About the author
Howard Read is a partner and patent attorney at Appleyard Lees IP LLP. Having worked in industry and the academic sector before joining the profession, Howard understands the challenges faced in these areas and appreciates the commercial realities of, and the value derivable from, intellectual property.
In oppositions and appeals at the European Patent Office (EPO), oral proceedings may be the final opportunity for a party to present submissions before an adverse decision is announced.
Traditionally, oral proceedings are held on the premises of the EPO, in Munich, The Hague and Berlin. However, since 1998, oral proceedings before the Examining Division have alternatively been held, typically upon request by a party, by video conference. Previously held using dedicated IP technology, video conferences are now held via Skype for Business or Zoom.
Video conferencing and access to justice
The devastating coronavirus (COVID-19) global pandemic transformed adoption of holding oral proceedings by video conference, so as to sustain access to justice for parties. In 2019, about 900 oral proceedings before the Examining Divisions were held by video conference, increasing to more than 2,300 in 2020. Additionally, oral proceedings are now routinely held before the Opposition Divisions and the Boards of Appeal. In 2020, more than 300 oral proceedings before the Opposition Divisions were held by video conference and the EPO plans to achieve the same number monthly in 2021. Between May and October 2020, 120 oral proceedings before the Boards of Appeal were held by video conference.
Similarities and differences
The implementing of regulations and conduct of oral proceedings differ between the Examining Divisions, the Opposition Divisions and the Boards of Appeal. The following table can be used as a reference guide to how each of these conduct their Oral Proceedings:
|Oral Proceedings||Examining Divisions||Opposition Divisions||Boards of Appeal|
|In person||Serious reasons only||Serious reasons only (oral proceedings postponed)||By default (no end date)|
|By video conference||By default (no end date)||By default (pilot project extended to 31 January 2022)||Upon request by a party or of own motion (no end date)|
|Mixed or hybrid (in person and by video conference)||Not known||Under discussion||Upon request|
|Technical information||Skype for Business||Zoom||Zoom, Skype for Business|
|Filing of documents|
|Simultaneous translation||Not applicable||Yes||Yes|
|Taking of evidence (witnesses)||Yes||Yes||Yes|
|In public||No||Yes (generally)||Yes (generally)|
Here are some examples of an adverse decision: refusal of a patent application is an adverse decision for the Applicant while revocation is an adverse decision for the Proprietor, respectively. Conversely, maintenance of a patent may be an adverse decision for an Opponent while maintenance of a patent in amended form maybe an adverse decision for both the Proprietor and the Opponent. Such adverse decisions may have substantial economic consequences, thereby motivating the respective parties to achieve desired decisions.
Right to be heard
Oral proceedings are fundamental to the right to be heard under Article 113 EPC: the decisions of the European Patent Office may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. This is interpreted as not merely the right of a party to present comments but also as the right for the party to have their comments taken into consideration. The right to oral proceedings is codified by Article 116 EPC: “oral proceedings may take place at the insistence of the EPO, if it considers it expedient, or at the request of any party to the proceedings”.
EPO continually updated information
Examining Divisions and Opposition Divisions
Boards of Appeal
Filing of documents
Decision of the President of the European Patent Office dated 13 May 2020 concerning the filing of documents during telephone consultations and during interviews and oral proceedings held by video conference
Taking of evidence