As many will be aware, there is a challenge to the legality of videoconference Oral Proceedings pending at the EPO’s Enlarged Board of Appeal (G 1/21).[1] In particular, the Enlarged Board has been asked to consider whether such proceedings can go ahead if the parties do not consent to use of the videoconference format. Although the question referred to the Board encompassed Examination, Opposition and Appeal proceedings, the EPO has decided to continue with videoconference Oral Proceedings for both Examination and Opposition matters irrespective of whether or not the parties involved consent to do so.[2]
A Decision from the Enlarged Board is expected to issue relatively quickly, but unlike most referrals to be Enlarged Board, there does not appear to be much confusion about the direction the EPO will take. The EPO is generally keen to embrace the digital format and recent case law from the Boards of Appeal seems to suggest that the EPO will continue with videoconference Oral Proceedings as the “new normal”.[3] In anticipation that the Enlarged Board agrees, we have compiled our top tips for videoconference Oral Proceedings.
DO ask for a test call. Even though we are all now familiar with the format, a test call is a good opportunity to confirm that the audio is clear, and the video is working correctly. The test call will also allow you to practice screen sharing and joining/leaving breakout rooms. Test calls need to be requested at least six weeks in advance of the hearing, as only limited time slots are available.
DON’T assume your laptop speaker and camera will be adequate. If translators are involved, the EPO requires participants to have a headset, and even an inexpensive microphone can be a significant improvement to the in-built one found on most laptops. If the proceedings use Zoom, check in advance that your screen name is appropriate, the brightness settings are adequate for where you plan to sit, and check that any filters/backgrounds are turned off.
DO have your ID ready. It’s easy to forget when the only travel involved is into your home office, but it will speed up proceedings on the day.
DON’T assume things will be the same as an “in-person” hearing. Videoconference Oral Proceedings do generally seem to take a little longer than in person hearings, and some nuances of body language can be lost. How you communicate with your team during the hearing will also be different if you are in separate locations. Have you thought about a virtual alternative to passing notes during the hearing?
DO ask for breaks if needed. Everyone now recognizes that screen fatigue can be a problem. Chances are that if you need a break, someone else in the proceedings will be glad you asked.
DON’T put up with technical issues. If you can’t hear or see the proceedings adequately, the EPO advises that you attract the attention of the chair by waving. Proceedings will then be paused while the technical issues are resolved.
DO have a backup plan in case of a loss of connectivity. The EPO will ask for a telephone number, but it is worth seeing if you could use a WiFi hotspot (e.g., from a mobile phone) if the internet connection drops.
DO think about how you will prepare and submit any amendments on the day. If you are the Applicant or Patentee, there is a chance your case may be upheld on the basis of amended claims, and therefore an amended description could be required. The amended description pages need to be signed and sent to the EPO in an EPO-compatible pdf format. Since most of us do not have printer/scanners at home, it is worth thinking in advance about how to do this.
Finally, DO remember that, everyone is in the same situation, with the same fears that the internet connection will drop at a critical time, the neighbors will choose that day to begin renovation work, or that a cat filter will appear out of nowhere.[4] Consequently, we have found the EPO to be understanding of any technical concerns and ready to work with us to resolve these.
[1] https://www.epo.org/law-practice/case-law-appeals/eba/pending.html
[2] https://www.epo.org/news-events/news/2021/20210324a.html
[3] https://www.epo.org/law-practice/case-law-appeals/recent/t162320eu1.html
[4] https://www.theguardian.com/us-news/2021/feb/09/texas-lawyer-zoom-cat-fi…
