Robert Watson reports on the lobbying of EPO by FICPI, which may have contributed to the EPO announcing that all oral proceedings in Oppositions scheduled until 14 September 2020 which had not either already been confirmed to take place by videoconference or will be held by videoconference with the parties’ consent under the pilot project would be postponed; and that the Boards of Appeal will only proceed with hearings where the representatives can attend the premises in Haar or can agree to video conferencing
As the effects of Coronavirus on travelling and face-to-face meetings became apparent, an issue of concern to many European patent attorneys was how to attend oral proceedings at the European Patent Office.
Oral proceedings occur in the large majority of opposition and appeal cases, and in some examination cases, and take place in the EPO’s offices in The Hague, Munich and Berlin, as well as at the Board of Appeal in Haar (near Munich).
The timeline of Covid-19 impact on EPO work
By 1 March 2020, the EPO had cancelled staff travel and large external meetings, and restricted access to the EPO for those who had recently visited China, South Korea and the “red” area of Italy.
On 6 March, the EPO said oral proceedings in examination and opposition would in principle continue, but not for those who had visited high risk areas.
The possibility of video conferencing for opposition hearings was mentioned for the first time.
Italy was the first European country to ban non-essential movement on 10 March. On 13 March 2020, the epi (the body of all EPO professional representatives) reported members experiencing difficulties in postponing hearings on request. Many more countries in Europe banned non-essential movement shortly afterwards
On 15 March 2020, the EPO decided to extend deadlines falling on or after 15 March to 17 April 2020 (the most recent update of this extended deadlines to 2 June 2020) using provisions about general dislocation (Rule 134(2) EPC).
On the same day the Boards of Appeal said they would not hold oral proceedings between 16 and 27 March 2020 – the Boards of Appeal are independent from the EPO, and their premises in Haar have less space for social distancing, explaining their different approach.
Video conferencing on the table
There were discussions at the SACEPO Working Party on rules on 31 March 2020, which Antonio Pizzoli attended remotely, where changing the default for examination Oral Proceedings to video conference was discussed, as well as the possibility of using video conferencing for opposition oral proceedings.
A Decision of the President on examination Oral Proceedings was published on 1 April 2020, to come into force on 2 April 2020. A pilot on video conferencing for opposition was announced in a Decision of the President on 14 April 2020.
As of 20 April, in-person oral proceedings scheduled up to 30 April 2020 had been postponed, and on 5 May 2020, it was announced that in person oral proceedings up to 2 June 2020 had been postponed, which was a much longer postponement than previously announced.
Regarding the Boards of Appeal, they made the following announcements:
- On 20 March, that no oral proceedings until 17 April 2020
- On 1 April, that no oral proceedings until 30 April 2020
- On 17 April, that no oral proceedings until 15 May 2020
- On 6 May, the resumption of oral proceedings from 18 May 2020 (on a limited basis) and that oral proceedings could take place by video conferencing. A public viewing room at Haar for video conferenced appeals was announced on 15 May.
Working party representations
As the situation regarding oral proceedings developed, a small working group first met informally (and virtually) with a representative of the epi, on 23 April 2020, to discuss the various issues.
Information was also sought from FICPI’s Study & Work Committee on European Patents (CET 4) on their views of video conference oral proceedings, which is expected to lead to further study of this issue.
Informal discussions with senior staff at the EPO and within the Boards of Appeal were also arranged to explain the difficulties the late general postponements of oral proceedings were causing our members who were European patent attorneys and their clients – and to seek a longer general postponement of in-person oral proceedings.
As these discussions did not lead to results within a reasonable timescale, this letter from FICPI President, Julian Crump, was drafted and sent to both President António Campinos and Carl Josefsson (the President of Boards of Appeal) on 14 May 2020, following approval by the Bureau.
Successful resolution – video conferencing accepted
On 21 May, the EPO announced that all oral proceedings in opposition scheduled until 14 September 2020 which had not either already been confirmed to take place by videoconference or would be held by videoconference with the parties’ consent under the pilot project would be postponed.
This announcement, in line with FICPI’s submissions, was much welcomed by both the profession and their clients.
Additionally, on 25 May 2020, the Boards of Appeal confirmed their practice to only proceed with hearings where the representatives can attend the premises in Haar or agree to video conferencing. We understand that only a limited number of appeal hearings are proceeding, although the number will likely increase as travel restrictions are eased.
FICPI’s Study & Work Committee on European Patents (CET4) will continue to monitor the situation, as well as working on the issue of Video Conference Oral Proceedings.
FICPI’s view and involvement
As the only worldwide organisation for independent IP attorneys, FICPI members are committed to high quality work, complying with all relevant regulations. When situations change such as new technology or the impact of Covid-19 coronavirus, FICPI is able to promote common solutions and advocacy for private practice on topics around patents and trade marks.
Look out for upcoming webinars on substantive issues.