06.21.21

Virtual Injustice — Part 14: How Mandatory ViCo Became the “New Normal”

Posted in Courtroom, Europe, Law, Patents at 4:40 pm by Dr. Roy Schestowitz

Previously in the series:

1. Virtual Injustice — Part 1: António’s Increasingly Wonky Legal Fudge Factory
2. Virtual Injustice — Part 2: The ViCo Oral Proceedings of 28 May 2021
3. Virtual Injustice — Part 3: All the President’s Men…
4. Virtual Injustice — Part 4: Mihály Ficsor, the EPO’s Hungarian “Fixer”
5. Virtual Injustice — Part 5: Benoît’s “Friends” in Budapest
6. Virtual Injustice — Part 6: Best Buddies With António
7. Virtual Injustice — Part 7: Musical Chairs and Revolving Doors
8. Virtual Injustice — Part 8: A Well-Connected ‘IP’ Maximalist
9. Virtual Injustice — Part 9: Heli, the EPO’s Nordic Ice-Queen
10. Virtual Injustice — Part 10: Vapid and Superficial Coverage in the ‘IP’ Blogosphere
11. Virtual Injustice — Part 11: Perceptive Comments and Caustic Criticism
12. Virtual Injustice — Part 12: Carl Josefsson – Down But Not Out!
13. Virtual Injustice — Part 13: Let the Games Continue…

Summary: How mandatory ViCo hearings gradually became the "New Normal" at the EPO. The lawlessness of the EPO has gone offline and online; António Campinos takes up a notch the abuses of Benoît Battistelli, with a COVID ‘shot in the arm’.

The impetuous manner in which the President of the Boards of Appeal, Carl Josefsson, tried to steer the referral procedure G 1/21 towards a pre-cooked “foregone conclusion” is quite remarkable given that – as we shall see below – the Boards were initially quite hesitant about the use of videoconferencing for conducting oral proceedings at the start of Covid pandemic.

“It is worth recalling here that the possibility to use ViCo has in fact been available at the EPO since January 1998.”The reason for this initial hesitancy on the part of the Boards is not hard to find.

Prior to the onset of the Covid pandemic in 2020, it had been the long-established position of the EPO that hearings by ViCo were not equivalent to the traditional form of “in person” oral proceedings held on the EPO premises.

It is worth recalling here that the possibility to use ViCo has in fact been available at the EPO since January 1998. [PDF]

Furthermore, when the EPO introduced this option, it was restricted to examination proceedings which are non-public ex parte proceedings involving only a single party.

In order to exercise this option, the EPO required the applicant to “renounce in advance and irrevocably his right to oral proceedings being held in the traditional form at the EPO premises on the same subject after the requested video conference.”

In other words, applicants were offered the possibility of a hearing by ViCo as an optional alternative in lieu of their statutory right to an oral hearing in person on the premises of the EPO.

“Furthermore, when the EPO introduced this option, it was restricted to examination proceedings which are non-public ex parte proceedings involving only a single party.”In the case of proceedings before opposition divisions – which are public adversarial inter partes proceedings involving two or more parties – no provision was made for oral proceedings by ViCo.

Back in 2011, the committee in charge of the European Qualifying Examination (EQE) confirmed [PDF] in its annual examination report that “there is no legal provision allowing video conference before an opposition division“ (see here, footnote [28]).

Similarly, in the case of judicial proceedings before the Boards of Appeal – whether ex parte (examination) or inter partes (opposition) – no option for oral proceedings by ViCo was ever provided prior to 2020.

“The Covid pandemic turned out to be a game-changer in this regard.”In short, there was a long-established consensus in the EPO’s legal department that oral proceedings by ViCo were not appropriate for public proceedings having a judicial or quasi-judicial character, such as adversarial proceedings before opposition divisions and appeal proceedings before the Boards of Appeal.

The Covid pandemic turned out to be a game-changer in this regard.

On 1 April 2020, the President of the EPO issued a decision ordering – as opposed to offering – oral proceedings by ViCo in the case of ex parte examination cases.

Article 1(1) of this decision stated in mandatory terms that “Oral proceedings before examining divisions are to be held by videoconference”.

Article 1(3) further decreed that “Oral proceedings by videoconference are equivalent to oral proceedings held on the premises of the European Patent Office”.

