Coronavirus is directly impacting many legal patent bodies and proceedings around Europe. JUVE Patent brings you the latest news regarding COVID-19, also known as coronavirus, and its impact on the European IP market and the European Patent Office.
25 March 2021 by Amy Sandys
EPO president António Campinos has released a statement determining that the current practice of hearing Boards of Appeal hearings via video, even without the consent of both parties, can continue. The president released the decision in reference to referral G1/21, which Board of Appeal 3.5.02 made in case T1807/15. It refers to Article 116 of the European Patent Convention.
The decision states, “The President of the EPO has decided that in order to guarantee access to justice and ensure the functioning of the EPO, oral proceedings before examining and opposition divisions will continue to be held by videoconference… [and] without requiring the agreement of the parties.”
Furthermore, on 1 April 2021, the new Article 15a of the Rules of Procedure of the Boards of Appeal on oral proceedings by video conference enters into force. The EPO’s Administrative Council approved the measure on 23 March 2021. It confirms the original Boards of Appeal Committee (BOAC) decision from 11 December 2020, to go ahead with video hearings without the consent of both parties being necessary.
According to the EPO, Article 15a states:
(1) The Board may decide to hold oral proceedings pursuant to Article 116 EPC by video conference if the Board considers it appropriate to do so, either upon request of a party or of its own motion.
(2) Where oral proceedings are scheduled to be held on the premises of the European Patent Office, a party, representative or accompanying person may, upon request, be allowed to attend by videoconference.
(3) The Chair in the particular appeal and, with the agreement of that Chair, any other member of the Board in the particular appeal may participate in the oral proceedings by videoconference.
Board of Appeal 3.5.02 has referred a question regarding the validity of holding compulsory video hearings, without the consent of both parties, to the Enlarged Board of Appeal. The question states, “Is the conduct of oral proceedings in the form of a video conference compatible with the right to oral proceedings as enshrined in Article 116(1) EPC if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a video conference?”
Observers doubted whether the referral would go ahead, since the opponents in case T1807/15 regarding EP 16 09 239 withdrew their initial request for an Enlarged Board of Appeal referral. JUVE Patent covered the background to the appeal, and the general market feeling towards compulsory video hearings, here.
The full interlocutory decision which led to the referral is available on the EPO website.
The EPO has successfully held its first-ever eEQE (online European Qualifying Examination). For the first time since the exam was established in 1979, the EPO held the written test online from 1 to 5 March 2021. According to the EPO the digital edition, which was adapted to follow European coronavirus guidelines, involved “almost 4000 candidates, five exams split over eleven flows, 130 exam pages in a choice of languages, 24 hours of examination in five days, 80 online invigilators, 400 people involved in preparations, a secured examination environment, and audio and image supervision.”
However, it appears the EPO’s long-term planned already involved this transition to digital. It says, “What had initially been planned as a major change for the years ahead was fast-forwarded due to the Covid-19 pandemic. Under the Strategic Plan 2023, the EPO plans to deliver a complete, end-to-end digital EQE with a possible revision of the EQE legal framework, format and content of the exam. Due to the pandemic, and after the cancellation of the EQE2020, the greatest challenge of holding the exam online was achieved within just a few months.”
The EQE is a pre-requisite exam for almost anyone wishing to be admitted as a qualified European patent attorney, and to represent clients before the EPO.
In the light of the developments in the coronavirus pandemic, the Boards of Appeal have reassessed some of their measures for the arrangement and conduct of oral proceedings. In particular, the BoA revised the practice on conducting oral proceedings using videoconferencing (VICO) technology. From 1 January the boards may conduct oral proceedings by VICO even without the agreement of the parties. This has been made clear by the BoA Committee in adopting a new Article 15a in the Rules of Procedure.
President of the EPO, Antonio Campinos, has announced the extension of a pilot project for oral proceedings until 15 September 2021. Importantly, after 4 January 2021, parties can no longer ‘opt out’ of using video conferencing software. According to the EPO, this is to continue “guaranteeing effective access to justice and to avoiding a continuous increase in the number of unresolved oppositions.”
