It has been possible for many years to carry out oral proceedings before the examining division of the European Patent Office (EPO) via videoconference. Until the COVID-19 lockdown situation hit, this was always at the request of the patent applicant. However, this has been reversed by the recent Decision of the President of the EPO dated 1 April 2020 which sets out that examining division oral proceedings will be carried out by videoconference by default. In person oral proceedings may still take place if there are serious reasons against holding the oral proceedings by videoconference. The example given for such serious reasons was the need to take evidence directly.
While this may result in more cases reaching examining division oral proceedings, the overall process is much the same as many cases were already being heard via videoconference.
In a major new change, the EPO has also launched a pilot project for carrying out opposition oral proceedings via videoconference. Opposition proceedings are post-grant inter partes proceedings and the change to hear these via videoconference represents a significant new addition to EPO practice. At the moment, the consent of both the patent proprietor and the opponent(s) is necessary for this to take place. It is also only being trialled where all parties will be presenting in the same language and hence no simultaneous translation is required.
The EPO has published a training video of a mock opposition which anyone can view to see how the new procedure works. This may be interesting for new trainees, patent applicants or owners that have not seen an opposition before, and even experienced practitioners looking to understand the new procedure.
While videoconference proceedings lack the human element which can be so useful in opposition cases, and hence I would not recommend them for important cases, there may well be situations where the early certainty provided may be desired. With business travel significantly restricted for the foreseeable future it may be a lengthy period of time before in-person oppositions can take place. If the parties would prefer to reach a conclusion sooner the switch to videoconference may be worth the trade-off. As a firm, Boult Wade Tennant LLP has already participated in our first videoconference opposition which was ultimately a technical and professional success.
It will be interesting to see the results of this pilot project and whether this leads to changes in EPO opposition practice once the COVID-19 restrictions are lifted. If you have an upcoming opposition, you may wish to discuss the options for videoconference with your Patent Attorney.
The EPO has been conducting a pilot project since 4 May 2020 for oral proceedings by videoconference before opposition divisions (see the relevant decision and notice). Under the terms of the project, oral proceedings before opposition divisions may be held by videoconference (via Skype for Business) if all parties as well as the division agree, and if the proceedings do not require the taking of evidence or – for the time being – interpretation.