Soon afterwards, on 14 April 2020, the President announced [PDF] a “pilot project” for oral proceedings by ViCo in the case of inter partes opposition cases.

“The earlier proviso referring to the “the agreement of all parties” had mysteriously vanished without explanation from the text of the new decision.”The initial scope of the “pilot project” was restricted to “all oral proceedings before opposition divisions that are scheduled to take place after the entry into force of the present decision” and the project was limited in duration (“until 30 April 2021″).

And – most importantly – Article 2(1) of the decision made the holding of opposition hearings by ViCo contingent on “the agreement of all parties”.

On 10 November 2020 a further decision [PDF] concerning “the modification and extension” of the “pilot project” announced that the project had been “extended to run until 15 September 2021″.

“It is worth noting here that these “decisions” of the EPO imposing oral proceedings by ViCo without the consent of the parties – for both examination and opposition procedures – are unilateral acts of the Office President which did not involve any prior consultation or approval of the Administrative Council.”Article 1(1) of the decision of 10 November 2020 now prescribed in mandatory terms that “Oral proceedings before opposition divisions are held by videoconference”.

The earlier proviso referring to the “the agreement of all parties” had mysteriously vanished without explanation from the text of the new decision.

It is worth noting here that these “decisions” of the EPO imposing oral proceedings by ViCo without the consent of the parties – for both examination and opposition procedures – are unilateral acts of the Office President which did not involve any prior consultation or approval of the Administrative Council.

Meanwhile, in the municipality of Haar – located “only slightly” outside the boundaries of the city of Munich – the EPO’s nominally independent judicial organ, the Boards of Appeal, initially followed its own more cautious and conservative approach.

On 15 March 2020 (warning: epo.org link) the Boards announced that due to “the pandemic spread of the novel Coronavirus (COVID-19)”, they had been “forced to restrict [their] judicial activities” and that oral proceedings would not be held on the premises of the Boards of Appeal from 16 March 2020 until 27 March 2020.

On 20 March 2020, it was announced that this temporary moratorium would be extended until 17 April 2020. On 1 April, it was further extended until 30 April and on 17 April it was extended once more until 15 May.

Finally, on 15 May 2020 [PDF], it was announced that the Boards would “resume the holding of oral proceedings, to a limited extent, at their premises in Haar from Monday, 18 May 2020″.

In addition to this, it was noted that:

“Video-conferencing technology (VICO) is now available for the conduct of oral proceedings before the Boards of Appeal. Oral proceedings will be conducted by VICO only in agreement with the parties concerned, who will be sent an advance communication in this regard. Oral proceedings to be conducted by VICO will be listed in the oral proceedings calendar.”

Thus, during 2020 ViCo hearings before the Boards of Appeal were held only with the consent of all parties to the proceedings.

However, in December 2020 things began to change dramatically as the President of the Boards of Appeal, Carl Josefsson, embarked on an initiative to align the practice of the Boards with that of the Office.

More precisely, in December 2020, Josefsson requested the Boards of Appeal Committee to add a new Article 15a to the Rules of Procedure of the Boards of Appeal (RPBA).

This new procedural rule – which was of unlimited duration and entirely decoupled from any emergency situation such as a pandemic – foresaw that the Boards of Appeal would now be empowered to conduct oral proceedings under Article 116 EPC by ViCo without the consent of the parties.

On 15 December 2020 [1, 2] [PDF], a communication entitled “Oral proceedings before the Boards of Appeal – continuation of the measures adopted due to the coronavirus (COVID-19) pandemic and revised practice on oral proceedings by VICO” appeared on the EPO’s website (warning: epo.org link) announcing that:

“From 1 January 2021 boards may conduct oral proceedings by VICO even without the agreement of the parties concerned, as has now been made clear in the new Article 15a RPBA adopted by the Boards of Appeal Committee.”

“In addition to this, the communication misleadingly claimed that “the new provision merely clarifies an existing possibility” which was most certainly not the case.”What is noteworthy about this announcement is that it was made over three months prior to the formal approval of the new procedural rule by the Administrative Council – on 23 March 2021 – and its entry into force a week later on 1 April 2021.

In addition to this, the communication misleadingly claimed that “the new provision merely clarifies an existing possibility” which was most certainly not the case.