From today, the European Patent Office will test video conference platform Zoom for the first time for oral proceedings involving multiple opponents, and/or requiring simultaneous interpretation. The focus on Zoom is a development of the pilot project for oral proceedings in opposition by video conference, with the first platform being Skype for Business.
According to the EPO, “This technical development will allow more cases to be concluded and thereby contribute to greater legal certainty; it also follows suggestions from user associations.” Find more information about the use of video conferencing at the EPO here.
The UK Intellectual Property Office ended its ‘interrupted days’ yesterday, 29 July. Previously, the UK IPO said deadlines would be extended via its ‘interrupted days’ provisions in March, when the coronavirus regulations began to be enforced.
The latest decision comes following the UKIPO’s latest review of its coronavirus guideline procedures. Therefore, today (30 July) is the first ‘normal’ day of operation since 24 March. The UK IPO has also announced that it is working on measures to ease burdens on business following the end of the period of interruption, such as the temporary removal of fees for requests of extensions. More information can be found on the UKIPO section of the gov.uk website.
The EPO has announced the postponement of all oral opposition proceedings scheduled until 31 December 2020. This is due to what the office describes as ‘the ongoing disruptions caused by the spread of coronavirus.’
Previously, all oral opposition proceedings were postponed until 14 September 2020. Some hearings confirmed to take place by video conference, or held by video conference with the parties’ consent under the pilot project, will go ahead.
EPO president António Campinos, Japan Patent Office commissioner Akira Matsunaga and Korean Intellectual Property Office commissioner Park Wonjoo have issued a joint message on the offices’ response to the coronavirus pandemic, also known as Covid-19. Here, the office heads assert their belief that innovation will play a central role in the recovery from the impact of the coronavirus pandemic.
The signatories also emphasised the importance of cross-border co-operation, especially given that the pandemic transcends borders, and reaffirmed their commitment to addressing the current challenges together.
The European Patent Office has published a new platform, designed to help researchers benefit from patent information in the fight against coronavirus. The platform has released its first data sets, which cover antiviral vaccines and pharmaceutical therapeutics. The EPO has announced that more resources will be released in the coming weeks. Examples include diagnostics, medical technologies and devices.
A press release, including a statement by EPO president Antonio Campinos, can be found here.
On 15 July, the Boards of Appeal at the European Patent Office will conduct its first live-streamed hearing. The hearing concerns case G 1/19, over the patentability of computer simulations. In case T 489/14, the Technical Board of Appeal 3.5.07 referred questions to the Enlarged Board of Appeal.
The EPO says, “In the light of the current restrictions on public attendance at oral proceedings due to the coronavirus (COVID-19) pandemic, the Enlarged Board of Appeal has decided to enable live streaming to give members of the public access to the proceedings via the internet.” You can register as an observer on the EPO website by 14 July.
The UKIPO introduced ‘interrupted days’ on 27 March 2020, given the increased momentum of the coronavirus pandemic. However, the office has today announced its interrupted days will end on 29 July 2020. The first ‘normal’ day for the UKIPO, which sees all ‘interrupted days’ deadlines expire, is 30 July 2020.
The EPO has announced the postponement of all scheduled oral opposition proceedings until 14 September 2020. The date was previously 2 June 2020. Exceptions are made for those either not already confirmed to take place by video conference, or that are being held via video under the pilot project. More information on the European Patent Office website.
The UK High Court has begun the process of deciding its next landmark FRAND trial in the dispute between InterDigital and Lenovo. Judge Colin Birss presided over the hearing, which took place via Skype. The hearing concerned the case management aspects, with timetables being set out for the technical and FRAND aspects of the trial.
Gowling acts for InterDigital, while the London office of Kirkland & Ellis is for Lenovo.
