IRC: #boycottnovell-social @ FreeNode: Wednesday, December 16, 2020

-TechrightsSocial/#boycottnovell-social-patentblog.kluweriplaw.com | ViCo for Oral Proceedings at the EPO – CIPA’s view - Kluwer Patent Blog

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Well, if CIPA’s position was not clear before, it certainly is now!

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However, it remains a mystery to me how to logically square the circle between enthusiasm for VICOs but strong opposition to “hybrid” hearings. Asserting that hybrid proceedings are “inherently unbalanced” can only mean that CIPA believes that oral proceedings by videoconference are NOT equivalent to oral proceedings held on the premises of the EPO.

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In other words, whilst CIPA does not question the legal basis for VICOs, it adopts a position that directly contradicts the legal fiction of equivalence … with the consequence that CIPA therefore implicitly accepts that imposing compulsory VICOs impairs the rights afforded to applicants under the EPC. (The only possible alternative explanation would be that CIPA believes that, in hybrid hearings, parties participating by

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VICO would have an unfair advantage over those participating in person. However, this cannot justify opposing the use of hybrid proceedings. If a party is willing to accept any disadvantages associated with their choice, why should they be prevented from participating in person if they truly wish to do so?)

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Whilst I warmly welcome the OPTION to use VICOs for oral proceedings, I cannot for the life of me understand why, in common with the EPO, CIPA is prepared to accept (seemingly without question) that there is adequate legal basis under the EPC for the rejection of requests for in-person oral proceedings. It is not as if the Boards of Appeal have never ruled upon this issue. As pointed out in an earlier thread, there is ample

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case law on this point, ALL of which reaches conclusions that flatly contradict the current position of the EPO (and CIPA).

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For those that strongly support the mandatory use of VICOs, I appreciate that arguments questioning the legal basis in the EPC may come across as excessively nit-picking. However, in my view, to adopt such an attitude would be to miss the entire point. To be clear, the point at stake here is whether it is acceptable for the EPO to interpret the EPC in a manner that DIRECTLY CONTRADICTS interpretations established by the EPOâ€

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s judiciary (ie the Boards of Appeal).

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As illustrated by the explanatory note accompanying the proposal to introduce Article 15a into the RPBA, the current practice of the EPO appears to be to do nothing more than establish whether the wording of the EPC expressly forbids the interpretation that the EPO would like to adopt. This of course ignores a number of additional factors that the Boards would consider, such as meanings that are implicit in the wording of the

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EPC, meanings emerging from the other rules of interpretation (such as systematic, teleological and historical interpretations, as well as consideration of subsequent agreement or practice) and meanings established in the prior case law of the Boards.

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Because it ignores so many important factors, the EPO’s current (preferred) approach to interpreting the EPC is legally unsupportable. It is also likely to lead to a situation where established interpretations of the EPC can be overridden at the drop of a hat, without involvement of the Boards of Appeal and simply by executive decree. Is this an approach that can be condoned by the patent profession? I would hope not.

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Peter Parker

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December 11, 2020 at 8:22 am

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Haha you have spotted the fallacy well!

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I am a German and European patent attorney and work inhouse as Head of IP of a consumer goods company, so let me add a bit of heresy here: is it really desirable if it becomes as cheap and easy as possible to obtain patents?

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We have a big and growing portfolio of patents, designs, trademarks (several thousand rights in fact) but basically never assert any these rights except against clear counterfeiters. And for this purpose, we use 99% of the time trademarks and 1% of the time design rights.

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That is, we do not fight against competitors using IP but rather try to be one step ahead by innovating quickly.

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Ensuring FTO is becoming more and more of a problem though – again, we do now what our competitors do and do not want to copy them (IP right or not), but all these IP rights of questionable quality that are sometimes pending for 15 years at the PTOS or so create an immense burden. I at least can not waive the argument, that my company would be better off if there were no patents at all, easily away. Trademarks are

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perhaps a different matter.

