COVID-19 has affected many aspects of conventional life and business and the European Patent Office (EPO) is no exception as social distancing requirements have recently resulted in a decision that all Oral Proceedings before the EPO’s examining divisions are to be held via video conference (VC). While VC facilities have been available to the EPO for more than 20 years, the vast majority of oral proceedings during examination have been held in person at one of the EPO branches in Munich, The Hague, or Berlin. More radically, the EPO have initiated a pilot project to assess the suitability of VC for opposition division oral proceedings which will run from 4 May 2020 until 30 April 2021.
These are interesting developments for Australian applicants of European patent applications for obvious cost savings where representatives no longer incur travel expenses in attending oral proceedings, but more excitingly, for the opportunity to join the VC proceedings, particularly where the EPO agree to schedule an early morning VC.
Oral proceedings before the EPO’s examining division
Oral Proceedings before the examining divisions of the EPO will be held via VC by default from 4 May 2020. If there are serious reasons against holding the oral proceedings by VC (e.g. if evidence needs to be taken directly), oral proceedings may still be held in person at the EPO at the request of the applicant, or at the instigation of the examining division. If the applicant requests oral proceedings in person and that request is refused, the reasons are provided but interestingly, the refusal is not appealable.
Members of the examining division may also connect to the oral proceedings from different locations and examiners will vote on and debate matters by a separate VC. The oral proceeding will be deemed to be held at the location where the examining division is set up, and documents will be filed by an approved form of electronic communication. Unsurmountable technical problems will result in issuance of a new summons to oral proceedings. If the applicant or presumably their representative fails to connect for other than technical reasons, the oral proceedings may continue in their absence.
This decision applies to oral proceedings before examining divisions the summons to which is notified on or after 2 April 2020, or to oral proceedings scheduled after 17 April 2020 whereby the summons indicated that they are to be held by VC and was already notified prior to 2 April 2020.
Oral proceedings before the EPO’s opposition division
Oral proceedings before the opposition division can be held by VC if all parties summoned and the opposition division agree. The opposition division will not agree if taking of evidence by hearing witnesses, parties or experts or by inspection is required, or if there are other serious reasons for not doing so (e.g. a requirement for interpretation, at least until technical infrastructure is arranged). If the opposition division decides that evidence is to be taken during oral proceedings, the proceedings will be adjourned and the parties will be summoned to oral proceedings at the EPO’s premises.
A party, their representatives, and any accompanying persons can join the oral proceedings held by VC from different locations as long as this does not have an impact on the stability of the VC connection. As oral proceedings in opposition proceedings are public, the VC will be streamed in a dedicated room on the premises of the EPO, or where prior notice is given, interested members of the public will be provided with a link for connecting to the VC.
Written submissions during the oral proceedings are to be made by email, or exceptionally by fax, and will be transmitted to the other parties by email. Screen sharing will be allowed on consent, but items displayed in that way will not be considered as a submitted document.
The opposition division will facilitate an assessment of parties’ interest in holding oral proceedings by VC as early as possible in the proceedings. Where an agreement on VC is reached before the summons to oral proceedings is issued, the summons will indicate that the oral proceedings are to be held by VC. Where a summons has been issued to oral proceedings on the premises of the EPO, and the parties express their agreement to the oral proceedings being held by VC only thereafter, the opposition division, if in agreement, will inform the parties that oral proceedings will be held by VC on the date indicated in the summons. If the opposition division does not agree, or if there is no agreement by all parties, the opposition division will inform the parties that the proceedings will be conducted as indicated in the summons.