T 2432/19: Boards of Appeal declare in-person proceedings new “gold standard”

In July 2021, an EPO press communiqué confirmed that compulsory video conferencing is admissible, under the European Patent Convention, in appeal proceedings “in a general emergency”. Then, in November 2021, the Enlarged Board of Appeal released its final reasoning in G 1/21. This confirmed that, while video conferencing is compatible under the EPC, in-person proceedings are preferable and indeed should be the default position. Nevertheless, the boards have continued to undertake many proceedings via video conference.

T 2432/19 sets it straight

Now the Boards of Appeal have cemented their view that in-person hearings should be the default, with video conferencing only provided as a very last resort. A decision published on 8 May, arising from a hearing on 25 April, considered the previous G 1/21 provisions, after an appeal to restore revoked patent EP 2 087 873.

The boards note that “video conferences, at least according to current technology, can only provide a suboptimal form of communication, parties have a right to the optimum format for oral proceedings, i.e. in-person oral proceedings, that can only be denied under very limited conditions.”

Thus, it seems that the Boards of Appeal have nailed their colours to the mast, at least where appeal proceedings are concerned. But, with video conferencing a key component of the EPO’s digital strategy, how the boards apply this in practice might contravene the office’s wider view on hybrid or remote participation.

A new can of worms

Appellant Uni-Charm, which owns EP 873, requested that the EPO maintain the revoked patent as granted, or based on one of the patent’s auxiliary requests one to nine. According to the decision, Uni-Charm also requested that the oral appeal proceedings be held by video conference, despite the boards summoning parties to the Munich premises. The appellants apparently provided no reasoning for this.

Once the board had issued its provisional opinion, maintaining the patent’s revocation, it also communicated that it would consider the request for a video conference. However, it ultimately rejected the proposal, instead summoning parties to Munich. In essence, T 2432/19 stipulates:

1. Although the order of G 1/21 refers to an emergency situation, it follows from the ratio decidendi of this decision that in-person oral proceedings can only be denied under very limited conditions, even in a situation of general emergency such as a pandemic.
2. Due to the fact that video conferences, at least with current technology, can only provide a suboptimal form of communication, parties have a right to the optimum format for oral proceedings, i.e. in-person oral proceedings, that can only be denied under very limited conditions.
3. Further, e contrario it also follows from the reasons underlying the Enlarged Board’s decision, that parties cannot force Boards to conduct video conferences instead of in-person oral proceedings.

An appropriate format

According to Article 15a(1) Revised Procedures of the Boards of Appeal (RPBA) 2020, they may hold proceedings via video conference ‘if it is appropriate to do so’. It seems that in this instance, the board found it inappropriate, with in-person proceedings the ‘optimum format’. However, since the EPO handed down G 1/21, multiple hearings have taken place via video. Earlier in May, for example, JUVE Patent reported on the revocation of an Ojah plant-based protein patent. In this instance, all proceedings from opposition to appeal took place via video.

Since early 2020, the EPO has conducted hearings at least partially via video conference, with Zoom its favoured platform. Indeed, during the initial COVID pandemic, the EPO made video conference hearings mandatory. This had caused some consternation among parties, with some reasoning that not conducting hearings in person constitutes a disadvantage. When the EPO released G 1/21, it confirmed in-person hearings as the default, but also stated compulsory video conferencing were admissible in appeal proceedings under the EPC “in a general emergency.”

Pandemic no exception

The wording was vague, with the lack of use of the word ‘pandemic’ notable. The order suggests that other globally impactful emergencies – perhaps a natural disaster or widespread transport disruption – could also constitute a ‘general emergency’. Furthermore, the G 1/21 order also considers that Europe could see future waves of COVID-19. But it is clear that, for now, the office considers the immediate threat of COVID-19, and its variations thereof, a moot point.

In fact, T 2432/19 states that “even a situation of general emergency such as a pandemic” would not necessarily mean video conferencing returns to the default option. However, the decision does not go so far as to suggest how the Boards of Appeal might approach in-person hearings in such a situation.

Opposition divisions oppose

On the other hand, the EPO takes a different view for opposition proceedings. In November 2022, it announced that video conferencing would be the default format of oral proceedings in opposition from 1 January 2023. The final decision came around two years after the implementation of video conferencing as standard, in the midst of the COVID-19 pandemic.

At the time, president António Campinos said, “The pilot has taught us all many valuable lessons and allowed us to test various ways of working. After more than two and a half years it is right that we now provide clarity and adopt VICOs as the standard format.”

Thus, T 2432/19 follows the conclusion of the pilot project for oral proceedings in opposition by video conference. The project intended to test the feasibility of the method going forward, with proceedings seeming to go more or less smoothly. Furthermore, with patent attorneys from across Europe representing parties at the EPO, less travel is having beneficial impacts. For example, less commuting means more time with families, and less strain on the environment. Time will tell whether the Boards of Appeal’s latest reasoning will trickle down to the Opposition Division – or whether the office is rethinking its digital-first approach.

For Uni-Charm
Baron Warren Redfern (Brentford): Edward Johnstone

For Essity Hygiene and Health Aktiebolag
Essity IP Department (Stockholm): (No information)

Boards of Appeal, European Patent Office, Haar (Munich)
Mike Harrison (chairman); Pedro Cipriano, Wilhelm Ungler (members)