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Procédures orales à l’OEB
Patents

How has the Covid-19 pandemic affected oral proceedings before the EPO?

Newsletter September 2020

In view of the present situation with Coronavirus (Covid-19), the European Patent Office is adopting the following preventive measures regarding oral proceedings before the different departments:

Oral proceedings before the Examining Division

At the European Patent Office (EPO), if the prosecution of a patent application through written exchanges does not lead to allowance of a patent, the applicant can request oral proceedings before the Examining Division.

Initially, such oral proceedings or hearings could only take place physically, within the premises of the EPO in Munich or the Hague. Since 2006, it is possible to request that the oral proceedings take place by videoconference. This possibility has since become a widespread practice, since it offers applicant the advantage of limiting the costs due to travel expenses.

Oral proceedings by videoconference have now become the rule during examination proceedings, as a consequence of the Covid-19 pandemic. Indeed, since April 2, 2020, all oral proceedings before the Examining Division are systematically scheduled to take place by videoconference. It is still possible for the oral proceedings to be held on the premises of the EPO at the applicant’s request or at instigation of the Examining Division, but only if there exist serious reasons against holding the oral proceedings by videoconference (such as, in particular, the need to take evidence directly).

Oral proceedings before the Opposition Division

During opposition proceedings against a granted European patent, the parties (patentee and opponent(s)) generally request oral proceedings.

Until recently, it was not possible to conduct such inter partes hearings by videoconference. By a decision dated April 14, 2020, the President of the EPO has created a pilot program allowing oral proceedings before the Opposition Division to be held by videoconference if all parties are in agreement.

In addition, the EPO has announced that, In view of the ongoing disruptions caused by the spread of coronavirus (COVID-19), no oral proceedings would be held before the Opposition Divisions on premises before January 4, 2021. All oral proceedings scheduled to take to place before the end of 2020 are therefore postponed, unless the parties have agreed to the hearing being held before the Opposition Division by videoconference, in accordance with the pilot program.

Oral proceedings before the Boards of the Appeal

In stark contrast, oral proceedings before the Boards of Appeal are now maintained, albeit under strict hygiene measures, and with an attendance restricted to a maximum of two people per party. Parties wishing to attend with more than two people must submit a reasoned request to that effect in advance of the oral proceedings. It will be for the board to decide on their request.

In addition, the Boards of Appeal have indicated that if parties cannot attend oral proceedings for which they have been summoned, they will now have to request a change of date 

In our recent experience, invoking the Covid-19 pandemic is not sufficient in order to obtain a change of date. For instance, even when all parties requested such a postponement due to corporate travel policy restrictions in view of the pandemic, the Board of Appeal nevertheless maintained an on-premises hearing.

In conclusion, the following conditions apply to oral proceedings before the different departments of the EPO:

 

Department Conditions for oral proceedings
Examination Division
  • Videoconference, unless exceptional circumstances
Opposition Division
  • Postponement at least until January 4, 2021, unless videoconference agreed upon
  • Videoconference possible according to pilot program, if all parties agree, at least until April 30, 2021
Board of Appeal
  • Maintained, with strict hygiene measures - Parties should consult the online calendar in case of change of location or time 
  • Videoconference possible if all parties agree

 

The pandemic has significantly accelerated the technological advances concerning oral proceedings at the EPO. The initial concerns due to this rapid evolution (such as the “loss” of non-verbal communication, the fact that hearings that require translation cannot yet be held by videoconferencing) are progressively giving way to new practices and to new methods for tackling oral proceedings at the EPO.

Apart from the public health motivations (which the Boards of Appeal seem to be less concerned about?), the use of videoconferencing is of great interest insofar as it limits the costs for the parties due to travel expenses. In addition, under the pilot program for oral proceedings in opposition, the parties, their representatives and any persons accompanying the parties or representatives may request to connect to the videoconference from different locations. Such a request must be made by the final date for making written submissions set in accordance with Rule 116 EPC (generally 1 or 2 months prior to the hearing). This represents a considerable advantage for applicants and opponents alike.

At Plasseraud IP, we have considerable experience in representing our clients, on a regular basis and over the past few years, at oral proceedings held by videoconference during examination proceedings.

We are delighted to be applying this expertise to inter partes oral proceedings and remain available to assist you in opposition cases with oral proceedings via videoconference.

Please do not hesitate to contact your usual attorney or to email us at info@plass.com for further information.

For more information, please visit the EPO website.

And more particularly: 

Decision of the President of the European Patent Office dated 1 April 2020 concerning oral proceedings by videoconference before examining divisions
- Decision of the President of the European Patent Office dated 14 April 2020 concerning the pilot project for oral proceedings by videoconference before opposition divisions
- Oral proceedings before the Boards of Appeal – reassessment of the measures adopted due to the coronavirus (COVID-19) pandemic