T 2613/19 - Mandatory ViCo OP at the Boards

 Key points

• Board 3.3.09, making its point in an obiter dictum: “The board and all the parties were in agreement that oral proceedings held by video conference constitute oral proceedings under Article 116 EPC. At present, this understanding reflects the interpretation of this provision according to the case law (see T 2320/16, Reasons 1) and as codified in Article 15a RPBA.”
• “It may be that the Enlarged Board of Appeal at some future date will decide in case G 1/21 that this is not the case. Any such decision would involve a change in the interpretation of law. The Enlarged Board of Appeal normally seeks to ensure that such changes do not have a retroactive effect (see G 3/19, Reasons XXIX). In light of these considerations, the board saw no reason to postpone the oral proceedings and its decision in this case until the Enlarged Board of Appeal had issued a decision in case G 1/21.”
• The decision at hand was taken during vico oral proceedings on 12.05.2021, written decision issued 26.07.2021.
  
  
• There is also an interesting point about Art. 123(2). The application as filed was > 200 pages yet claim 1 at issue lacks basis. Furthermore claim 2 as filed was a list of 40 clauses and the feature that "one or more of all" of these clauses were present. The patentees argued that "The features of claim 2 as filed could be combined due to the formulation "one or more or all". The only question to be answered was whether there was a pointer to the specific combination made. This question was to be answered in the positive." 
• The Board finds that “there is no pointer to select only features (i) and (ii) from original claim 2 or any of the other passages cited by the appellants as a basis for the amendment in the description.”
• “the board is not convinced, as argued by the appellants, that the relative position of a list member of the list recited in claim 2 as filed indicates a corresponding relative preference for that member. Thus, the first two list members would not be considered as being the first two most preferred variants of claim 2 as filed.”
• “Likewise, the statement on page 87, lines 9 to 10 of the description as filed that each possible combination defining the lipid as described in the application is also encompassed does not provide the basis for the combination of exactly the two features (i) and (ii) as specified in original claim 2. Consequently, the board concludes that the list of claim 2 as filed discloses 40 list members of an equal degree of preference. Hence, to arrive at claim 1 as amended, two independent selections have to be made in original claim 2.”

T 2613/19 -

https://www.epo.org/law-practice/case-law-appeals/recent/t192613eu1.html

Reasons for the Decision

1. Request to postpone the oral proceedings (Articles 112a(2)(c), 113(1) and Rule 106 EPC)

The appellants argued that their right to be heard was violated by the holding of the oral proceedings by video conference. The appellants put forward that the COVID-19 restrictions in France (where the appellants' representatives are located) were different from those in Germany (where the respondent's representatives are located) and that the French restrictions had a negative impact on the appellants' preparation of its case. Thus, the appellants implicitly argued that there was an inequality between the parties in that it was easier for the respondent to prepare its case due to the less onerous restrictions it faced. It is this inequality that is the cause of the violation of the right to be heard.

The appellants have not argued that oral proceedings held by video conference as such inevitably lead to a violation of the right to be heard or that they are not oral proceedings within the meaning of Article 116 EPC. Rather, they submitted that they had no objection in principle to the holding of oral proceedings by video conference if it was equitable to do so.

The above arguments were made by the appellants at the oral proceedings before the board. The appellants limited their arguments to generalities and neither carried out any specific analysis of the differences between French and German COVID-19 restrictions nor indicated how these differences had prejudiced their case preparation as compared to the respondent's case preparation.

The board is thus of the opinion that each party has had similar difficulties in preparing its case and that an "equality of arms" prevails between the parties. Such difficulties have not prevented the parties from presenting their cases to the board in the oral proceedings before it, and the appellants have not suggested that this was the case. The board thus finds that no violation of the appellants' right to be heard has taken place. The board thus dismisses the appellants' objection under Rule 106 EPC.

The appellants have not argued that the referral in Enlarged Board of Appeal case G 1/21 requires the postponement of the oral proceedings in this case. They only argued that the outcome of G 1/21 could affect the validity of the present decision. The board and all the parties were in agreement that oral proceedings held by video conference constitute oral proceedings under Article 116 EPC. At present, this understanding reflects the interpretation of this provision according to the case law (see T 2320/16, Reasons 1) and as codified in Article 15a RPBA. It may be that the Enlarged Board of Appeal at some future date will decide in case G 1/21 that this is not the case. Any such decision would involve a change in the interpretation of law. The Enlarged Board of Appeal normally seeks to ensure that such changes do not have a retroactive effect (see G 3/19, Reasons XXIX). In light of these considerations, the board saw no reason to postpone the oral proceedings and its decision in this case until the Enlarged Board of Appeal had issued a decision in case G 1/21.