Munich Regional Court has decided to have another hearing in the Nokia vs. Daimler case in July. This is instead of today’s hearing, which the court cancelled at short notice (Ref. 7 O 3890/19). On 6 February, the 7th Civil Chamber around presiding judge Matthias Zigann at the Munich Regional Court heard a suit from Nokia concerning a European mobile phone patent. The hearing lasted 12 hours. It was the first hearing in which Daimler’s co-litigants Renault and Huawei participated.
Prior to this, co-litigants Robert Bosch, Bury, Continental, Peiker and TomTom had already joined the dispute. Also significant to the hearing was whether Nokia’s patent EP 16 71 505 would survive all validity attacks from Daimler.
Munich Regional Court has now announced a new trial date for 23 July 2020. Yesterday there was a hearing in the same dispute at Mannheim Regional Court. Presiding judge Holger Kircher has announced a verdict for 23 June 2020. Read our analysis of the background to the connected cars dispute.
The Belgian Patent Office (OPRI) has published a new notice. It explains that, due to the gradual lifting of coronavirus containment measures, it will start to notify parties with binding deadlines regarding Belgian patents and patent applications. This applies to applicants or patentees that would be sanctioned by a loss of rights in the event of noncompliance. This measures is enforced from 25 May.
The BoA has announced that oral proceedings will not be held at its premises up until and including 15 May 2020. The new guidelines exclude oral proceedings conducted by video conference. However, oral proceedings will be conducted by video in agreement with the parties concerned. Any oral proceedings which go ahead by video will be listed in the oral proceedings calendar.
N.b. Oral proceedings before the Boards of Appeal are public. Any member of the public wishing to attend oral proceedings conducted via video link is still able to do so. However, it will be from a dedicated room at the Boards of Appeal premises in Haar. However, only limited places will be available. More information on the measures being taken by the Boards of Appeal are available here.
The European Patent Office has announced that it will postpone all oral proceedings in opposition scheduled until 2 June 2020 (previously until 30 April 2020), until further notices. The exception is those which have already been confirmed to take place by video conference or will be held by video conference with the parties’ consent under the pilot project (Article 2 of the Decision of the President of the EPO, 14.05.2020).
According to the EPO, oral proceedings in examination will continue to be held by video conference.
Global beer giants AB InBev and Heineken have settled a dispute over beer dispenser technology, according to sources close to the opponents. Precise details of the settlement are not yet known. However, the High Court in London had conducted a pre-trial hearing in an action brought by Heineken against AB InBev (case ID: HP-2018-000027).
The court had scheduled the hearing for five days from 27 April, but it is no longer going ahead. This would have been the first full-blown High Court patent trial to employ the newly-adopted technology.
In our latest long read, JUVE Patent examines the approaches of different European courts in conducintg remote hearings during the current coronavirus pandemic.
Last Thursday, the first oral hearing with a mobile video conference system was successfully conducted at the Munich I Regional Court, in accordance with § 128 A of the German Code of Civil Procedure
The 7th Civil Chamber heard a patent dispute (case no. 7 O 15606/19) in session room 155 at the Palace of Justice in Munich. On both sides, the attorneys and patent attorneys joined the proceedings from their respective offices. President of Munich Regional Court I, Dr Andrea Schmidt, says “Even independently of the current situation, we will continue to press ahead with digitisation at the Regional Court Munich I. The new videoconferencing system is an important element in this respect. Justice is there for the people – analogue and digital.”
The UK Intellectual Property Office has declared ‘Interrupted’ days according to rule 110 of the Patents Rules 2007, rule 75 of the Trade Marks Rules 2008, and rule 40 of the Designs Rules 2006. According to the IPO website, in practice the declaration of interrupted days means that “any deadlines for patents, supplementary protection certificates, trade marks, designs, and applications for these rights
which fall on an interrupted day will be extended to the next non-interrupted day”. However, the declaration precludes time periods set out under international IP treaties. This includes, for example, the Patent Cooperation Treaty or the European Patent Convention. Furthermore, the period of interruption does not affect filing dates of IP applications filed at the office that do not claim priority from a previous application. For further information, visit the UKIPO website.