Before long, in February 2021, a Technical Board of Appeal decided to refer a question about the lawfulness of the new rule to the Enlarged Board of Appeal because they could not find a satisfactory legal basis for it in the EPC.

The Enlarged Board was tasked with answering the following question:

Is the conduct of oral proceedings in the form of a videoconference 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 videoconference?

The Enlarged Board opened the referral case as G 1/21 and – under the chairmanship of Carl Josefsson – immediately summoned to oral proceedings on 28 May 2021 – a mere 2 months later.

At the same time, Josefsson issued a note informing the parties that “a decision on the points of law could be promptly issued” if they would agree to waive their rights to the oral proceedings.

The Administrative Council rubber-stamped Art. 15a RPBA on 23 March 2021 despite a pending referral.

Although the legitimacy of the new rule had been called into question and the referral G 1/21 was pending, the Administrative Council nevertheless proceeded to rubber-stamp Article 15a RPBA on 23 March 2021 [PDF] and it officially entered into force on 1 April 2021 [PDF].

Meanwhile, in a parallel action, the Office Administration published [PDF] a “Notice from the European Patent Office dated 24 March 2021 concerning the conduct of oral proceedings in examination and opposition in view of referral G 1/21″ on the EPO’s official website.

“The Notice of 24 March 2021 from the President was quite remarkable because, normally, when a referral is pending before the Enlarged Board of Appeal, proceedings before examination and opposition divisions which may be affected by the outcome of the referral are stayed.”In this “Notice”, the President of the Office announced that – in response to the pending referral – he had decided that “oral proceedings before examining and opposition divisions will continue to be held by videoconference in accordance with the applicable decision of the President of the EPO, i.e. without requiring the agreement of the parties”.

The President attempted to justify his decision with the self-serving claim that it had been made “in order to guarantee access to justice and ensure the functioning of the EPO”.

The Notice of 24 March 2021 from the President was quite remarkable because, normally, when a referral is pending before the Enlarged Board of Appeal, proceedings before examination and opposition divisions which may be affected by the outcome of the referral are stayed.

“As long as Josefsson was steering the procedure in G 1/21, there was never any indication of the possibility that the Enlarged Board might arrive at a different conclusion to that desired by the EPO’s senior management.”In this particular case, thanks to the “expeditious” schedule imposed upon the Enlarged Board by Josefsson, it would only have been necessary to wait two months for a final ruling in order to have legal certainty as to whether or not decisions taken in the course of mandatory ViCos could be considered valid.

In retrospect, the communication of 15 December 2020 appears to have been intended to proclaim a fait accompli.

As long as Josefsson was steering the procedure in G 1/21, there was never any indication of the possibility that the Enlarged Board might arrive at a different conclusion to that desired by the EPO’s senior management.

Indeed, the breakneck speed with which Josefsson had issued a summons to oral proceedings [PDF] together with the Administrative Council’s approval of the new Article 15a RPBA on 23 March 2021 and the Notice of 24 March from the Office President, gave the distinct impression that the outcome of the referral procedure was already a “done deal”.

“In particular, the manner in which the referral procedure was conducted under Josefsson’s chairmanship seemed deliberately calculated to signal to the Office Administration and the Council that the Enlarged Board could be counted on to deliver a rubber-stamped approval of the new procedural rule in as “timely” a manner as possible.”To seasoned observers of the EPO, there were clear indications of a closely coordinated and carefully orchestrated “joint enterprise”.

In particular, the manner in which the referral procedure was conducted under Josefsson’s chairmanship seemed deliberately calculated to signal to the Office Administration and the Council that the Enlarged Board could be counted on to deliver a rubber-stamped approval of the new procedural rule in as “timely” a manner as possible.

“In the concluding part of this series we will attempt to provide some answers to those questions and to cast some light on the “hidden agenda” which Campinos and his “buddies” appear to be pursuing in connection with G 1/21.”The only open questions here are why has the Office President (Campinos) been so keen to obtain a rapid rubber-stamping of the new Article 15a RPBA by the Enlarged Board and how was he able to secure the unquestioning complicity of the President of the Boards of Appeal (Josefsson) in this affair?

In the concluding part of this series we will attempt to provide some answers to those questions and to cast some light on the “hidden agenda” which Campinos and his "buddies" appear to be pursuing in connection with G 1/21. █

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