the probability of an infection was low or near to certainty.
Since all pieces of relevant prior art were printed documents available on the databases of the EPO and no particular difficulties were apparent, such as particular complexities or, for example, models to be inspected during the OP, the board saw no reason why a ViCo was not suitable for dealing with this case.
The board noted that although it may be convenient for parties to present figures and to make free-hand sketches during OP, it would be more appropriate to provide such figures and sketches in advance of the OP so that the board and the other party(ies) are informed in advance of the content of the presentation.
Moreover, the board could not see why it would be possible to look at three different figures of the application as filed when OP are conducted in person but not when OP are conducted by ViCo. The Zoom software used by the boards also allows screen sharing with all participants.
The board does not interpret G 1/21 to mean that it is for the party that requested OP to choose the format of the OP. On the contrary, the format of the oral proceedings lies at the discretion of the board.
For the board, in accordance with Points 47-50 of G 1/21, the decision on whether good reasons justify a deviation from the preference of a party to hold the OP in person is a discretionary decision of the board summoning it to the OP. It is not the party, therefore, that chooses the format of the oral proceedings.
The board saw no conflict with G 1/21 and considered that, even in view of G 1/21, OP by ViCo was in this case not only suitable but also represented an equivalent alternative to in-person oral proceedings.
For the board, G 1/21 does not exclude that there are other circumstances specific to a case that justify the decision not to hold the oral proceedings in person.
The request for referral was refused. Firstly, the board did not see any deviation from decision G 1/21. Secondly, the board did not consider the question to be essential for the board to reach a decision in the current case.
The board held that the opponent’s desire to have clear criteria determined by the EBA on how the boards should exercise their discretion was partly incompatible with the concept of judicial discretion itself.
Comments on T 758/20
To claim that a case is unsuitable to be dealt with in OP by ViCo is not a convincing argument and it can easily be dismissed. The arguments of the opponent were easy to rebut.
The present board was the same as in T 1158/20, already commented in the present blog.
The comments made when dealing with T 1158/20 of 2.11.2022 apply mutatis mutandis to the present decision T 758/20 of 23.11.2022.
It remains that the same chairman and rapporteur held OP in person on 02.11.2022 in T 996/20. It is difficult to claim that the COVID situation has objectively degraded in Munich towards the end of November 2022.
The COVID situation appears nothing more than a weak excuse not to hold the OP by ViCo.
When comparing decisions T 2791/19, commented on this blog, T 1158/20, T 758/20 and T 1624/20, commented with T 1158/20 on this blog, which actually negate G 1/21 with T 2341/16, commented on this blog, T 1708/19, commented on this blog, and T 1708/19, commented on this blog, a referral to the EBA appears necessary.
The opponent is right when he considered that the discretion given in Art 15a(1) RPBA20 is without any limit.
When looking at the reasons in G 1/21, the discretion given to the boards under Art 15a(1) RPBA20 must be defined, not to say contained.
It cannot be that for reasons (of convenience) of the boards they can decide when a case is “appropriate” for an OP by ViCo. It is also not for a board to decide that OP by ViCo are equivalent to OP in person, as long as the EBA has not decided so.
Art 21 RPBA makes abundantly clear that, should a board consider it necessary to deviate from an interpretation or explanation of the Convention contained in an earlier decision or opinion of the EBA according to Art 112(1), the question shall be referred to the EBA.
By claiming that OP by ViCo are equivalent to OP in person in T 1158/20 and T 758/20 the board has ignored Art 21 RPBA20.
Another interesting case T 2762/19 from the same board
In T 2762/19, the board, in the same composition as in T 1158/20 and T 758/20, summoned on 17.12.2021 to OP in person for the 28.02.2023.
On 10.01.2023 the rapporteur sent a communication informing that the board was minded to hold the OP by ViCo as it considered the case suitable to be dealt with by ViCo.
The rapporteur requested a reply by 10.02.2023 (OP scheduled for 28.02.2023!) whether the parties agreed or to provide reasons why holding the OP by ViCo would not be “appropriate” for the present case and/or holding OP in person instead should be mandatory.
Here again the board showed its disregard towards G 1/21 and introduced the further requirement that the parties had to demonstrate why holding OP by ViCo would not be “appropriate“. G 1/21 is however silent on this point.
The rapporteur did not refer to the discretion under Art 15a(1) RPBA20, but here also, the board ignored Art 21 RPBA20.
In view of the arms twisting by the board, both opponent and proprietor implicitly agreed to OP by ViCo by communicating e-mail addresses and telephone numbers.
It is also interesting to note that by a communication of 03.02.2023, which is before the end of the time limit set by the board (10.02.2023), the board decided to hold OP by ViCo.
An OD has been sanctioned by a board when it issued a decision before the end of the time limit it had itself set. See T 1817/16.
2 replies on “T 758/20 – T 2762/19 – Bis repetita – The discretion under Art 15a(1) RPBA20 needs to take into account G 1/21 – It is not for a party to demonstrate that a case is not appropriate for an OP by ViCo”
I would not be surprised to see a Petition for Review in T 1624/20, as it appears from the file that objections were raised under Rule 106 EPC during the procedure.
There are also pending petitions for review in R 12/22 and R 18/22 in relation to the Boards’ discretion regarding choice of ViCo.
I wonder if the Petition procedure will lead to a clearer position on the Boards’ discretion, sooner than waiting for a G-decision?
The decision to hold OP by ViCo is a discretionary decision of a board.
I am therefore not convinced that the EBA will deal differently with discretionary decisions on the form of OP when one sees how the EBA deals with discretionary decisions on late filed submissions, i.e. prior-art and requests. The standard position of the EBA is the following: you have been heard about the reasons for admitting or not admitting late- filed submissions and this means that your right to be heard has been respected.
The problem actually lies in the RPBA20 which gave an even larger discretion to the boards. The appeal system at the EPO stops with two instances and there is thus no instance competent to decide whether the discretion has been correctly exercised or not. One can regret it, but those are facts. Boards of appeal are competent to decide whether a division of first instance has properly exercised its discretion. In this respect, boards are rather reluctant. Why should it be different for the EBA?
In my opinion, the Petition procedure will not lead to a clearer or quicker position on the Boards’ discretion. The only possibility is thus via a referral.
As far as a referral is considered, it can either come from a board or from the president. I doubt that the president will file a referral on this topic as he has decided that OP in first instance will be by ViCo.
The only possibility would thus come from a board. As OP by ViCo are also favoured by the chair of the boards, see the recusal of the chair in G 1/21, I doubt that a board will be daring to refer to the EBA.
If there would be a referral on the discretion in deciding the form of OP, it could well be that G 1/21 will be revised, but certainly not by keeping the in person OP as gold standard.
Whilst a referral seems the only way to clarify the situation, I fear that it could clarify the situation in a way that OP by ViCo are mandatory even for the boards.
The only fair solution would be to let the parties decide which form of OP suits best their interests. If both agree to OP by ViCo then there is nothing against OP by ViCo. If both require OP in person, it is not for a deciding body of the EPO, be it a division of first instance or a board, to disregard the wish of the parties. If one party wishes OP in person and the other OP by ViCo, then a mixed mode OP should take place. However, holding in person OP goes against EPO’s quest for total digitisation, so it is clear that in the long-run OP by ViCo will be the norm.
In any case, a legal basis should be given in the EPC to the fact that a deciding body does not need to sit together when holding an OP by ViCo. Contrary to what some people at the EPO claim, the EPC and its Implementing rules cannot be amended by secondary legislation. Art 172 is there to revise the EPC and Art 164 for the Implementing rules, with a clear limitation in Art 164(2).