The EPO has held its first patent opposition hearing via video, in an Austrian case. Austrian attorney firm Anwälte Burger und Partner (ABP) represented timber drying company Kurt Mühlböck over patent EP 31 11 148 B2, a method for drying bulk material. Patent attorney Andreas Rossoll said, “The discussion and the course of events were in no way inferior to what we were used to before. The technical quality and in particular the data transmission should be re-ferred to as perfect.”
The EPO rejected the opposing side, meaning ABP was successful in its goal.
In response to ongoing governmental advice, the German Patent and Trademark office has shut down to the public and cancelled all events. However, the office is still able to work with its staff working remotely. Time limits for pending IP procedures remain scheduled for 4 May.
Due to the ongoing general dislocation caused by the pandemic, the EPO has issued a notice further extending the previous deadline from 17 April to 4 May. This applies to all parties and their representatives and includes international applications under the PCT.
The French government has adopted two ordinances in order to adjust the organisation, functioning and deadlines applicable before the French courts during the coronavirus epidemic. Ordinance n°2020-306 and Ordinance 2020-304 were adopted on 25 March and allow for the extension of deadlines
According to Ordinance 2020-306, all types of processes at the court that are subject to a deadline or to a penalty are affected by the extensions.
For the INPI, this applies in practice to actions and formalities subject to an admissibility deadline, such as oppositions, proceedings for renewing or maintaining an industrial property title, including payment of patent annuities, trademark or design renewals etc.
All acts included in the “legally protected period” set out in Ordinance 2020-306, whereby 12 March 2020 is set as the first day of applicability, will therefore be eligible for an extension. Deadlines that end after 24 June are not initially affected.
According to a Ministerial Circular from 26 March, judges still have the authority to set or extend deadlines.
The European Patent Office will conduct a pilot project for oral proceedings by video conference before opposition divisions. It will extend to all oral proceedings before opposition divisions scheduled to take place after the present decision has entered into force. The pilot project will start on the date on which this decision enters into force and will run until 30 April 2021.
More information available from the EPO.
The Austrian Patent Office (ÖPA) extends outstanding administrative time limits in proceedings for two months.
Courts in Austria have reversed the recent halt in the serving of legal documents. IP litigation is still being submitted by writing, with hearings and testimonials also held by video conference or phone where necessary.
The Association of British HealthTech Industries (ABHI), the Association of the British Pharmaceutical Industry (ABPI), the British Generic Manufacturers Association (BGMA), the UK BioIndustry Association (BIA), and the British In Vitro Diagnostics Association (BIVDA) have committed to collaborating to fight coronavirus. The collaboration spans three key areas: Delivering medicines and health technology to fight COVID-19, prioritising the supply of diagnostics, medicines and health technologies for NHS patients, and supporting NHS service delivery. The bodies released a joint statement here.
The Regional Court Munich has postponed the judgment in the infringement case between Nokia and Daimler until 20 May 2020. The judgment, which concerns connected cars, was due to be released this Thursday 9 April. However, it has been pushed back until next month. In the meantime, read JUVE Patent’s background piece on the dispute and its significance to both the car and mobile phone industries.
The European Patent Office has rolled out its latest guidelines in accordance with the social distancing measures in place throughout Europe. Among other things, the office stipulates that oral proceedings are now to be held via video conference before examining divisions, the applicant and representative can participate from different locations, and documents can be submitted electronically. The full list of provisions can be found on the EPO website.
The Federal Patent Court in Germany (Bundespatentgericht) has established an emergency operation in which oral negotiations are suspended. However, the court is still receiving applications, complaints and written submissions.
The DPMA has extended deadlines in all granted property rights proceedings until 4 May 2020. However, it cannot extend legally-specified time limits. Currently, hearings and appeals are not taking place and the office is not issuing further summons. Already-scheduled hearings will be cancelled.