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As the patent systems look as if they will stay with us, at least the patent process should in my opinion be somewhat rigorous and not too easy as a means of sorting out the weakest of cases.

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I guess my main point here is that discussions about PTOs and procedures and fees seem to focus too much on the applicants and not enough on the effects the whole patent system has on society as a whole.

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MaxDrei

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December 11, 2020 at 1:13 pm

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Peter, I’m not seeing what relevance your comment has for the subject of this thread.

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But other than that, I do not see the EPO as in a hurry to lower the bar, to clear the way for the grant of claims of ever diminishing contribution to the technical field. And I don’t see why compulsory ViCo should result in any further lowering of the bar.

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For me, the issue is how best to reconcile ViCo in disputed proceedings with the over-riding objective to deliver as the outcome of the case a result which neither party can legitimately criticise as unjust.

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Peter Parker

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December 14, 2020 at 8:43 am

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My comment was picking up the notion or rather the axiom that the patenting process should be as easy and efficient as possible and that video conferences help in acheiving that. I am not sure whether society really profits if it is easy and efficient for everyone to obtain patents.

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MaxDrei

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December 15, 2020 at 11:06 am

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Peter, you raise as many questions as you answer. My philosophy is that provided patent rights are confined to sufficiently disclosed non-obvious technical solutions to technical problems, and go to the party who was first to file at the Patent Office, a patent system is good because it promotes progress in the useful arts, which is to the benefit of all mankind.

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But bad patents must be revoked, speedily and economically. Otherwise, cheats prosper, which is not good. Good patents should be enforceable, speedily and economically. Anything else and the patent system falls into disrepute, which harms society.

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The practical difficulties of implementing such objectives are challenging but not impossible to achieve. One must be vigilant to detect and root out those vested interests bent on preserving a dysfunctional system.

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Everybody who contributes to technical progress with a patentable invention should be able to obtain and enforce patent rights at reasonable cost. All others, not.

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Hearings should be of a gravity proportionate to the value of the action. Boards need enough discretion to manage a case fairly and justly. It is no business of Patent Office management to interfere with the exercise of judicial discretion.

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Patent Attorney

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December 10, 2020 at 7:07 pm

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I don’t see why videoconferencing is inevitable and I don’t see a reason why it should become inevitable in the future. The BoA hold hearings in person and apply a convincing hygiene concept. The same could be done in 1st instance.

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My personal impression is that the cost savings that could be realized by ViCo are the real driver behind this change (less office space, examiners may stay in home countries, no extra vacation and salary etc). Of course, it will be sold as “reducing the carbon footprint”, “enabling forefront technology” etc. In the end, the quality of the decisions in opposition/appeal will deteriorate considerably (haven’t met a

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colleague who disagrees with this), and – inevitably – of the system as a whole. Thank god there are national patent offices as well.

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MaxDrei

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December 10, 2020 at 7:59 pm

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What about the question whether the members of the fact-finding jury (the ED, OD or TBA) shall debate the decision with each other on video link or face to face. Not just in criminal proceedings but also at the EPO, I think they should all be physically present in the same room.

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It is different in England (as usual). There, a single judge decides the facts quietly, alone, all by him- or her-self. The judge can do that at leisure, re-running the video witness evidence as many times as needed. What does CIPA have to say about jury members hundreds of km apart from each other? Would they trust such a jury if they were the Defendant, post-pandemic, facing a gaol sentence in an American jail?

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Concerned observer

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December 11, 2020 at 12:20 pm

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Max, the law in England is indeed very different. One need only compare Article 116 EPC to CPR 39.1(1)(a):

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“hearing” means the making of any interim or final decision by a judge at which a person is, or has a right to be, heard in person, by telephone, by video or by any other means which permits simultaneous communication.

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Whilst I have not checked, I have no doubt that the rules governing hearings before the ECHR also differ in significant respects to Article 116 EPC. It is therefore not an illuminating exercise to compare the way that the EPO conducts oral proceedings to the way that the English courts (or the ECtHR) conduct their hearings.

