G 1/21

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G 1/21
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Enlarged Board of Appeal of the European Patent Office

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ECLI:EP:BA:2021:G000121.20210716
Decision issued on 16 July 2021
Board composition
Chairman: Fritz Blumer
Members: Wim van der Eijk, Tamás Bokor, Richard Arnold, Evangelos Chatzikos, Gunnar Eliasson, Andrea Ritzka
Headwords
Oral proceedings by videoconference

G 1/21 is a decision issued on 16 July 2021 by the Enlarged Board of Appeal of the European Patent Office (EPO) regarding the legality of holding oral proceedings at the EPO by videoconference without the consent of the parties. [1] [2] Namely, the Enlarged Board of Appeal held that "[d]uring a general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even 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." [2] The reasoning in the written decision further indicates that, if a party so requests, oral proceedings must be held in person at the EPO premises, except in absolutely exceptional cases. [3]

Procedural history

The case dealt with 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?" [4]

which Board 3.5.02 in case T 1807/15 referred on 12 March 2021 to the Enlarged Board of Appeal pursuant to Article 112(1)(a) EPC. [4] Many amicus curiae briefs and third party observations were later filed in relation to the question at stake. [5] [6]

Following an objection raised by the appellant under Article 24(3) EPC, the Enlarged Board of Appeal issued on 17 May 2021 an interlocutory decision holding that its original chairman, the President of the Boards of Appeal Carl Josefsson, as well as another one of its members, should not take part in the referral, because they had been involved in drafting Article 15a of the Rules of Procedure of the Boards of Appeal (RPBA). [1] [7] [8] Article 15a RPBA, which entered into force on 1 April 2021, [9] allows –or at least purports to allow– the Boards of Appeal to hold oral proceedings by videoconference without the consent of the parties. [1] [7] The composition of the Enlarged Board of Appeal was therefore changed by an order dated 20 May 2021. [10]

On 28 May 2021, public oral proceedings were held regarding the case, via videoconference. [11] [12] [13] During these oral proceedings, a second interlocutory decision was issued, in which further objections against the composition of the Enlarged Board of Appeal were rejected as inadmissible. [14] At the end of these oral proceedings, the Enlarged Board of Appeal then decided to postpone the oral proceedings. [15] Oral proceedings were then resumed on 2 July 2021 and the order was then issued, without the detailed reasons, on 16 July 2021. [2] The Enlarged Board of Appeal issued the reasons for its decision on 28 October 2021. [16]

Written decision

In its written decision, the Enlarged Board of Appeal on the one hand narrowed down the scope of the referral to oral proceedings before the Boards of Appeal (thus, not directly dealing with oral proceedings held in first-instance proceedings) and in the context of the COVID-19 pandemic, [3] [17] i.e. to oral proceedings held in "a period of general emergency". [18] On the other hand, the Enlarged Board broadened the referred question to whether holding oral proceedings by videoconference was compatible not only with Article 116(1) EPC but also with Article 113 EPC. [3] [19] The Enlarged Board thus reformulated the referred question as follows:

During a general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises, is the conduct of oral proceedings before the boards of appeal in the form of a videoconference compatible with the EPC if not all of the parties have given their consent to the conduct of oral proceedings in the form of a videoconference? [20]

The Enlarged Board then went on to explain why, in its view, "oral proceedings in the form of a videoconference are oral proceedings within the meaning of Article 116 EPC", [21] why telephone conferences are "clearly not suitable as a format for oral proceedings", [22] and why "the use of video technology can make it suboptimal as a format for oral proceedings, either objectively or in the perception of the participants, but normally not to such a degree that a party's right to be heard or right to fair proceedings is seriously impaired". [23] In other words, "oral proceedings by videoconference are oral proceedings within the meaning of Article 116 EPC and, although not fully equivalent to oral proceedings held in person, normally do not infringe a party's right to be heard or the right to fair proceedings". [24]

The Enlarged Board further held that, under normal circumstances, oral proceedings by videoconference cannot be imposed on a party, i.e. a party has a right to in-person oral proceedings, as in-person oral proceedings are the default format. [25] "Parties can only be denied this option for good reasons." [26] Accordingly, the Enlarged Board answered the reformulated question as follows:

During a general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even 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. [27]

Related Research Articles

The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the European Patent Office (EPO). For instance, a decision of an Examining Division refusing to grant a European patent application may be appealed by the applicant. The appeal procedure before the European Patent Office is under the responsibility of its Boards of Appeal, which are institutionally independent within the EPO.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

G 1/03 and G 2/03 are two decisions of the Enlarged Board of Appeal of the European Patent Office (EPO), which were both issued on April 8, 2004.