The European Patent Office is extending all time limits from 15 March to 19 April 2020, for all parties and their representatives. This also includes all international applications as stipulated by the Patent Cooperation Treaty. Depending on the future trajectory of the coronavirus pandemic, the EPO may extend time limits still further.
Richard Hacon, presiding judge of the IPEC and current deputy High Court judge, has postponed a FRAND trial due to be heard on 27 April. Hacon decrees that the importance and nuances of the case are such that it cannot be heard via written submission only. The parties have been given permission to seek a FRAND trial on the first available date after 1 October 2020. A technical trial has already taken place.
A procedural hearing between Edwards Lifesciences and Meril Life Sciences took place via Skype, with presiding judge Colin Birss working in his home office. Katie Coltart, partner at Kirkland & Ellis, said on LinkedIn, [sic] “The Kirkland & Ellis London IP Litigation team had its first ever Skype hearing with the Court yesterday. It ran very smoothly. Barristers had cameras on at all times and mics on while speaking. Solicitors had cameras off (phew!), mics muted. The judge was in robes but the barristers wore suits.”
The Guardian reports that courts are beginning to hear only the most urgent of cases. In England and Wales, this means the most serious criminal trials should be heard in front of a jury. For patent cases, it is widely expected hearings will be postponed until the near future. The lastest case to be heard in person, a pharmaceutical case between Akebia, Fibrogen and Astellas, ended last Friday.
The French government has taken one step further than the use of compulsory licenses. Since the government passed a new article, L.3131-15, in light of the coronavirus pandemic, it is now possible (i) to permit the seizure of drugs (“requisition of all goods”) and/or (ii) to ask the launch of generic products on the French territory before the expiry of patents/SPCs, if necessary (“take any measures to make available to patients appropriate medicines”).
Last week, UK prime minister Boris Johnson called for manufacturers to switch production lines to life-saving equipment such as ventilators. Now UK engineering group Smiths Group has made the IP covering one of its lines of ventilators, paraPAC, available to other manufacturers. The group is also scaling up production to meet demand.
In Germany, the Federal Court of Justice has postponed an oral hearing in the infringement and FRAND trial between Sisvel against Haier. The original date has moved from 30 March 2020 to 5 May 2020. The case is considered to be the leading case in the interpretation of FRAND in Germany, following the judgment of the CJEU in Huawei vs. ZTE in 2015.
On Twitter, the intellectual property office (IPO) of the UK government announced it remains functioning as usual. Its services are currently unaffected, although the announcement urges users to shift to online services and avoid personal visits. However, Algate Tower is currently non-operational. This is where tribunal hearings are heard, and was until last month planned as London’s UPC HQ. The IPO says hearings can be conducted via alternative methods.
The Dutch Patent Office remains staffed, but is ensuring most of its employees work from home following governmental advice. Staff members in the office will carry out tasks essential to the running of the office.
The European Patent Office is rescheduling of all oral proceedings in examination and opposition divisions until 27 March. This is unless the hearings have already been scheduled to be heard via video conference.
The German Justice Union (Justiz-Gewerkschaft), the trade union for the German judicial service, has demanded closure of the country’s courts for at least two weeks in light of the ongoing pandemic. According to newspapers of the Funke media group, chairman Emanuel Schmidt says, “The acute corona crisis is a danger to employees in courts and public prosecutor’s offices. It is therefore now necessary to close the courts for at least two weeks.”
The Regional Court in Mannheim has suspended non-all urgent business until 19 April 2020. Only certain personnel are permitted to enter the court, for example participants and spectators of non-urgent cases. Personal contact with judges and press offices has all but concluded, although press offices and courts can be reached via email and phone.
Mannheim Regional Court has suspended two oral hearings in the ongoing case between Nokia and Daimler. The trial involved two patents, EP 21 45 404, and EP 12 73 199. The second trial had already been moved from 10 December 2019.
