Originally posted on IPKat
Legal Background: ViCo oral proceedings
The COVID-19 pandemic now seems like a bad dream. The pre-pandemic days requiring multiday trips for even examination division oral proceedings are also now a hazy memory. However, to understand its implementation, it is important to remember how the unprecedented shift to ViCo oral proceedings occurred.
In order to keep the important wheels of justice turning during the pandemic, the EPO introduced mandatory ViCo oral proceedings for all departments. However, this move was not without controversy. The backlash against mandatory ViCo oral proceedings eventually led to the referral G 1/21 relating to the legality of the new format for Board of Appeal cases. In its decision, the EBA ordered that during a state of general emergency, ViCo oral proceedings were compatible with the EPC even without the consent of the parties. Following G 1/21, the EPO introduced Article 15a of the Rules of Procedure of the Boards of Appeal (RPBA), granting the Boards discretion to hold proceedings by ViCo whenever they consider it “appropriate to do so”.
However, a look at the detailed reasoning revealed that the EBA had not given the EPO carte blanche to continue with ViCo oral proceedings post-pandemic. Instead, the EBA (in)famously remarked that in-person proceedings should remain the “Gold Standard” and the default option absent a state of general emergency.
In the wake of G 1/21, there thus appeared to be a clear tension between the “Gold Standard” reasoning of G 1/21 and the EPO’s self-proclaimed digital strategy, central to which was the new availability of the ViCo format for Board of Appeal oral proceedings. Several Boards of Appeal squared the circle by finding that technology had improved so drastically in the few short months since G 1/21 that the “Gold Standard” reasoning had effectively become obsolete, see T 1158/20 and T 0758/20. Other Boards of Appeal rejected this dynamic interpretation of G 1/21, finding that in-person proceedings should remain the default (T 1501/20).
With the pandemic now a distant memory, what has become of the Gold Standard of G 1/21? A look at the recent case law highlights some ongoing divergence in approach from different Boards of Appeal. The decisions can be broadly categorised into those embracing “the new digital reality” and those still faithful to the Gold Standard.
The “new normal”? ViCo as the default
The Boards of Appeal appear more than happy to exercise their discretion under Article 15a RPBA to order ViCo proceedings. These Boards place a significant burden on the party requesting an in-person hearing to justify why screens are insufficient.
In T 0745/23, after the Board of Appeal initially summoned the parties to in-person proceedings, the Patentee requested a switch to ViCo, citing environmental benefits and cost reductions. The Opponent objected, arguing that in-person proceedings were the optimum form and that G 1/21 dictated they should be the default absent pandemic measures. They further requested a referral to the EBA regarding the legality of Article 15a RPBA outside of an emergency.
The Board of Appeal refused the referral and ordered ViCo proceedings. In its reasoning, the Board stated that Article 15a RPBA provides a broad discretion not limited to pandemics. The Board noted that the Opponent had failed to provide any specific, objective reasons why this particular case was unsuitable for ViCo. The Patentee, conversely, had provided valid reasons regarding sustainability and efficiency. The Board found that: “the suitability and appropriateness of the format […] is not the only criterion adopted in the exercise of discretion“.
For the Board of Appeal, subjective reasons and the perception of the parties mattered. Since the Opponent could not point to any specific disadvantage, such as a lack of technical equipment or complex physical evidence, the Board felt justified in deviating from the “Gold Standard”.
A similar approach was followed by the Board of Appeal in T 1523/23. In this appeal, the Opponent requested that the decision of the Opposition Division be set aside and the case remitted, solely because the Opposition Division had held oral proceedings by ViCo against the Opponent’s will. The Opponent argued this infringed their right to be heard, relying heavily on G 1/21.
The Board of Appeal was entirely unpersuaded by this argument. It held that holding oral proceedings by ViCo does not, in itself, infringe the right to be heard. Citing G 1/21, the Board reminded the parties that the Enlarged Board had found ViCo to be a “suitable format” that does not inherently impair fair proceedings. Again, the Board of Appeal found that the Opponent had failed to demonstrate any specific detriment caused by the format in the proceedings below. Consequently, the Board of Appeal found no fundamental deficiency that would warrant a remittal on this basis.
