In-house counsel have offered mixed views on the benefits of video conferences – as the EPO’s president agrees that stalling tactics by some parties have denied access to justice.
In a statement last week, the EPO said that all hearings below appeal level – namely examination and opposition proceedings – will be virtual until September 2021.
Until now, virtual hearings have been permitted so long as both parties agree. From January 4 2021, the need for both parties’ consent will be removed.
The EPO Boards of Appeal (BoA), which sits independently from the office, has also published a consultation on moving to virtual hearings, including the option of making them mandatory. Until now, the BoA has been holding only a limited number of virtual hearings.
In October, sources told Managing IP that some patentees deliberately delay virtual proceedings to stall potential invalidation of their patents.
Sources said opposition hearings for numerous drugs, including Regeneron's EP 2,970,876, Bayer’s EP 1,747,001 B1, and EP 2,630,962, have been delayed because of the patentee rejecting a video conference.
Justice denied
Speaking to Managing IP last week, EPO president António Campinos accepted that this was likely to be a tactic.
“I think that’s absolutely right.
“We had to make this move now to address the growing backlog [of cases]. I understand discussions around the right to be heard and that parties should be able to state their preference, but you have to counterbalance the right to be heard – or what you understand by it – with access to justice.
“As we speak, that right of access to justice could be denied by one of the parties.”
Thomas Buchholz, chief digital patent counsel at BSH Home Appliances, tells Managing IP that he postponed all oral proceedings as he was on the patent owner side of opposition procedures and “therefore was not in a hurry”.
Buchholz says that he has yet to use the video-conferencing tool at the BoA. “Moreover, I live in Munich, so attending the BoA [in Haar, a nearby suburb] in person is very comfortable for me.”
Tech ready?
Richard Mair, president of the UK-based Chartered Institute of Patent Attorneys, says its members have reported that EPO proceedings are well suited to video conferencing.
“In-conference functions such as screen sharing and simultaneous side channels for communications have shown that the technology has come of age and in most respects now provides a real and improved alternative to in-person hearings,” he says.
Costs will also reduce as an attorney’s location or potential difficulties getting to the EPO’s offices in The Hague, Munich or Berlin will not be factors, he adds.
“Clients will have improved access to justice and be able to choose their attorney on the basis of competence and ability, not geographical location,” Mair says.
However, Miriam Colling-Hendelkens, head of patents in crop science at Bayer in Germany, says that in most of the virtual hearings the company has attended, the examination/opposition officials were not sitting in the same room so required a separate connection line.
“Everybody who ever attended an oral hearing knows that it is very important to observe each examination/opposition division member’s reaction on the arguments provided, to see whether technically complex arguments have been well understood or not.
“The interpretation that opting for video conferences is a delay tactic might miss some additional real pain points and seems to be the underlying rationale in rare and very specific cases.”
She adds that the EPO should not introduce mandatory video conferences at the BoA without first solving issues in proceedings below that level, such as separate connection lines.
Addressing the office’s technological capabilities, Campinos says the office had to be sure that the technology was good enough.
He adds: "We took on board what we learned from the pilots and now think we are ready to make the leap to have video-conference proceedings by default.”
Mair at CIPA adds: “While there is an understandable conservative reluctance to accept what is still a new format for hearings, once the system has been up and running for a while I expect most opposition will disappear.
“Experience with the Intellectual Property Enterprise Court and the High Court [in England and Wales] proceedings going virtual shows that video conferencing works perfectly well for contentious cases.”
Save the date
One aspect of BoA hearings that counsel are keen to see addressed is the system for notifying parties of a change to the date or venue of a hearing.
Should virtual hearings become the norm, counsel would not expect venue changes. However, the time and date of a hearing could still shift at short notice.
Hearing date alterations were previously communicated directly to parties. However, it is now up to attorneys to consult an online calendar in the days leading up to their hearing.
Beatriz Díaz de Escauriaza, head of IP at Insud Pharma in Madrid, says the date of hearings should be maintained in all events (even if video conferences do become the norm), to avoid causing further delays “in the already quite long EPO proceedings”.
“If the parties agree to have a hearing in person or if they agree to have it remotely, that decision should not interfere with the date scheduled by the EPO,” she adds.
A BoA spokesperson says the board has implemented COVID-related cleaning measures for the conduct of proceedings, but that only a limited number of rooms are suitable.
“The hearing rooms which are still available must be (re)allocated according to the specific factual circumstances of each case, such as the number of attending persons or whether video conferencing is used.
“Changes must sometimes be communicated at short notice. The online calendar is a useful tool to inform about such changes taking place at short notice. Parties are therefore encouraged to consult the online calendar approximately three days before the oral proceedings take place.”
Mair adds that he believes the BoA will follow a similar route to the EPO once it sees the system working well at the opposition and examination level.
Who’s watching?
Colling-Hendelkens adds that there is uncertainty surrounding who can watch and record BoA hearings – which are open to the public.
“In video conference anybody from anywhere in the world can participate in such oral hearings and record the session or take pictures and you would not even realise it,” she says.
She notes that the BoA has decided to allow public participation only from a designated room in which it is strictly controlled whether anyone tries to take pictures or makes a recording.
Campinos’s belief that rejecting video conferences denies access to justice may be partly true, but clearly technological advancements must continue to be a top priority if virtual hearings are to become the new normal.
