I Institut der beim Europaischen Patentamt zugelassenen Vertreter
Institute of Professional Representatives before the European Patent Office
Institut des mandataires agr??s pres I?Of?ce europ?en des brevets

European Patent Institute - Bayerstrasse 83 - 80335 Munich - Germany

Mr Ant?nio Campinos
President

European Patent Of?ce
80298 Munich
Germany

By email to president@epo.orq

Cc: patentlaw@epo.org

31 March 2020
Dear Mr Campinos,
Concerns: Oral Proceedings by Video Conference in Examination and Opposition

I trust that you are keeping well. epi is grateful for the careful attention you have been giving to
dealing with the present dif?cult situation.

Thank you for your letter on the above subject and the draft Notice of the President. epi much
appreciates you letting us know of this draft proposal.

This matter was discussed at the SACEPO-WPR meeting held today and a number of points not
raised here were raised. These cautioned against such a precipitate change in established practice
without extensive testing.

epi understands that, during this emergency situation, it may be necessary to adopt measures
which might otherwise not have been needed. However, epi considers that such emergency
measures should not be allowed to become permanent without much more extensive testing of any
possible technical solution and also extensive consultation as to their long term effect, in particular
on support given to users of the system, which is one of the main points in your strategic plan.

A ?rst point here is that, despite the fact that a number of applicants request oral proceedings (OP)
by video conference (VC), on many occasions the request has been denied, apparently because
the Office does not have the facilities to do so.

It is pointed out that the use of VC relies on the internet. This could lead to discrimination against a
party using a representative from a member state or district where the internet service is not fast
and/or reliable. If the connection fails, or is disconnected, the OP may need to be rescheduled. It
could also lead to extra work for the Of?ce in determining that the representative is actually in a
member state when conducting the VC. The present system used by the EPO appears to be

President - Francis Leyder
epi Secretariat - Bayerstrasse 83 - 80335 Munich - Germany
Phone +49 89 242052-0 - Fax +49 89 242052-220

info@patentepi.org - president@patentepi.org

deficient because only the speaker can be seen, thus denying the other party or parties the
opportunity of seeing the reaction of any other persons or parties present.

It may be that having OP before an Examining Division (ED) could become the norm but this could
only be the case if the technology used to implement this is fully tested and effective, not only for
the Of?ce but also for the users. It appears that, at the moment, the use of a VG system only works
at all where there is a single representative discussing an application with the ED. However, it does
not support the users when the applicant wishes more than one representative or a technical
expert to be present appreciated by the Of?ce that, where there is more than one person in the applicant?s
party, there is a lot of interaction between the representative making the presentation and the other
members of his or her party. This takes place during the discussions with the ED and also during
the breaks when the ED is considering a point. These discussions can be very useful as they can
lead to a resolution of a problem, for instance to a claim amendment. It also facilitates the making
of amendments as this can be done in the breaks and presented immediately to the ED.

We are not aware of systems that would permit the applicant?s party to have this interaction in the
VC organised by the Of?ce. Can they have a separate VC using the same device, when that
device uses the same speaker and microphone? Is it possible to mute for one VC while being
unmuted for the other If not, it would require each party to use a separate device to have a
separate VC. This would increase the bandwidth required for each party. It could also lead to
inef?cient proceedings, as the representative would need to monitor both VCs. Thus, epi considers
that it will be necessary for the Office to implement a system that ?both technically and
procedurally? allows the applicant?s party to have internal discussions during the breaks. There is
also the problem of providing amended claims for the ED to study. At present, they are sent by
email and then printed out by the ED, which makes the OP inef?cient.

These problems are exacerbated in the present situation as most attorneys are working remotely
from their colleagues and from their clients. When travel again becomes possible, the applicant
may assemble a team in one location and have its discussions of?ine. However, in these times,
even this is not possible and the applicant?s team will have to adopt a very inef?cient means for
communication.

The situation for OP before an opposition division (OD) is even more complicated. Not only are
there necessarily three parties involved, the OD, the Proprietor and the Opponent, there are often
the additional problems of the presence of more than one opponent, providing translations, taking
evidence and providing access to the public. These may be compounded by the desire to prevent
recording of oral proceedings as well as personal data protection and image rights issues. At
present, if we understand the discussion paper SACEPO WPR 3/20, the technology to cope with
all these possibilities is not available. It is therefore considered that OP for OD cases should only
be by way of VC if all the parties agree and if all the people in each party agree to waive any image
rights and any rights under the General Data Protection Regulation.

It is also considered that there are very good reasons why having OP by VC without the agreement
of the applicant or all the parties to opposition proceedings does not meet the requirements of
Article 113 EPC. Although Article 113 EPC is headed ?Right to be heard the Article itself is not
limited to ?hearing?. It provides that the EPO is required to give the parties an opportunity to
present their comments. There is nothing in Article 113 EPC that gives the Office the power to limit
the way in which a party gives its comments. It is considered that it is common to all legal systems
that a party is allowed to present his or her case in any way it wishes to and by a representative of

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his or her choice. Limiting presentation of comments could be considered to
be a violation of this fundamental human right.

The draft paper does concede that VC may not be the best way in certain cases, but it puts a high
burden on the parties to show ?serious? reasons. Having such a provision will inevitably lead to
many arguments about what is or is not a serious reason, as we have already seen in appeal
proceedings. Such arguments should be avoided. epi considers that it should be up to each party
to decide for itself whether it can agree to having OP by VC so that the Office does not have to
concern itself with making judgements about ?serious" reasons.

It is also considered that presenting comments in a face-to-face setting is much more ef?cient. In
such a setting, it is possible for the parties to judge the body language of the ED, OD and/or, in the
case of opposition proceedings, the other party(ies). This usually leads to much more efficient OP
since the parties then concentrate more closely on the points which the body language shows are
important to the case. This is not possible by VC.

If parties feel pressured into VC OP and the outcome is adverse to them, the likelihood of appeals
generally and appeals based on Article 113 EPC in particular will be much higher. The cost and
delay of appeal proceedings is not trivial. It is no good achieving a short-term gain in processing at
the first instance if the result is simply an increased backlog of appeal cases. The overall
performance of the of?ce will suffer.

For all these reasons, it is epi's view that OP before an OD should only be by way of VC if all the
parties agree. Overall, epi considers that it is a sensible idea to facilitate, as far as possible, the
extensive use of V0 for OP, especially for ED OP. However, epi strongly suggests that this
facilitation should be part of an evolutionary, not revolutionary, process. A draconian change
should not be implemented overnight but should follow a process of development of a complete
system which not only works for the Office but also properly supports the users and which has
bene?tted from extensive consultation with users.

A better approach would be to keep the current rules but to facilitate new users exploring the
capabilities of the software systems and the connections in some ?demo? environment before they
are expected to commit to V0 as a solution. Presently, access to the practice facility seems limited
to those who have already committed to using V0 in a live hearing. While users have no way of
trying the experience before making such a commitment, they simply cannot afford to put their
clients? rights at risk.

With best wishes for your health and that of your colleagues

Yours sincerely,

Francis Leyder

President

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