Just Patent Law Blog: G 1/21 - Vico oral proceedings

2 December 2021

Key points

Let's walk through the written decision in case G 1/21 (already extensively reported elsewhere, of course).
“The Enlarged Board finds it justified to limit the scope of the referral to oral proceedings before the Boards of Appeal and to take the specific context of the referral, the COVID-19 pandemic, into account. This is in line with earlier decisions G 1/19 [] and G 2/19 [] in which the Enlarged Board took the position that a referred question may remain unanswered to the extent that it exceeds the real need for clarification.”
“The Enlarged Board is of the view that in order to clarify the legal framework for holding oral proceedings by videoconference it is appropriate also to consider the compatibility of this format with Article 113 EPC” (and not only Article 116 EPC).

The Enlarged Board adds that “the right to be heard is the fundamental principle and the right to oral proceedings is an expression of that principle”, which may be true but does not mean that oral proceedings can be dispensed with if the party is heard extensively in the written proceedings (no matter how much the first instance departments may wish so).

As to the term ‘oral proceedings’: “There is thus no basis in this word for limiting its scope to in-person hearings in a courtroom before the deciding body.”.
After further analysis: “The Enlarged Board therefore concludes that oral proceedings in the form of a videoconference are oral proceedings within the meaning of Article 116 EPC.”

The Enlarged Board notes that if they were not, “This in turn would give rise to questions as to legal status of a videoconference, and for example whether parties can be asked to state their final requests or whether the board can close the debate and announce the decision at the end of it. Such questions would moreover arise irrespective of the consent or non-consent of all of the parties, because if videoconferences are not oral proceedings this also applies when the parties have consented to them. ”

R.44:“ In the preceding paragraphs the Enlarged Board set out the reasons for its conclusion that oral proceedings by videoconference are oral proceedings within the meaning of Article 116 EPC and, although not fully equivalent to oral proceedings held in person, normally do not infringe a party's right to be heard or the right to fair proceedings.”

The key point of the whole decision appears to be the above remark that vico oral proceedings are oral proceedings within the meaning of Article 116 EPC yet are not fully equivalent to oral proceedings held in person.
In my view, this is a very smart move of the Enlarged Board to find a way out of the strict dichotomy that was perceived in the public debate up to the hearing.

“hearing in person is the optimum format ... It is also the format that the legislator had in mind when drafting Article 116 EPC. Therefore, in-person hearings should be the default option. Parties can only be denied this option for good reasons.”

At the ellipsis, the EBA adds that “a hearing in person is the optimum format or, to use a term well known in the field of European patent law, it is the gold standard” (see G 2/10 of course).

The Enlarged Board in r. 46 appears to reject the argument that "the choice of format is an administrative matter which, like other organisational aspects of oral proceedings, can be decided by the instance scheduling the oral proceedings".
The Enlarged Board: “Firstly ... the Enlarged Board holds the view that a videoconference normally provides the basic conditions for an opportunity to be heard and to present a case. If in a particular case a videoconference is not suitable, the oral proceedings will need to be [i.e., must be] held in person. ”
“Secondly, there must also be circumstances specific to the case that justify the decision not to hold the oral proceedings in person. These circumstances should relate to limitations and impairments affecting the parties' ability to attend oral proceedings in person at the premises of the EPO. ... This decision should not be influenced by administrative issues such as the availability of conference rooms and interpretation facilities or intended efficiency gains. It is the EPO's responsibility to make available the necessary resources for facilitating the conduct of proceedings provided for in the EPC.”

Implicitly, since the ellipsis is the omitted sentence “In the case of a pandemic, such circumstances could be ...”, the other sentences of the paragraph extend beyond the covid-19 pandemic.

“Thirdly, the decision whether good reasons justify a deviation from the preference of a party to hold the oral proceedings in person must be a discretionary decision of the board of appeal summoning them to the oral proceedings.”

I'm not entirely sure what this paragraph means, except that the Enlarged Board does not wish to receive petitions for review on the point. The decision may be discretionary, but presumably only when the first and second factor of G 1/21 are complied with.

“During a pandemic delays in finalising appeals could apply to a great number of pending cases and therefore seriously impair the administration of justice. In these circumstances it was justified to overrule the wish of the parties and to hold oral proceedings by videoconference.”
“Finally, it would appear that while in some cases Contracting States and international courts have introduced the possibility of imposing videoconference hearings on the parties during the COVID-19 pandemic, there has so far been considerable reticence about prolonging this measure beyond the current emergency situation. In a similar way, the Enlarged Board has limited the scope of its answer in the present referral to a period of general emergency.”
The Enlarged Board expresses no view on Article 15a RPBA.

EPO G 1/21; G 0001/21;

decision text omitted.

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