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It is, however, interesting to consider the PRINCIPLES established by the ECtHR under Article 6 of the Convention:

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https://www.echr.coe.int/Documents/Guide_Art_6_ENG.pdf

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The peculiar set-up at the EPO, where there is really only one “judicial” instance, makes it hard to apply those principles directly. However, it appears to me that there is enough in the established case law to cast doubt upon whether, particularly after the end of the pandemic, denial (by the Boards) of requests for in-person proceedings could result in a breach of a party’s rights under Article 6 ECHR.

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Extraneous Attorney

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December 11, 2020 at 9:58 am

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This position is, frankly, as disappointing as it is unsurprising. One can only wonder why on Earth ViCos ought to be “inevitable in the long term for all oral proceedings at the EPO”. This suspiciously looks like assuming the (desired) conclusion.

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Again, holding OPs via ViCo at a party’s request is entirely different from forcing a ViCo upon that party. In the former case, the party voluntarily waives their right to an in-person hearing. The latter option is acceptable only if it has a proper legal basis in the EPC. Where exactly this legal basis can be found is a mystery. Also conspicuously missing is the proper justification for extending emergency measures for all

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eternity!

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I would also like to add that the argument of “environmental impact” is not as bulletproof as it seems on the surface. Coming to the EPO by train is a viable option for many European patent attorneys, at least when summoned to the Hague. On the other hand, videoconferencing and Internet use in general have an environmental impact as well. The claim that switching all OPs to ViCos will be environmentally beneficial is not

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plausible without a proper environmental impact study.

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epo watcher

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December 11, 2020 at 10:07 am

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Max Drei, your comments are very well taken. It is getting clear that three-member panels as required by the EPC for OD and BOA are burdensome and outdated. CIPA should not have stopped here, they should have advocated revising the EPC towards the UK system of single judges.

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MaxDrei

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December 11, 2020 at 1:07 pm

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Watcher, I am taking your comment as sarcasm, written with your tongue firmly stuck up your cheek. Most people understand that a single judge is compatible with fact-finding under adversarial English law (witness evidence, discovery and cross-examination) but NOT with fact-finding under mainland European inquisitorial civil law procedure.

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Or am I seeing it wrong? Are you serious?

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epo watcher

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December 13, 2020 at 4:19 pm

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Max Drei and Attentive Observer, my comment was half-joking half-serious. As noted by Attentive Observer the single-examiner division has been a fact for a long time, as professionals are well aware. The generalization of home working and VICO meetings, shown to allow continuation of day-to-day work during Covid, would bring arguments toward a revision of the EPC, assuming the three-member division cannot be made

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optional even by a “dynamic interpretation” of Article 18. And this format is unique to the EPO.

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That being said, NTIC technologies have already revolutionized the patent profession toward commoditizing many components of patent work in order to cut costs and speed up procedures. See e.g. an interesting presentation at FICPI 2019 Australia (https://ficpi.org.au/members-only/articles/How%20Will%20We%20Survive%20-%20Mutant%20Ninja%20IP%20Attorneys.pdf). This trend is bound to broaden and increase.

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A relevant factor in my view is the potential value of an application as perceived by the players and the strategic/commercial stakes involved. For some applicants, it is of prime importance to build patent arsenals and quantity tends to prevail over quality, with exceptions when stakes are high. In such cases, costs are significant and reforms allowing cost reduction will be welcome. On the other hand, oppositions

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and appeals imply high stakes, and cost-cutting is no longer the name of the game. The parties and the offices or courts find it justified to devote adequate resources for quality proceedings, including three-judge panels and face-to-face oral proceedings.

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In national court systems, you can have this divide. Small-stake cases are handled by single judges and proceedings are simplified, while high-stakes are handled by three-member panels.

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Attentive Observer

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December 11, 2020 at 1:51 pm

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Your are nearly there!

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Not for the Boards, but for the examining divisions, the one man division is possible. See Art 18(3) EPC!

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This would legalise the present working of the examining divisions.

