EPO extends possibility of oral proceedings by videoconference to opposition proceedings

It has been possible to hold oral proceedings by videoconference at the EPO since 1998. This has opened an interesting possibility for applicants and their representatives, allowing applicants to attend the oral proceedings without having to travel to the premises of the EPO. Regimbeau has been using this possibility routinely for years.

Paris, April 30, 2020 – It has been possible to hold oral proceedings by videoconference at the EPO since 1998. This has opened an interesting possibility for applicants and their representatives, allowing applicants to attend the oral proceedings without having to travel to the premises of the EPO. Regimbeau has been using this possibility routinely for years.

Until now, oral proceedings by videoconference have been available only before Examination Divisions and this practice has become widely adopted (recently the EPO announced that the default manner to hold oral proceedings had become videoconference: see the decision of the President of the European Patent Office dated 1 April 2020). While it is likely that this decision has been prompted by the outbreak of Covid-19, it is to be taken as a permanent provision enacting the development of oral proceedings held by videoconference.

Oral proceedings will now be possible also in Opposition proceedings :

on April 14, 2020, the EPO released a decision of the President of the European Patent Office concerning the pilot project for oral proceedings by videoconference before opposition. Together with this Decision, the EPO also released a Notice which provides further information on the pilot project and explains specific aspects of oral proceedings by videoconference in opposition.

This Decision opens a pilot project for oral proceedings by videoconference before the Opposition Divisions. The pilot project will be applicable to all oral proceedings before Opposition Divisions that are scheduled to take place after the entry into force of the Decision (i.e. May 4, 2020) and it is set to run until April 30, 2021. It can be expected that the “pilot” project will become a permanent feature of the opposition proceedings, if the “pilot” period until April 30, 2021 proves to be satisfying.

This means that potentially, every oral proceeding in oppositions may be held by videoconference (except in some situations briefly described below). This can result from a proposal from the Opposition Division, or from a request by one of the parties to the opposition. In all cases the Notice makes it clear that « oral proceedings may be held by videoconference in opposition if all parties to be summoned to the oral proceedings and the Opposition Division agree ».

There are some situations where the Opposition Division will not agree to hold oral proceedings by videoconference – notably if the proceedings require the taking of evidence by hearing witnesses, parties or experts or by inspection, or if there are other serious reasons for not doing so (such as, for the time being, the need to provide interpretation).

Videoconferencing allows not only cost savings, but also flexibility: the Notice explains that a party and their representative may be allowed to connect to oral proceedings held by videoconference from different locations. Thus, parties residing abroad may easily participate in such oral proceedings.

Oral proceedings in opposition are public (Article 116(4) EPC), and this will also be the case with oral proceedings held by videoconference : members of the public can possibly attend the oral proceedings in a dedicated room on the premises of the EPO or, alternatively, be provided with a link for connecting to the videoconference.

As European practitioners well know, it is important to be able to file submissions (such as new requests) in “real time”, during oral proceedings, to cope with the developments of the proceedings. It will still be possible to file such submissions during oral proceedings held by videoconference, by email or, exceptionally, by fax. Such submissions will of course be shared (typically by email) with all parties to the opposition proceedings.

Oral proceedings are often a crucial stage especially in opposition proceedings and this new development must be welcomed as it provides more options to participate in oral proceedings in opposition, in a cost-efficient manner. This is also an opportunity for interested persons (patent owners, parties who wish to file an opposition, and also the public) to engage more actively in opposition proceedings.

In situations where the videoconference for the oral proceedings is not possible or not appropriate, our Munich office is, as always, available to our clients for the smooth preparation of any oral proceedings to take place in Munich.