“CAN YOU HEAR ME?”: ZOOM Fatigue Hits the EPO
November 15, 2021
By Denis V. Keseris and Chantalle Briggs
From family get togethers to work meetings, videoconferencing has become ubiquitous over the past eighteen months. While it has allowed us all to keep in touch during challenging times, after almost two years, many feel that videoconferences are no substitute for in-person meetings. The question of whether videoconference hearings are equivalent to in-person hearings was recently addressed by the Enlarged Board of Appeal of the European Patent Office (EPO). On October 28, 2021, the EPO issued a decision indicating that in some circumstances, oral proceedings by videoconference are an acceptable substitute that can be required without party consent. This decision may impact Canadian applicants in several ways, including through increased opportunity to directly participate in EPO examination, opposition, and appeal oral proceedings.
On June 3, 2020, the parties to an opposition appeal over European patent No. 1609239 were summoned to oral proceedings before a Technical Board of Appeal. The respondent requested postponement due to the COVID-19 pandemic. The oral proceedings were then rescheduled for February 8, 2021. Again, the respondent, supported by the appellant, asked for postponement, indicating that the case was not suitable for videoconference. When the Technical Board maintained the summons, the appellant then requested that the question of whether oral proceedings under Article 116 of the European Patent Convention (EPC) can be replaced by a videoconference without the consent of the parties be referred to the Enlarged Board of Appeal.
The question that the Enlarged Board of Appeal considered was framed as follows:
“During a general emergency impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises, is the conduct of oral proceedings before the boards of appeal in the form of a videoconference compatible with the EPC if not all of the parties have given their consent to the conduct of oral proceedings in the form of a videoconference?”[i]
The reference question drew significant interest, with over 45 amicus curiae briefs filed on either side of the issue. Some briefs argued that videoconferences were equivalent to in-person oral proceedings, and that the decision on whether to hold a proceeding by videoconference or in-person should be left with the boards of appeal. Further, it is in the interest of justice that cases proceed in a timely manner, adding to this the fact that videoconferences lessen the need for travel. Many briefs however argued that videoconference proceedings should always be dependent on the will of the parties because they are not equivalent to in-person proceedings, since all parties are required to have access to the relevant technology to participate; bearing in mind that technical issues can arise. It is also difficult for counsel and clients in different locations to confer during videoconference proceedings. Another challenge to videoconferencing is the inability to fully read the body language of the board, which makes it more difficult to understand how arguments are received. Finally, yet other briefs argued that under normal circumstances, party consent for videoconferences should be required, but considering the public emergency created by the COVID-19 pandemic, requiring videoconferencing can be justified.
The Enlarged Board determined that based on currently available technology, videoconferences cannot be put on the same level as oral proceedings held in person,[ii] which it deemed the “gold standard”.[iii] However, the Board noted that Article 116 EPC does not indicate what form ‘oral proceedings’ are to take;[iv] both in-person proceedings and those held by videoconference fit within the definition.[v] The Enlarged Board noted that though they are not equivalent, this does not mean “that the right to be heard or the right to fair proceedings cannot be respected when oral proceedings are held by videoconference”.[vi] However, at least until the technology improves, in-person proceedings should be the default, which can only be denied with good reason.[vii]
In the context of the case at hand, the Enlarged Board determined that it was justified for the Board “to overrule the wish of the parties and to hold oral proceedings by videoconference”.[viii]
What this could mean for Canadian Applicants
It is unclear whether the EPO will continue to impose oral proceedings by videoconference once the pandemic is over. The Enlarged Board provided some guidance on considerations that are deemed not relevant to a decision to impose oral proceedings by videoconference, including administrative issues at the EPO itself, e.g., the availability of conference rooms and interpretation facilities, or efficiency gains. However, given the importance the Enlarged Board placed on the quality of videoconferencing technology, the improvement of such technology could tip the balance in favour of oral proceedings by videoconference.
Therefore, so long as the COVID-19 pandemic persists, Canadian applicants can take advantage of oral proceedings by videoconference at the EPO, as applicants are allowed to be present in oral proceedings and often also to speak on their own behalf.
Permitting videoconferencing, even imposing it, could therefore democratize EPO oral proceedings, which have in the past been somewhat opaque. When oral proceedings are held by videoconference, Canadian applicants (and their Canadian counsel) can be given the opportunity to provide invaluable real-time advice to their European counsel. Accordingly, Canadian applicants have a real chance at yielding better outcomes as a result of increased use of videoconferencing.
[i] OJ 2021 G 0001/21, Decision of the Enlarged Board of Appeal, European Patent Office, at para 20.
[ii] Ibid at para 38.
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