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Richard Gillespie

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December 11, 2020 at 3:45 pm

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Given the guidance from the UK Intellectual Property Office is that a visa and/or work permit may be needed for all travelling from the UK to the Schengen Area involving work or service provision, I believe CIPA’s position may have more to do with perceived impeding problems with travel over the merits of ViCos hearings Vs face-to-face hearings and it’s an entirely sensible position for them to take.

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Being based in Ireland, we’re very well briefed on Brexit (given the mess it’s going to cause here). I’m sad to see the negative comments on this thread regarding our UK colleagues at the moment. Despite the mess the UK government’s actions are going to cause for Ireland and the rest of the EU, it is not fair to let ones feelings regarding the actions of the UK government colour ones feelings towards our fellow

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patent professionals based in the UK. I do not envy them at the moment – don’t be too hard on them!

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One of those...

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December 13, 2020 at 11:41 pm

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Dear Richard,

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I wonder why anyone would need a visa when working on EPO premises, as those are exempt from any national rules, regulations, and and and, as the EPO management continues to point out. Hence the office management sees no need to sign any agreement under Article 20(2) EPO-PPI.

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Article 15 of the EPO-PPI could apply, as the representatives are experts performing tasks for the organisation (representing the applicants, in many cases the applicants even need compulsory representation, they are part of the adminsitration of justice). This might need a decision by the Administrative Council (Article 17 EPO-PPI) (I don’t know if such a decision already exists, the list of names exists anyway).

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Maybe CIPA should lobby for such a “quick fix” for the Brexshit desaster.

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It wouldn’t require a doubtful, flexible interpretation of a fixed Convention.

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Richard Gillespie

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December 14, 2020 at 12:07 pm

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Just to note that this is the advice given by the UKIPO and not my opinion. I used the word perceived for a reason.

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Attentive Observer

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December 15, 2020 at 1:55 pm

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Dear Mr Gillespie,

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That the UKIPO and border control forces are not necessarily aware of Art 134 is quite certain. However I have never heard that for instance representatives from Turkey were barred from coming to Munich for OP outside the pandemic.

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With the pandemic the situation is different for all travelers, not just for citizens of non-Schengen states.

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This will stop after the pandemic and cannot justify imposing OP in form of ViCo for good!

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Even if CIPA argues this way, it does not make the arguments more convincing.

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Attentive Observer

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December 11, 2020 at 12:34 pm

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Mr Chairman of CIPA,

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I cannot but agree with the previous commentators.

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When looking at the comments filed in reply to the publication in this blog of: “Response to EPO consultation: Don’t impose oral proceedings by videoconference”, you will not find one commentator approving the mandatory holding of OP in form of a ViCo after the pandemic.

http://patentblog.kluweriplaw.com/2020/12/02/response-to-epo-consultation-dont-impose-oral-proceedings-by-videoconference/

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-TechrightsSocial/#boycottnovell-social-patentblog.kluweriplaw.com | Response to EPO consultation: Don’t impose oral proceedings by videoconference - Kluwer Patent Blog

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A few consider them necessary during the pandemic, but all commentators are of the opinion of that it should be left to the parties to decide whether they want to have OP in form of a ViCo in the future.

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Imposing OP in form of ViCo like it is done in first instance or that it should be left to the discretion of the BA, lacks any legal basis in the present EPC.

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It is not being pedantic to remind you of the lack of legal basis of such a move. Even the boldest interpretations of the EPC under Art 31 and 32 of the Vienna Convention on the Law of Treaties do not allow to come to the conclusion that mandatory OP in form of a ViCo have a legal basis.

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The “Travaux Préparatoires” show that there was thus unanimous agreement that oral proceedings before the Boards of Appeal were meant to be proceedings in person. What applies before the BA applies mutatis mutandis to the first instance. That it implies travel and corresponding costs was not a deterrent to render OP in person mandatory.

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When on top of this the members of the deciding body can sit miles apart in different locations, it boils down to fully dematerialise the EPO. This is a change of the EPC which cannot be decided by the head of the EPO or the AC. This needs a Diplomatic Conference!

