Oral proceedings

Definition

Oral proceedings are an official procedure within the meaning of A116 EPC (or within the meaning of A15 RPBA for appeals).

This does not include:

• an informal interview with the Examiner;
• A telephone conversation.

Conditions

Principle

Oral proceedings may be held (A116(1) EPC):

• either ex officio (Guidelines E-III 4, e.g., necessary instruction);
• or upon request.

A summons may even be issued before any other communication from the Examining Division (Guidelines C-III 5):

• if there is no probability that a patent will be granted;
• the claims have not been amended since the European search report;
• the objections raised in the European search report remain relevant and are decisive.

The proceedings must be pending on the date the request is filed (T556/95), i.e.:

• generally, until 3 days before the date indicated on the decision (G12/91), unless a date of internal mail delivery is clearly indicated on the decision (T2573/11);
• in opposition proceedings, and where there are irregularities that may result in the opposition being deemed not filed or inadmissible, until the opposition is finally deemed not filed or inadmissible (Guidelines E-III 2.1).

Regarding oral proceedings in examination, it is not possible to initiate them before a response to a communication under A94(3) EPC has been issued (Guidelines C-III 4).

Obligation to grant the request

If a party requests oral proceedings, the competent instance is obliged to grant this request (A116(1) EPC and Guidelines E-III 2).

However, if for the same facts and for the same parties a new oral proceedings request is filed, this may be refused (A116(1) EPC):

• if the facts are amended after the first oral proceedings that did not conclude the proceedings with a decision (e.g., new documents), the request must be granted (T194/96 and Guidelines E-III 3);
• if new issues (even procedural ones) are raised (e.g., admissibility under R137(3) EPC), the request must be granted (T1775/12).

Furthermore, there is an exception concerning the receiving section. It may refuse oral proceedings (while informing the requester, Guidelines E-III 2) if (A116(2) EPC):

• it does not consider them useful, and
• if the rejection of the application is not envisaged.

If a party has requested oral proceedings without indicating that this request was made only as an auxiliary measure, and the competent instance intends to grant the requester’s substantive request, the requester is informed and the EPO asks whether the oral proceedings request is withdrawn. If no withdrawal occurs, the oral proceedings must take place (Guidelines E-III 2).

Obligation to respect the principle of legitimate expectations

If the EPO indicates that the next step will be oral proceedings but the proprietor has never requested the latter, the EPO cannot change its mind without prior notice (T1423/13).

Indeed, the applicant may legitimately expect to be summoned to oral proceedings, and deciding without such proceedings would violate the principle of legitimate expectations.

Explicit withdrawal of the oral proceedings request

It is entirely possible to withdraw an oral proceedings request and to request a return to written proceedings (Guidelines E-III 7.2.2).

The EPO then decides whether to maintain or cancel the scheduled oral proceedings.

Implicit withdrawal of the oral proceedings request

As indicated below regarding non-appearance, informing the EPO that one will not attend the oral proceedings is interpreted by the EPO as a withdrawal of the oral proceedings request (Guidelines E-III 7.2.2).

Furthermore, the fact that an appellant (in an appeal) does not submit a statement of grounds despite reminders from the EPO is considered an implicit withdrawal of the oral proceedings request (T2162/14).

Summons to oral proceedings

Content of the summons

The summons to oral proceedings must specify (Guidelines E-III 6):

• the subject of the oral proceedings;
• the day and time;
  • only one date is set (« Notice from the European Patent Office dated 18 December 2008 concerning oral proceedings before the EPO« , OJ 2009, 68 and « Notice from the Vice-President Directorate-General 3 of the European Patent Office dated 16 July 2007 concerning oral proceedings before the boards of appeal of the EPO« , OJ 2007, Special edition No. 3, H.1, point 1));
• the place (freely chosen by the EPO with no possibility to request a change T1012/03);
• a provisional and non-binding opinion of the instance;
• an invitation to file observations and evidence (Guidelines E-III 5);
• the date by which documents or evidence may be filed (R116(1) EPC): at the latest 2 months before the oral proceedings (Guidelines E-III 5 or Guidelines D-VI 3.2).

Deadline for filing documents and evidence

As mentioned above, the EPO sets a submission deadline for oral proceedings.

This deadline does not benefit from the provisions of R132 EPC (R116(1) EPC).

The Guidelines D-VI 3.2 therefore conclude that this deadline is not « extendable. » Board of Appeal decision T1750/14 does not share this view: according to it, this deadline is subject to the discretion of the EPO, and the examining (or opposition) division may therefore decide to postpone it or refuse such postponement (but must then provide reasons for its decision).