Another case that followed similar reasoning was the Petition for Review decision R 7/22. The Petitioner (the Patentee) claimed a fundamental procedural defect because the Board of Appeal had changed the format to ViCo without sufficient reasoning, which they argued was arbitrary and a violation of Article 113 EPC. The EBA dismissed the petition as manifestly unfounded. In particular, the EBA reiterated its reasoning from G 1/21 that ViCo is generally compatible with the right to be heard. The EBA further noted that unless a party can show they were unable to present their case due to technical failures, and had raised a complaint at the time, there is no violation. A mere preference for in-person interaction was not, for the EBA, enough to ground a petition for review.
Clinging to the Gold Standard
However, not all Boards of Appeal are not fully in harmony. A discordant note was struck in T 2609/22. In this case, the Opponent requested ViCo, citing the United Nations Sustainable Development Goals (SDGs), specifically Goal 13 on Climate Action. The Patentee objected and requested in-person proceedings.
However, the Board of Appeal in this case refused the request for ViCo. The Board relied explicitly on the “Gold Standard” reasoning of G 1/21, stating that where a party requests in-person proceedings, there must be “circumstances specific to the case which justify a different format“. The Board held that general arguments about UN SDGs were not specific to the case at hand. Consequently, the Board could see “no good reason to force the proprietor to attend the oral proceedings via videoconference“. T 2609/22 nonetheless appears to be an outlier.
Hybrid hearings: The worst of all worlds?
A middle ground was found in T 0939/23. In this case, the Opponent requested ViCo for cost and environmental reasons, whilst the Patentee preferred in-person. The Board of Appeal solved this conundrum by ordering mixed-mode oral proceedings. The Board stated that the leading criterion for exercising its discretion was “offering the respective party the opportunity to be heard in the oral proceedings format of their choice”. By allowing the Patentee to come to Munich and the Opponent to stay home, the Board felt that equal treatment was respected, as each party made a deliberate choice with full awareness of the implications. The appeal was dismissed, but the procedural handling offers a potential template for resolving future impasses. On the other hand, hybrid hearings are perhaps the most controversial format of all, in view of the argument it creates an unequal footing for the parties (a view that CIPA has been quite vocal about).
Final thoughts
It appears that the “Gold Standard” of G 1/21 is therefore (mostly) quietly being forgotten. The clear trend across the majority of these decisions is that the Boards of Appeal are increasingly comfortable with ViCo as the default operational mode, regardless of the “emergency” status of the world.
Nonetheless there remains some residual divergence between Boards of Appeal such as that in T 0745/23, where general sustainability arguments for ViCo were accepted and those decisions such as T 2609/22 where general sustainability arguments for ViCo were rejected. It highlights that the “discretion” under Article 15a RPBA is being applied somewhat inconsistently. The mixed-mode approach of T 0939/23 is unlikely to be a popular compromise.
The question also remains, what do parties actually prefer? There was a cynical view that patentees could be generally expected to be in favour of in-person proceedings (as the most likely to prolong proceedings to their advantage). However, curiously, the opposite was actually the case in the referring case to G 1/21, in which the patentee was the party requesting ViCo proceedings. The (financial) importance of the case is one of the factors most likely to influence a party’s preference. One does not want to be forced to justify to a client in the US why one did not think it necessary to take the trip to Munich to defend a patent in the wake of a surprise loss. This consideration applies doubly to hybrid proceedings…On the other hand, ViCo oral proceedings have the substantial advantage of allowing clients from far afield to observe proceedings whilst also significantly reducing costs for cash-strapped clients.
It is difficult to know where the line should be drawn with respect to mandatory ViCo oral proceedings when there is a disagreement between the parties. Are the Boards of Appeal striking the right balance?
Author: Rose Hughes
Rose is a biotech and pharmaceutical patent specialist with over a decade of experience in intellectual property. Rose is a patent attorney at Evolve, where she leverages our unique fractional in-house model to provide clients with deep patent law expertise combined with the strategic commercial oversight typically associated with senior in-house counsel.
With a PhD in Immunology from UCL, Rose applies her technical background to complex innovations in biologics, cell and gene therapies, and the rapidly emerging field of AI-assisted drug development. Previously, Rose held the role of Director. Patents at AstraZeneca, where she was responsible for global IP portfolios and IP strategy at every stage of the pharmaceutical pipeline, from platform development and on-market commercialization to SPCs and patent term extensions.
A recognized thought leader in the field, Rose has been a regular contributor to IPKat since 2018, offering practical insights into European patent law developments. She is also a frequent speaker on the epi podcast, a guest lecturer for the Brunel University IP law Postgrad Certificate, and a contributing author to published books A User’s Guide to Intellectual Property in Life Sciences (2021) and Developments and Directions in Intellectual Property Law (2023).
