Are they legal under Article 116 EPC?

Tilman Pfrang,  Patentanwalt, Dipl.-Phys., Master of Laws (LL.M.)
Dr. Andrew J. Parker,  Patentanwalt, MPhys, PhD (Physik und Elektronik), Master of Laws (LL.M.)

I. Introduction

The President of the EPO decided on November 10, 2020, that Oral Proceedings before Opposition Divisions are to be held by video conference, until September 15, 2021. According to this decision, agreement of the parties is not necessary (Decision of the president of the European Patent Office dated 10 November 2020, Articles 1 and 2). The Boards of Appeal at the EPO intend to go one step further, namely to restrict the possibility for Oral Proceedings according to Article 116 EPC permanently (if "exceptional circumstances" can be confirmed). Reference is made to the proposed text of Article 15(a) EPC of the Rules of Procedure of the Boards of Appeal, according to the user consultation, as online on December 2, 2020. The present article will not focus on whether such “virtual Oral Proceedings” are in general reasonable or, in a broader sense, legitimate during an extreme pandemic situation with severe travel restrictions (which should not be confused with any "exceptional circumstances") as a specific and limited deviation of the law, but rather whether such “virtual Oral Proceedings” are legal under the EPC. This article will also not focus upon whether virtual proceedings should be possible if the party (or the representative) agrees. In essence, this article relates to how Article 116 EPC must be interpreted and not about how it should be worded.

II. Article 116 EPC

1. Background – intended amendment in the Rules of Procedures of the Boards of Appeal (RPBA)

Article 15(a) of the proposed text for an amended RPBA reads as follows:

Article 15(a)

Oral Proceedings by video conference

(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 by a party or of its own motion.

(2)    Where Oral Proceedings are scheduled to be held in person, the Chair may allow a party, representative or accompanying person to attend by video conference. In exceptional circumstances, the Chair may decide that a party, representative or accompanying person shall attend by video conference.

(3)    The Chair may allow any member of the Board in the particular appeal to participate by video conference.

Hence, according to Article 15(a) (2) sentence 2, RPBA (draft), a party does not have the right to (personal) Oral Proceedings under "exceptional circumstances" (e.g. in the case that the oral proceedings are exceptionally well suited to be held by video conference). The question now is whether this is in line with Article 116 EPC.

2. The official reasoning for the intended new Art 15a RPBA (draft)

It is somewhat of a surprise that the only reasoning for this amendment (according to the "explanatory remarks" of the annex to the proposed text of Article 15(a) of the draft RPBA) is the following:

5.     Article 116 EPC regulates Oral Proceedings before the European Patent Office. Neither this article nor any other article of the EPC or the RPBA 2020 stipulates that parties to the proceedings, their representatives, or members of the Board must be physically present in the Oral Proceedings room. Therefore, neither the EPC nor the RPBA 2020 exclude Oral Proceedings by video conference.

The "argument" therefore seems to be: Article 116 EPC does not literally mention the words "physically present" nor does the EPC explicitly exclude Oral Proceedings being held by video conference.

In our opinion, this is not how a correct interpretation of the law and legal texts works. To clarify this, maybe some examples will assist. Article 116 EPC also does not stipulate that the parties, their representatives, or members of Board must be visible. Article 116 EPC, nor in fact any other provision of the EPC, does not exclude Oral Proceedings being held by telephone call. It does not exclude Oral Proceedings by exchange of videos, nor does it literally exclude Oral Proceedings through the exchange of simple voice messages.

Whilst these examples do not necessarily show that the reasoning of the intended Article 15(a) ROPB is fundamentally flawed,  these examples do at least show that this reasoning should never be taken to be sufficient.

What seems necessary, therefore, is a deeper look into the wording of Article 116 EPC and its context.

3. Art. 116 EPC

According to Article 116(1) EPC, first sentence, first alternative, Oral Proceedings must take place if any party requests so. In each of paragraphs (1), (2) (3) and (4) of Article 116 EPC, the word "before" (German: "vor"; French: "devant") is used to further describe the Oral Proceedings ("before the same department"; "before the Receiving Section", "before the Examining Divisions and the Legal Division"; "Department before which").

The question which must be answered is, therefore, what does "before" mean in this context?

According to the Cambridge Dictionary, ”before” is defined as follows:

"If a legal case comes before a law court or a judge, it is dealt with by them and when someone comes before a court or judge, they are present while the case is dealt with" (emphasis added)

According to the Collins Dictionary, it is described as follows:

"To go before a judge, tribunal or court of law means to be present there as part of an official or a legal process"

To be present means, of course, that someone or something is in a particular place, it is "there". The word "present" is, therefore, in sharp contrast to the word "virtual". If something/someone is "virtual" it is understood to mean that this something or this someone is not present at a place. Hence, the term "physically present" is simply a (misleading) pleonasm.

It is also very interesting to see that the BOAC's reasoning seems also to follow extremely closely the wording of the EPC (everything is allowed which is not literally excluded) whilst at the same time sees no problem in understanding appearance before a Court as not requiring (“physical”) presence.

Personally, we do not believe that using the term "virtual presence" is fundamentally incorrect: everyone would immediately understand what is meant. The question, however, is if one can simply say "virtual presence" is an example of "presence". Similarly, if one says that something is sent by mail, this would not (at least not naturally) cover sending it by "e-mail" (even though e-mail is a virtual, “electronic” mail).

It can readily be understood, however, that virtual presence is a form of non-presence.