Nevertheless, even if the oral proceedings are canceled, this deadline remains in force (T1817/16).

Adjournment of oral proceedings

At the request of a party

Principle

A request for the fixing of another date may be filed if there are serious reasons justifying an adjournment (see A15(2) RPBA for appeals).

The request must be substantiated in a written statement:

• for oral proceedings before a first instance body:
  • (« Notice from the European Patent Office dated 18 December 2008 concerning oral proceedings before the EPO« , OJ 2009, 68);
• for oral proceedings before a board of appeal:
  • (« Notice from the Vice-President Directorate-General 3 of the European Patent Office dated 16 July 2007 concerning oral proceedings before the boards of appeal of the EPO« , OJ 2007, Special edition No. 3, H.1, point 2 and A15 RPBA).

Date of the request for postponement

This postponement must be requested as soon as possible.

If the postponement is requested late:

• this postponement may be granted, and a decision may also be taken regarding the apportionment of costs (T930/92 and Guidelines E-III 8.3.3.1);
• this postponement may be refused (e.g. 1 week before the oral proceedings T1080/99).

Serious reasons

Serious reasons include (Guidelines E-III 7.1.1 or « Notice from the Vice-President Directorate-General 3 of the European Patent Office dated 16 July 2007 concerning oral proceedings before the boards of appeal of the EPO » Supplementary publication, Supplementary publication, OJ 1/2016, VII.1):

• a summons to another proceedings (oral or national instance) in the days preceding or following the scheduled date;
• A serious illness
  • i.e. inability of the representative to travel and present their case satisfactorily, T447/13;
  • no medical certificate is required by the Guidelines, T447/13;
• a death in the family;
• a wedding;
• business trips or holidays that were firmly booked before the summons to oral proceedings was notified.

Nevertheless, it must be explained in detail why the representative cannot be replaced by another representative (« Notice from the Vice-President Directorate-General 3 of the European Patent Office dated 16 July 2007 concerning oral proceedings before the boards of appeal of the EPO » Supplementary publication, Supplementary publication, OJ 1/2016, VII.1 and T861/12):

• Cost-related issues regarding replacement are not a criterion;
• The fact that the unavailable representative had specific knowledge related to the legal and technical issues to be discussed is too vague (T861/12);
• A personal relationship between the representative and the client is not sufficient (T861/12).

Non-serious reasons

Non-serious reasons include (Guidelines E-III 7):

• a heavy workload;
• a summons to another proceedings (oral or national instance), but notified after the summons to oral proceedings was notified;
• the fact that the oral proceedings are scheduled on a Monday or Friday, requiring travel over the weekend;
• a serious illness of the proprietor without justification as to why their presence is necessary (T275/89);
• the fact that an American participant must attend the proceedings, but that day is a public holiday in the United States (T664/00);
• the fact that the representative lost their passport (T1810/18).

EPO’s reasoning in case of refusal

In any event, in case of refusal of the adjournment, the EPO must justify its decision in order to explain how its discretionary power has been correctly exercised (T447/13): it must therefore explain the reasons why it considers the reasoning provided to be insufficient.

This reasoning must not be a mere recital of facts (e.g., « the reason given is not in the Guidelines » or « We had warned you that the change of representative was not such as to postpone the oral proceedings » T2018/17) but must explain in detail the reason for the refusal by taking into account the facts of the case.

At the EPO’s initiative

Exceptionally, the division may adjourn the oral proceedings:

• if one of its members is in a situation mentioned above, and
• if it is not possible to find a member who can replace them.

New date

The new date must allow a minimum period of 2 months between the notification of the new date and the oral proceedings (unless the parties agree to a shorter period, Guidelines E-III 7.2).

Incorrect summons

If a party has not been summoned in the required form, and is absent during the oral proceedings, this must be mentioned in the minutes, the oral proceedings must be closed, and a new date must be set (Guidelines E-III 8.3.3.1).

Non-appearance

Principles

The fact that a party does not appear is not a reason for not holding the oral proceedings (R115(2) EPC or A15(3) RPBA for appeal).

This principle is recalled in the summons to oral proceedings (R115(1) EPC).

No restitutio in integrum may be granted if a party was unable to attend due to an impediment (Guidelines E-VIII 3.1.1).