<span class="mw-page-title-main">Grant procedure before the European Patent Office</span>

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

Article 123 of the European Patent Convention (EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant.

Under case number G 3/08, the Enlarged Board of Appeal of the EPO issued on May 12, 2010 an opinion in response to questions referred to it by the President of the European Patent Office (EPO), Alison Brimelow, on October 22, 2008. The questions subject of the referral related to the patentability of programs for computers under the European Patent Convention (EPC) and were, according to the President of the EPO, of fundamental importance as they related to the definition of "the limits of patentability in the field of computing." In a 55-page long opinion, the Enlarged Board of Appeal considered the referral to be inadmissible because no divergent decisions had been identified in the referral.

The restitutio in integrum or re-establishment of rights under the European Patent Convention (EPC) is a means of redress available to an applicant or patent proprietor who has failed to meet a time limit in spite of exercising "all due care required by the circumstances". The legal basis for this means of redress is provided in Article 122 EPC. If the request for restitutio in integrum is accepted, the applicant or patentee is re-established in its rights, as if the time limit had been duly met.

Under the European Patent Convention (EPC), a petition for review is a request to the Enlarged Board of Appeal of the European Patent Office (EPO) to review a decision of a board of appeal. The procedure was introduced in Article 112a EPC when the EPC was revised in 2000, to form the so-called "EPC 2000". A petition for review can essentially only be based on a fundamental procedural defect. Its purpose is not to obtain a reconsideration of the application of substantive law, such as points relating to patentability. The petition is a restricted form of judicial review, limited to examining serious errors of procedure which might have been committed by the Legal or Technical Boards of Appeal, prejudicing the right to a fair hearing of one or more appellants. Before the entry into force of the EPC 2000 in December 2007, it was not possible for a party who did not have his requests granted in an appeal to challenge the final decision of the Legal or Technical Board of Appeal on any grounds.

Art. 23 1/15, Art. 23 2/15 and Art. 23 1/16 are three related cases decided by the Enlarged Board of Appeal of the European Patent Office concerning the removal from office of Patrick Corcoran, a member of the Boards of Appeal, who had been previously suspended by the Administrative Council of the European Patent Organisation. According to Article 23(1) EPC, members of the Boards of Appeal may only be removed from office by the Administrative Council on a proposal from the Enlarged Board of Appeal. Two cases were successively initiated by the Administrative Council, but the Enlarged Board eventually dismissed both of them. In the third case initiated by the Administrative Council, the Enlarged Board decided not to propose the removal from office of Corcoran.

G 1/19 is a decision issued by the Enlarged Board of Appeal of the European Patent Office (EPO) on 10 March 2021, which deals with the patentability of computer-implemented simulations.

G 2/19 is a decision issued by the Enlarged Board of Appeal of the European Patent Office (EPO) on 16 July 2019, which deals with three legal questions, the third relating to whether oral proceedings before the EPO Boards of Appeal may be held in Haar in the Munich district rather than in Munich per se, when a party objects to the oral proceedings being held in Haar. In July 2019, the Enlarged Board of Appeal decided that oral proceedings before the Boards of Appeal may be held in Haar without infringing Article 113(1) EPC and Article 116(1) EPC.

G 1/10 is a decision issued on 23 July 2012 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that Rule 140 EPC cannot be used to request corrections of the text of a European patent.

G 1/11 is a decision issued on 19 March 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that a Technical Board of Appeal rather than the Legal Board of Appeal is competent for an appeal against a decision of an Examining Division refusing a request for refund of a search fee under Rule 64(2) EPC, which has not been taken together with a decision granting a European patent or refusing a European patent application. In other words, the decision deals with the delimitation of competence between the EPO's Legal Board of Appeal and its Technical Boards of Appeal.

G 1/12 is a decision issued on 30 April 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that an appellant's identity in a notice of appeal can be corrected under Rule 101(2) EPC, provided the requirements of Rule 101(1) EPC are met. The Enlarged Board of Appeal also held that an appellant's identity can be corrected under Rule 139 EPC, first sentence, under the conditions established by the case law of the Boards of Appeal.

G 1/09 is a decision issued on 27 September 2010 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that, following refusal of a European patent application, the application remains pending until the expiry of the time limit for filing a notice of appeal, so that a divisional application under Article 76 EPC may be filed even after the refusal of an application. More specifically, the divisional application may be filed until expiry of the time limit of two months for filing a notice of appeal under Article 108 EPC.