That (“physical”) presence is meant in Art. 116 EPC is further supported by the language of the implementing regulations of the EPC, in particular Rule 115 EPC. According to Rule 115 EPC, the parties shall be summoned to Oral Proceedings under Article 116 EPC (in German: zur mündlischen Verhandlung nach Artikel 116 werden die Beteiligten … geladen"; in French: La citation des parties à une procédure orale…").

According to the authors’ understanding, "Summons" (or "Ladung"/citation ") means that the Court (Office) invites the parties to come to their place (so that the parties will be there). Again, this provision requires presence (or at least the option to be present) of the parties (or their representatives).

In essence, the EPC stipulates that a party has a right to oral proceedings before the Division/Board which means the party has "a right to appear in person before the Divison/Board in order to discuss the case" (cf. T 677/08, reasons, 4.3 and T 1012/03, reasons, 37 and 38).

4. Principles of procedural law of the Contracting Members of the EPC – Art. 125 EPC

Further, Article 125 EPC requires that the European Patent Office must take into account the principles of procedural law generally recognized in the contracting states. This means that Article 125 EPC requires the EPO to consider, for example, the procedural law in Germany.

Sections 128 and 128a of the German Civil Procedure code read as follows:

Section 128

Principle of oral argument; proceedings conducted in writing

(1) The parties shall submit their arguments regarding the legal dispute to the court of decision orally.

(2) The court may give a decision without hearing oral argument [German: mündliche Verhandlung] provided that the parties have consented thereto; such consent may be revoked only in the event of a material change to the litigation circumstances. The court shall determine, at its earliest convenience, the deadline for written pleadings to be submitted, and shall determine the date of the hearing on which the decision is to be pronounced. A decision given without a hearing for oral argument is inadmissible should more than three (3) months have lapsed since the parties granted their consent.

(3) Should nothing but the costs remain to be ruled on, the decision may be given without a hearing for oral argument being held.

(4) Unless determined otherwise, decisions of the court that are not judgments may be given without a hearing for oral argument being held.

Section 128a

Hearing for oral argument using image and sound transmission

(1) The court may permit the parties, their attorneys-in-fact, and advisers, upon their filing a corresponding application or ex officio, to stay at another location in the course of a hearing for oral argument, and to take actions in the proceedings from there. In this event, the images and sound of the hearing shall be broadcast in real time to this location and to the courtroom.

(2) The court may permit a witness, an expert, or a party to the dispute, upon a corresponding application having been filed, to stay at another location in the course of an examination. The images and sound of the examination shall be broadcast in real time to this location and to the courtroom. Should permission have been granted, pursuant to subsection (1), first sentence, for parties, attorneys-in-fact and advisers to stay at a different location, the images and sound of the examination shall be broadcast also to that location.

(3) The broadcast images and sound will not be recorded. Decisions given pursuant to subsection (1), first sentence, and subsection (2), first sentence, are incontestable.

The fact that Section 128a of the code of civil procedure exists makes it very clear that, for the German lawmaker at the very least, virtual Oral Proceedings (or Oral Proceedings by video conference) are not Oral Proceedings. This is also supported by the reasoning for Section 128a German Code of Civil Procedure. In this reasoning, the German legislator explained (Deutscher Bundestag Drucksache 14/6036, p. 116):

Insoweit wird der Grundsatz des § 128 Abs. 1 ZPO, nach dem die Parteien über den Rechtsstreit vor dem erkennenden Gericht mündlich verhandeln, im Interesse der Prozessökonomie durchbrochen. (Emphasis added)

In English:

In this respect, the principle of § 128 (1) ZPO, according to which the parties hear the dispute orally before the recognizing court, is broken in the interest of procedural economy. (Emphasis added)

This shows that Oral Proceedings held by video conference are considered by the German legislator as something different from Oral Proceedings. A video conference Oral Proceedings "breaks" ("durchbricht") the fundamental principle of Oral Proceedings.

5. G 2/19 – potential infringement of the right to be heard and legitimate expectations

In their Decision: G 2/19 the Enlarged Board of Appeal indicated that any unusual place or time for Oral Proceedings, could be seen as infringement of the right to be heard. It is to be noted that "Oral Proceedings by video conference", in particular before the Boards of Appeal (but also before the Opposition Division) are not only unusual but without any precedent (until very recently). Indeed (cf. G 2/19, reasons, C.IV.1.), the intended change in the law appears to show a certain lack of willingness on the part of the EPO/Boards of Appeal to deal with a case.

Also, very clearly, the Enlarged Board of Appeal explains in G 2/19 (cf. reasons, C.VI.2.) that the principle of the protection of legitimate expectation (German: “Grundsatz des Vertrauensschutzes"), must be considered. In particular, the Enlarged Board of Appeal explains that the user of EPO services, must be able to rely on the fact that the departments of the EPO do not carry out their actions in any third place. At the very least, this seems to clearly forbid that members of the Division/Board handling the case are absent from the actual location of the Oral Proceedings. This means, at least paragraph (3) of intended Article 15(a) EPC RPBA does not seem to be admissible.


III. Conclusion

The authors contend that depriving parties and representatives of their right to personal appearance before the EPO infringes Article 116 EPC. The wording of Article 116 EPC clearly requires the (“physical”) presence of the parties or their representatives. General principles in the member states (by way of example only, Germany) do not understand "Oral Proceedings by video conference" to be Oral Proceedings. Since any provision in the RPBA or any decision of the President of the EPO must (of course) be in line with the EPC itself, the abovementioned decision of the President appears to be illegal as would the intended Rule 15a of the ROPB.