If a party appears after the end of the oral proceedings, the proceedings may be reopened (Guidelines E-III 8.3.3.1):

• if the parties agree, and
• if no decision has been taken at the end of the oral proceedings.

Simple delay

If a party arrives late but before the end of the oral proceedings, that party has the right to be heard (Guidelines E-III 8.3.3.1).

Absence

Principle

Even if a party does not appear, the provisions of A113 EPC remain applicable, and that party retains the right to defend itself in relation to any new facts (Guidelines E-III 8.3.3.2 for opposition and Guidelines E-III 8.3.3.3 for examination).

Information from the board / division

Where possible, the representative who has been instructed not to attend oral proceedings must inform the examining division, opposition division, or board of appeal accordingly.

There is no obligation per se (T1760/09), but the principle of courtesy (established by the Code of Professional Conduct for Members of the Institute of Professional Representatives before the European Patent Office, OJ 1/2015, supplementary publication) should prevail (T1939/10).

Furthermore, an epi resolution states that the representative must notify the EPO of their non-attendance at least one month in advance (« epi – Council Decisions Collection, updated 15/06/2016« ). The EPO notes that a representative does not act courteously when they notify the Office of their absence on the eve of oral proceedings (T124/22): in my view, the EPO simply ignores that the representative is only a representative, they carry out their client’s instructions, and it often happens that instructions not to participate arrive late.

In most cases, simply indicating that one will not be present at the oral proceedings is interpreted as a withdrawal of the request for oral proceedings (this is debatable, but this is what the Guidelines state: Guidelines E-III 7.2.2).

Examination

In examination, the summons to oral proceedings must mention any new facts and thus ensures that the applicant’s right to be heard is safeguarded (Guidelines E-III 8.3.3.3 and « Notice from the European Patent Office concerning non-attendance at oral proceedings before the examining division« , OJ 2008, 471).

If the applicant submits amended claims in response to the summons, they may reasonably expect that these amendments may be rejected during the proceedings on the basis of new arguments (G4/92, Guidelines E-III 8.3.3.3 and « Notice from the European Patent Office concerning non-attendance at oral proceedings before the examining division« , OJ 2008, 471).

However, it is not possible to introduce new facts if the applicant is not present (e.g., prior art documents, G4/92) or to present a new reasoning based on existing facts. If an examining division disregards this, its decision may be subject to a procedural violation (T1448/09).

If the applicant is present, it appears entirely possible to introduce new facts (T482/16), but this must not aim to compensate for a poor search.

New evidence (which may include prior art documents proving the common general knowledge of the skilled person) may be presented during oral proceedings if (G4/92):

• they have been announced in advance
• they merely confirm the allegations of the party invoking them.

Opposition

In opposition, a party may well cite new facts or arguments, even during the oral proceedings (under certain conditions, see below).

The procedure is then as follows in the event of a party’s absence (Guidelines E-III 8.3.3.2):

• new claims proposed during the oral proceedings to overcome objections by the opponent are admissible even in the absence of the opponent (T202/92);
• new arguments may be used if they do not have the effect of changing the grounds on which the decision is based (G4/92);
• such new facts or arguments may be used if the absent party has already attempted, prior to the oral proceedings, to refute them (T133/92);
• it must be examined whether such new facts or arguments are late-filed (A114(2) EPC);
• if admissible, such new facts or arguments may only be used to render a decision against a present party (G4/92, e.g., usable to revoke a patent if the absent party is an opponent and the proprietor is present, T1049/03).

Appeal

In principle, the decision G4/92 no longer applies to the appeal procedure since the entry into force of the new Rules of Procedure of the Boards of Appeal on May 1, 2003, and new facts and arguments could be submitted during the proceedings, potentially forming the basis for a decision against an absent party (T1621/09, T706/00 and « Notice for parties to appeal proceedings and their representatives« , OJ 2003, 419, point 3.5).

Nevertheless, the admissibility of such facts and arguments should be subject to the scrutiny of A13(3) RPBA.

Express waiver to participate in the oral proceedings

If the proprietor indicates that they have decided not to participate in the oral proceedings, this declaration must be interpreted as a waiver of the right to be heard under A113(1) EPC (T892/94): the decision may then be based on new facts and arguments.

Conduct of the oral proceedings

Technical modalities

Oral proceedings in person

Examining Division

As we will see below, oral proceedings in person are not the norm (OJ 2020, A39).

Even if still possible in person, the following is required (OJ 2020, A39):

• that the applicant requests it, or
• that it is at the initiative of the Examining Division if there are serious reasons (G1/21) opposing the holding of oral proceedings by videoconference.