The Italian courts, including its IP courts, have declared there will be no more hearings until 15 April. This date is an extension of the initial advice to close the courts until 22 March. Initially, judges could decide to hold hearings in urgent cases, but now even preliminary injunction proceedings are being postponed. Now, between 15 April and 30 June, the courts could adopt further measures depending on the situation. This includes hearings held with lawyers and parties participating remotely, further postponement, or exchange of written submissions.
As of 17 March, all Dutch courts and tribunals will close, including patent courts. However, the Judiciary has announced that urgent cases will go ahead, e.g. where to omit a court decision would constitute a miscarriage of justice, albeit with no audience.
The Benelux Office for Intellectual Property (BOIP) will operate with severely reduced staffing levels. In a statement, the office said it “will not withdraw any requests or procedures because a given deadline has not been met,” and it will grant “an additional period of one month for all requests and proceedings for which the time limits have expired or which are less than one month at that time.”
A source has told JUVE Patent that judges at the patent courts in France await “strict containment measures as of tonight.” This is in-line with the latest announcements made by the French government and president Emmanuel Macron, who this evening is expected to confirm a 15-day quarantine period for its citizens, according to reports.
Last week, the UK High Court heard the case between Akebia and Fibrogen, which is due to extend into this week. So far, the hearing is going ahead as scheduled. Also scheduled to be heard next week is the second trial in the Conversant vs. Apple case regarding FRAND. This case should also still be heard, although future decisions of the court depend on the latest advice issued by the UK government.
The Düsseldorf Higher Regional Court has restricted public traffic, requesting all submissions and requests be made by email, fax, post, and via its in-house post box. Meetings are postponed, although if this is not possible, the court states personal meetings can go ahead through prior appointment.
The DPMA (German Patent and Trade Mark Office) has closed its enquiry units and search rooms, with no consultations being held. The Arbitration Board of the DPMA has extended all open pleading deadlines under the Law on Employee Inventions until 15 May 2020. Parties do not need to request a separate deadline extension.
All Boards of Appeal hearings due to be heard between 16 and 27 March 2020 have been cancelled. The EPO says the president of the Boards of Appeal, Carl Josefsson, is continuing to take stock of the situation, with representatives from the boards contacting affected parties. Oral hearings in front of examination and opposition divisions will take place as scheduled.
The European Union Intellectual Property Office has extended its time limits for all proceedings occurring between 9 March 2020 and 30 April 2020. Time limits have been extended until 1 May, given what the EUIPO describes as “the extent and the status of the coronavirus disease (COVID-19) outbreak” which “constitutes an exceptional occurrence”.
The Higher Regional Court in Munich has released advice for its visitors, urging the public not to come to the court buildings unless absolutely necessary. It is offering a telephone service for those who need to get in contact. No other German courts have issued guidance as of yet.
Despite its deadline extension announcement, the EPO has confirmed it will still hear oral proceedings before examining and opposition divisions as scheduled. However, if the proceedings involve those who have recently visited high risk areas, they will be held via video conference or postponed if necessary. Alternative measures such as video conferencing are also an option for parties affected by travel restrictions or isolation instructions.
The European Patent Office, which has its headquarters in Munich, has extended all deadlines, except oral proceedings, to mid-April. The grounds for this decision are based on the concept of ‘general dislocation’ as defined under Rule 134(2) of the European Patent Convention.
This reads, “As a state in which the European Patent Office is located, the Federal Republic of Germany, like many other Contracting States, is experiencing restrictions on the movement and circulation of persons as well as on certain services, exchanges and public life in general, which can be qualified as a general dislocation within the meaning of Rule134(2) EPC.”
The Supervisory Board of the European Qualifying Examination has cancelled its EQE (pre-examination and main examination) papers. These are the main qualifying exams for European Patent Attorneys. The UK-based Chartered Institute of Patent Attorneys described this announcement as a “tremendous shock”.