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That technical progress can help in reducing travel is acceptable, but reducing OP to seeing the other party or the deciding body merely on pictures the size of a large post stamp is not something which is everybody’s liking. If you are happy with it, fair enough, but do not impose this view on others.

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If the parties agree and the deciding body sits together at the same location, why not. Otherwise my answer is a simple no. Even you do not agree on “hybrid” ViCos and this says a lot.

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I think your plea in favour of OP in form of a ViCo has other reasons. Due to Brexit, the English legal profession, and you are part of it, has lost access to the UPC (should it ever come into life), and you are simply looking at means which could compensate for the loss.

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One way of compensating the loss would be to enhance the level of your actions before the EPO and regain ground over patent representatives firms which are located or have a branch in Munich (or in The Hague). I can understand this wish, but it should remain a wish a not be imposed on all other representatives and users of the EPO.

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It is nowhere said in the EPC that employees of the parties, accompanying persons, representatives of non-EPC member states, or even a party itself, have to come to OP in either Munich or The Hague provided they are properly represented. I see there a vast reservoir of savings, be it moneywise or in carbon footprint.

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But this would mean that your clients in the US or in Asia could not participate in OP should they really want to save and reduce their carbon footprint. But then, the attractiveness of the British profession would be thoroughly degraded. This is for me the deep reason why you want to impose OP in form of ViCos at the EPO.

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Claiming that there is presently “the opportunity to shape the future of the patent system in the EPC Contracting States” is simply a fig leaf behind which you want to hide your basically mercantile interests. What looks good for your purse is not necessarily good for everybody.

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Attentive Observer

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December 12, 2020 at 9:44 am

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Dear Mr Gillespie,

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If it was really a worry for CIPA to attempt avoiding problems relating to “visa and/or work permit arrangements for travelling from the UK to the Schengen Area”, it could have said so.

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If there would have been a worry of this kind, this worry is whatsoever not justified. Just have a look at Art 134, especially Art 134(6 and 8). According to Art 134(6) members of the epi are even entitled to establish a place of business in any Contracting State in which proceedings established by this Convention may be conducted! That is in The Netherlands and in Germany. I know of one London firm of patent attorneys which

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established a branch in Munich as early as in 1980!

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Qualified representatives from non-EU contracting states are or have been regularly present at OP in person before the pandemic, and I have never heard that travel restrictions were imposed upon them. The possible necessity of obtaining a visa cannot justify that OP in form of ViCo have to become mandatory.

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I therefore have to maintain that the reasons brought forward by CIPA have more to do with business reasons than with possible travel restrictions!

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Richard Gillespie

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December 14, 2020 at 12:18 pm

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Just to note that this is the advice given by the UKIPO and is not my opinion. I used the word perceived for a reason. Although I’m not sure that border control in Germany and the Netherlands will be better briefed on A134 EPC than the UKIPO.

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Even if one doesn’t agree with their position, CIPA are quite entitled to argue for it.

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LightBlue

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December 15, 2020 at 4:37 pm

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Indeed Richard. If there is a general requirement for UK citizens to be in possession of a visa when entering the EU, trying to argue with a border guard that an international treaty makes such a requirement moot is not likely to be met with much success. Likewise, can A134 EPC be cited as overriding any requirement for UK EPAs resident in Germany or the Netherlands to obtain a residency permit?

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Felix Krull

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December 14, 2020 at 11:54 pm

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“The next generation of users of the system will expect a remote, distributed and technology-based process as a matter of course”

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Being a member of that “next generation”, I disagree. Whilst office work, meetings, and other things will indeed be expected to include remote technology-based processes, as you call it, oral proceedings are simply a different matter. Having attended both real oral proceedings and “virtual” ones, I can with certainty say that these are not equal – and that is the perspective of a trainee barely 4 years in the

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business.

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Even to a rookie like me, the CIPA’s motives seem to be plainly obvious.

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