G 1/13 is a decision issued on 25 November 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that in opposition proceedings a retroactive effect of a restoration of a company must be recognised by the EPO. In other words, a restoration of a company has retroactive effect before the EPO when it has such retroactive effect under national law.

G 2/93 is a decision issued on 21 December 1994 by the Enlarged Board of Appeal of the European Patent Office (EPO). The decision deals with deposits of biological material. More specifically, the decision deals with the time limit for the deposit of such material. The current provision in Rule 32(2)(a) EPC provides for a time limit of sixteen months from the date of filing or from the date of priority, whichever expires earlier.

References

  1. 1 2 3 Hughes, Rose (21 May 2021). "EPO responds to accusations of perceived bias in G1/21 (ViCo oral proceedings)". ipkitten.blogspot.com. IPKat. Retrieved 21 May 2021.
  2. 1 2 3 "Press Communiqué of 16 July 2021 on referral G 1/21 to the Enlarged Board of Appeal". www.epo.org. European Patent Office. Retrieved 17 July 2021.
  3. 1 2 3 Hüttermann, Aloys (2021). "Die Entscheidung G 1/21: Alles muss sich ändern, damit alles bleibt wie es ist (?)" [The decision G 1/21: Everything must change so that everything remains as it is (?)]. Mitteilungen der deutschen Patentanwälte (in German). Carl Heymanns Verlag (12): 526–530.
  4. 1 2 T 1807/15 (Oral proceedings in the form of a videoconference) of 12.3.2021
  5. ↑ Kluwer Patent blogger (April 30, 2021). "EPO oral proceedings by videoconference: 47 amicus curiae briefs in case G 1/21". patentblog.kluweriplaw.com. Wolters Kluwer. Retrieved 21 May 2021.
  6. ↑ G 1/21 of 16 July 2021, Summary of Facts and Submissions, point X. "Over fifty amicus curiae briefs and third party observations referring to Article 115 EPC were received from various organisations, companies, patent attorney firms and individuals."
  7. 1 2 Interlocutory decision G 1/21 of 17 May 2021
  8. ↑ G 1/21 of 16 July 2021, Summary of Facts and Submissions, points XI and XII.
  9. ↑ "Oral proceedings before the Boards of Appeal by videoconference". epo.org. European Patent Office. 24 March 2021. Retrieved 21 May 2021.
  10. ↑ G 1/21 of 16 July 2021, Summary of Facts and Submissions, point XII.
  11. ↑ Schulze, Christina (28 April 2021). "German patent firm alliance opposes compulsory video oral proceedings". JUVE Patent. Retrieved 21 May 2021.
  12. ↑ "Oral proceedings in case G 1/21". epo.org. European Patent Office. 24 March 2021. Retrieved 21 May 2021.
  13. ↑ "Oral proceedings by videoconference in case G 1/21 before the Enlarged Board of Appeal – online registration open to the public". epo.org. European Patent Office. 14 May 2021. Retrieved 21 May 2021.
  14. ↑ Interlocutory decision G 1/21 of 28 May 2021
  15. ↑ Sandys, Amy (28 May 2021). "Enlarged Board postpones oral proceedings on compulsory video hearings". JUVE Patent. Retrieved 5 June 2021.
  16. ↑ "Press Communiqué of 28 October 2021 on referral G 1/21 to the Enlarged Board of Appeal". www.epo.org. European Patent Office. 28 October 2021. Retrieved 4 November 2021.
  17. ↑ G 1/21 of 16 July 2021, Reasons for the Decision, points 14 and 16.
  18. ↑ G 1/21 of 16 July 2021, Reasons for the Decision, point 56.
  19. ↑ G 1/21 of 16 July 2021, Reasons for the Decision, points 17-19.
  20. ↑ G 1/21 of 16 July 2021, Reasons for the Decision, point 20.
  21. ↑ G 1/21 of 16 July 2021, Reasons for the Decision, points 21-30 (quote from point 30).
  22. ↑ G 1/21 of 16 July 2021, Reasons for the Decision, point 41.
  23. ↑ G 1/21 of 16 July 2021, Reasons for the Decision, points 33-43 (quote from point 43).
  24. ↑ G 1/21 of 16 July 2021, Reasons for the Decision, point 44.
  25. ↑ G 1/21 of 16 July 2021, Reasons for the Decision, points 44-45.
  26. ↑ G 1/21 of 16 July 2021, Reasons for the Decision, point 45.
  27. ↑ G 1/21 of 16 July 2021, Order.

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