If the request for oral proceedings in person is refused, the applicant is informed of the reasons for the refusal. No independent appeal is possible (OJ 2020, A39).

Opposition Division

Normally, oral proceedings in opposition take place in person.

In appeal against examination

Normally, oral proceedings in appeal take place in person.

In appeal against opposition

Oral proceedings in appeal are normally held in person.

Oral proceedings by videoconference

Examining Division

Before the Examining Division, oral proceedings by videoconference are the norm (OJ 2020, A39).

In the case of videoconference, documents submitted during oral proceedings (i.e. pursuant to R50 EPC) may be submitted:

• by fax (Guidelines E-III 11.3.1) or
• by email (« Decision of the President of the European Patent Office, dated 20 April 2012, concerning the filing of documents by email during interviews and oral proceedings held by videoconference« OJ 2012, 348 and Guidelines E-III 11.3.2).

Opposition Division

The EPO offers a pilot project for holding oppositions by videoconference (OJ 2020, A41).

Thus, videoconferences in opposition are possible (OJ 2020, A41):

• if the Opposition Division proposes it (at its discretion);
• all parties agree.

In appeal against examination

While videoconferences before an Examining Division are clearly possible, there is currently no corresponding provision for the Boards of Appeal.

In the past, the Boards rejected requests for oral proceedings by videoconference on the grounds that no « general framework » existed.

Today, particularly due to COVID-19, the Boards of Appeal (T1378/16) have relaxed their position and now accept such videoconferences… even imposing them… without this being seen as a particular issue (T1197/18 or G1/21).

The Boards of Appeal may also refuse them at their discretion (T2068/14).

In appeal against opposition

Historically, it was not possible to conduct appeals against opposition by video: there were no provisions regarding appropriate videoconference rooms or the possibility for the public to attend such videoconferences (T1266/07, T2068/14).

However, as soon as public attendance is possible, the Boards of Appeal may accept it (T1378/16).

Recordings

Only an EPO officer may record oral proceedings, but the recording is only used in exceptional circumstances (e.g., hearing a witness).

This recording is retained only until the end of any proceedings that may be initiated and is never communicated to the parties (Guidelines E-III 10.1).

Parties are not permitted to make recordings (OJ 2020, A40).

Electronic devices

Electronic devices are permitted provided they do not disturb other participants and are not used to make sound recordings (Guidelines E-III 8.2.1 or « Notice from the Vice-President Directorate-General 3 dated 10 February 2014 concerning the use of laptop computers or other electronic devices during oral proceedings before the Boards of Appeal« , OJ 2014, A21).

Speaking time

The EPO may limit the speaking time of participants as a necessary procedural measure (T601/05).

Taking the floor

Furthermore, only representatives are normally permitted to speak. However, a person accompanying the representative may be allowed to speak if (G4/95):

• this person speaks under the control and supervision of the representative
• this is permitted by the EPO (authorization is at its discretion)

In the context of an opposition, the main conditions for EPO approval are (G4/95):

• an authorization must be requested, and it must include the name and qualifications of the person wishing to speak and specify the subject of the oral presentation;
• this authorization must be received by the EPO sufficiently in advance of the oral proceedings: the opposing parties must be able to prepare their response to this presentation. Otherwise, the authorization must be refused (unless the opponents agree) (point 10 of the reasons);
• the taking of the floor is under the continuous responsibility and control of the authorized representative (point 8 of the reasons).

There is no particular reason to limit the qualifications of this person (e.g., this may be a former EPO member, under certain conditions G2/94) or the subject of the discussion (technical or legal, T661/14).

PowerPoint-style slide presentations

Such slide presentations are only possible with the discretionary authorization of the competent body (T1556/06 and Guidelines E-III 8.5.1).

It should be noted that the EPO does not provide a projector (Guidelines E-III 8.5.1).

In inter partes proceedings, the presentation should be provided well in advance. The opposition division must assess whether this presentation allows the applicant to properly defend themselves (e.g., in cases of very complex situations or products) and the other party to fully understand the arguments presented (Guidelines E-III 8.5.1.1).

In ex parte proceedings, the competent body may be more flexible and may even authorize such a presentation when it is proposed during the oral proceedings (Guidelines E-III 8.5.1.2).

Amendments to the application

It may happen that, during oral proceedings, amendments are proposed by the applicant.

