What has Happened?
In a Notice issued 10 November 2020 the EPO has announced that the postponement of in-person opposition hearings will be extended from 31 December 2020 to 15 September 2021. The pilot project under which hearings during opposition can be held via videoconference (ViCo) will also be extended to the same date. Crucially, for hearings scheduled after 4 January 2021, the consent of all parties to a ViCo will not be required. In general it will no longer be possible for parties to delay the hearing by refusing the ViCo option. This is a major shift in EPO practice.
Hearings (also known as oral proceedings) are a familiar feature of EPO procedure. They can arise during examination before grant, in oppositions after grant and in appeals from examination or opposition. Hearings generally take place before a three-member panel and are usually the grand finale of the proceedings. Stakes can be high and everyone needs to be on their “A” game.
Although the possibility of having hearings by videoconference, known as a ViCo, has been available for many years, in practice most hearings went ahead in-person. Attorneys, often accompanied by their clients, travelled to the EPO in Munich, The Hague, and occasionally Berlin, or to the EPO Boards of Appeal in Haar, just outside Munich. In 2019, only 14% of hearings were by ViCo. The pandemic changed all that, and the EPO is now directing parties to have hearings by ViCo. Recent changes include the adoption of Zoom to allow for simultaneous translation.
However, in many cases parties in oppositions have declined to have a hearing by ViCo, possibly for tactical reasons and/or concerns on the reliability of technology, which resulted in the hearings being postponed. The number or ViCo hearings has therefore remained relatively low, with a corresponding growth in the backlog of cases. The EPO has now cut through that by removing the requirement for consent to a ViCo.
The Current Situation
If and when a hearing will be held by ViCo depends on the type of proceedings.
Since 1 April 2020 hearings during examination, that is, before grant, have been held as a ViCo by default. In-person hearings are allowed only on request in exceptional cases, such as where it is necessary to take evidence from a witness. That appears to be the settled position of the EPO, and there is no suggestion it will change when the pandemic fades.
Any opposition hearings scheduled before 4 January 2021 where agreement for ViCo is not reached should be cancelled and a new date set, which is likely to lead to a delay of a year or more. Following the new announcement, consent to a ViCo is no longer required so the hearings scheduled after 4 January 2021 should proceed as ViCos on the date set in the summons.
As an exception, where serious reasons exist why a ViCo is not suitable, for example where there is a need to take evidence from witnesses, a party can request that an examination or opposition hearing may still proceed as an in-person hearing (although it will presumably be postponed until after 15 September 2021). Mere unavailability of videoconferencing equipment or objections to the reliability of videoconferencing technology will not qualify as “serious reasons”.
Some appeal hearings are still taking place in-person, in Haar, but are subject to cancellation due to travel and quarantine issues. Conscious of their heavy backlog, the Boards of Appeal have also started to use ViCo if all parties agree. The individual Boards vary, and so it is difficult to make generalisations. Nevertheless, there is anecdotal evidence that Boards delay any decision to postpone a hearing until very close to the hearing date. That acts as an incentive to the parties to request a ViCo, in order to avoid uncertainty and the possibility of preparing for an in-person hearing which is then cancelled at a late stage.
It may be that the Boards of Appeal will also revise their procedure to remove the need for parties to consent to a ViCo, but there is no announcement at the time of writing.
ViCo – The Pros and Cons
The following is a list of some positive and negative factors relating to ViCo hearings.
Check with your IT department that using Skype or Zoom is not contrary to policy (a number of companies ban use of Zoom). If so, you may need to buy an additional stand-alone computer for ViCo use, avoiding the need to connect to your company’s IT systems.
Plan your set up. Which computer will you use? For one person a laptop and headset works well but if you have two or more people in the same room you might be better with a single computer connected to a large screen and a high quality microphone and webcam. Also, being in your office may give you a more reliable internet connection than at home, and you will have access to your office facilities e.g. printers and IT staff.
Once you have decided on your set up, book a test call with the EPO support team to check the sound and vision meet their standards. They are currently very busy, and slots are limited, so do this well in advance of your hearing.
Join a ViCo as a member of the public to watch how it is done. This is quite common now, and the opposition divisions are not surprised by it. Forthcoming hearings can be found in the EPO oral proceedings calendar, and the online files will show if they are by ViCo.
Decide whether you wish to have others join the ViCo, e.g. your client or a technical expert. Others can join as members of the public, but it is better to announce them in advance to the Opposition Division or Board so that if they have difficulties connecting the Division or Board will allow time for them to deal with the problem.
Decide how you will communicate with your client or expert during the hearing. For example, you could set up a WhatsApp chat group, or simply call them during the breaks. Take care to ensure there is no chance your discussions will be overheard by other parties on the ViCo.
Sharing screens is allowed in ViCos and is considered to be equivalent to drawing on a flip chart in an in-person hearing. Consider whether you want to do that, and practise in advance. Alternatively, position a real flip chart in view of your camera and do a test call with a colleague to check they can see what you are drawing.
Written submissions during the hearing (e.g. claim amendments beyond those submitted in advance) are made by emailing the Division or Board of Appeal. Be ready to receive and reply to a test email at the start of the hearing. Ensure that you have up to date, electronic copies of the documents to hand, especially if you are acting for the proprietor.
Consider asking a member of your IT department or other support staff to be on hand to help. Bear in mind that the hearing will usually start at 9am CET, which is 8am in the UK.
Have your representative badge or passport ready. There will be an ID check before the hearing begins.
ViCos are recognised to be more tiring than in person hearings, so be prepared to ask for a break if you need one.
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Jim Denness Partner