EPO Boards of Appeal

German patent firm alliance opposes compulsory video oral proceedings

In May, the Enlarged Board of Appeal will hear a case on the lawfulness of conducting oral proceedings by compulsory video conference in case G1/21. Companies, professional associations and patent attorneys have filed 22 amicus curiae briefs on the issue. Among them, an alliance of seven well-known German patent attorney firms is taking a position on the issue of video conference without party consent. Years ago, the same alliance advocated for a separation of the office and the EPO court.

28 April 2021 by Christina Schulze

Patent firm alliance, Germany Oral proceedings via video are now the reality at the EPO and its Boards of Appeal. But patent attorney firms and companies, especially those based in Germany, are questioning the legal basis of compulsory oral hearings ©aerogondo/ADOBE STOCK

For the European Patent Office and the Boards of Appeal, oral proceedings by video conference are an opportunity to conduct hearings without health risks during coronavirus. Furthermore, they are a way to prevent a severe case backlog. Initially, however, video hearings were only possible with full party consent.

However, at the beginning of the year, the EPO and the Boards of Appeal changed this practice. In their view, too many hearings failed to take place, as too often one party did not agree to the video conference solution.

G 1/21 referral to Enlarged Board

A Board of Appeal has referred the dispute Andrew AG vs. Rohde & Schwarz to the Enlarged Board of Appeal. Now, the new policy is subject to a judicial review by the EPO’s highest judicial body. The court will clarify whether compulsory oral hearings by video conference are compatible with the European Patent Convention.

The EBO will hear the submission on 28 May 2021, via video conference. Therefore, interested members of the public can also watch via video link.

The parties involved had until 27 April to submit comments on the much-debated issue. A total of 22 companies, law firms, individuals as well as professional and industrial associations used the opportunity. In addition to well-known corporations like Bayer, Siemens, BASF, Philips and Hoffmann-La Roche, various patent attorney associations also filed amicus curiae briefs.

Among them are the associations of European, German and Swiss patent attorneys. For example, the Patentanwaltskammer (Chamber of Patent Attorneys), BDPA (Federal Association of Patent Attorneys), Vespa, the Institute of Professional Representatives before the European Patent Office (epi) and the European Federation of Intellectual Property Agents in Industry (FEMIPI).

Numerous patent attorney firms also submitted comments, including Christian Menges from Munich-based firm Diehl & Partner, and French firm Plasseraud.

Powerful German patent firm alliance

Several large German patent attorney firms also submitted a joint comment. Among them are Boehmert & Boehmert, Cohausz & Florack, Grünecker, Hoffmann Eitle, Maiwald and Vossius & Partner. Ursula Kinkeldey, former presiding judge at the EPO Boards of Appeal, also signed the comments. Kinkeldey now works as a solo lawyer.

The firms are opposed to compulsory oral hearings by video conference. They argue that the EPO should only conduct oral hearings via video conference with the consent of all parties.

Gottfried Schüll, partner at Cohausz & Florack, says, “We believe that, by making video conferences compulsory, the EPO is not respecting the established standard for oral hearings in the contracting states and is thereby granting itself authorities at constitutional level.”

An expert opinion submitted by Siegfried Broß supports the comments by the seven Munich and Düsseldorf patent attorney firms. The former German Constitutional Court judge concludes that, against the backdrop of the European Convention on Human Rights and general principles of the rule of law, it is unlawful to make oral hearings by video conference compulsory for the parties involved.

However, according to Broß, oral hearings via video conference should be possible if the parties agree.

Separating the powers

Broß and some of the firms have already engaged in trying to control the powers of the EPO and the Boards of Appeal. During the era of controversial EPO president Benoît Battistelli, Broß had strongly advocated for a separation of the office and the EPO court. Ursula Kinkeldey also repeatedly called for a clearer division of the two parts of the EPO.

Law firm Maiwald is also supporting a complaint from client Perdue at the German Constitutional Court, concerning the lack of a legal hearing at the EPO court.

Additionally, Maiwald was a member of a group of four which sent an open letter to Battistelli, and designated successor Antonio Campinos, in 2018.

In the letter, parties expressed concerns regarding the quality of the EPO’s patent granting procedure. This led to a heated debate among patent experts about the quality of patent granting. Besides Maiwald, the group comprised Grünecker, Hoffmann Eitle and Vossius & Partner. Later, Cohausz & Florack also publicly supported the cause.

UK firms take different view

Although many German patent attorneys are against compulsory video hearings, numerous supporters abound. Currently, hardly any other topic is being debated so passionately.

On one hand, in certain instances it is in one party’s interest to delay the case. On the other, opportunities for patent attorneys to participate in in-person hearings vary greatly depending on where they are based. For example, patent attorneys living in Munich and The Hague have it easier than their international colleagues to take part in opposition division hearings, or proceedings at the Boards of Appeal in Haar.

In addition, many patent attorneys tell JUVE Patent they feel that judges are more difficult to convince in proceedings via video conference. In particular, patent attorneys would prefer to conduct economically high-stakes hearings, or those with many participants, in person.

Only a few, like Plasseraud, strongly argue that video hearings are a good solution.

Generally, UK law firms are also happy to use video conferencing. Furthermore, some count on this to divert business away from strong Munich firms. A presence at the EPO’s headquarters could become a less important factor in clients’ hiring practices.

The majority of companies submitting comments reject compulsory video conferencing as the new normal for EPO oral hearings.

Andrew AG against Rohde & Schwarz

The submission to the Enlarged Board of Appeal is based on a dispute over a patent of Andrew AG. In the case (T 1807/15), the Technical Board initially postponed the hearing due to the coronavirus pandemic. The board then rescheduled it for 8 February 2021 as an oral proceeding in the form of a video conference. However, this was without the parties’ consent.

German electronics and security technology company Rohde & Schwarz had filed an opposition against a patent of the Swiss company Andrew AG.

Alice Findlay, of London firm Reddie & Grose, represents Andrew AG. Rohde & Schwarz works with Thomas Körfer from Mitscherlich in Munich. (Co-author: Mathieu Klos)