These amendments must comply with the conditions of Rule 49 EPC and Rule 50 EPC, and must, in principle, be typewritten or printed (« Notice from the European Patent Office dated 8 November 2013 concerning the application of Rules 49 and 50 EPC in the case of handwritten amendments« , OJ 2013, 603): thus, handwritten amendments should in principle be prohibited.

It is therefore recommended to bring (« Notice from the European Patent Office dated 8 November 2013 concerning the application of Rules 49 and 50 EPC in the case of handwritten amendments« , OJ 2013, 603):

• a laptop or similar device to prepare amendments
• electronic versions of the application documents

Printers are normally available for representatives.

Practical arrangements

Identity verification

The identity of the persons present must be verified before the start of the oral proceedings (unless they are known to a member of the division, Guidelines E-III 8.3.1).

Power of Attorney Verification

A power of attorney must be verified only if a party is represented by (Guidelines E-III 8.3.1 and « Decision of the President of the European Patent Office, dated 12 July 2007, concerning the filing of powers of attorney« , OJ 2007, Special Edition No. 3, L.1):

• an appointed representative who has no sub-delegation and is not part of the same firm as the usual representative, and who is acting for the first time in oral proceedings, or
• a lawyer or an employee of a party who is not an appointed representative.

This verification is as follows:

• if the person is an appointed representative, the division checks the file to determine whether the power of attorney of the previous representative has expired:
  • if the power of attorney of the previous representative has expired, no further action is required.
  • otherwise, the representative concerned is requested to provide a reference to a general power of attorney or to file a specific power of attorney.
• if the person is a lawyer or an employee, the division requests that person to provide a reference to a general power of attorney or to file a specific power of attorney.

Where a power of attorney is missing, the proceedings may continue normally, but:

• the person concerned is invited to submit this power of attorney as soon as possible (immediately, or if this is not possible, within 2 months);
• no decision may be issued until the power of attorney has been provided.

Late-filed Facts, Evidence or Amendments

At First Instance

This paragraph does not apply to late-filed arguments (T131/01).

In oral proceedings, the summons specifies a date after which facts, evidence (R116(1) EPC) or amendments (R116(2) EPC) will be considered late-filed: normally, this date is 1 month before the date of the oral proceedings (Guidelines D-VI 3.2).

Late-filed Facts and Evidence

The division is free not to take into account such late-filed facts and evidence (R116(1) EPC).

However, the opposition division may admit such facts or evidence if they are, prima facie, relevant (T156/84) or if they are occasioned by developments in the subject matter of the proceedings (e.g., amendments to the claims made by the proprietor which require the opponent to cite a new document, Guidelines H-II 2.7.1).

Late-filed Amendments

The division is free not to take into account such late-filed amendments (T1105/98 and T681/02).

However, the opposition division may admit such amendments if they are occasioned by new relevant elements (T951/97 and T273/04).

If a first communication informs the proprietor or applicant of the grounds prejudicing the grant or maintenance of the patent (R116(2) EPC), the examining or opposition division has discretion to refuse any amendment: in any event, it is necessary that such late-filed amendments are not, prima facie, inadmissible (e.g., obvious violation of A123(2) EPC, Guidelines E-VI 2.1).

However, if the preliminary opinion of the examining or opposition division was positive on certain points, the latter may not exercise its discretion under R116(2) EPC (T688/16).

Economic aspect

If such late facts, evidence or amendments result in the adjournment of the proceedings, the division may consider the apportionment of costs or simply decide not to take them into account (Guidelines E-III 8.6).

In appeal proceedings

R116 EPC does not apply before the boards of appeal (G6/95): only A15 RPBA applies.

Amendments requested after the date for oral proceedings has been set may not be admitted if they raise issues which cannot be dealt with without adjourning the oral proceedings (A13(3) RPBA).

However, if a notification under R116 EPC is issued in error, the board of appeal is bound by the date indicated in the summons with regard to the deadline for response (T97/94).

Presentation of multiple possible attacks on inventive step

It may happen that opponents present multiple attacks on inventive step using each cited document as the closest prior art document.

In practice, after determining the « true » closest prior art document, the EPO will only discuss the attacks starting from that document.

The refusal to discuss other attacks does not constitute a violation of the right to be heard, as the problem-solution approach is correctly applied (R13/13).

Closure of the oral proceedings

Final amendments before decisions

If a patent is to be granted or maintained in amended form, the division may settle the text with the parties during the oral proceedings.

It is also possible for the division to give the applicant or proprietor a time limit (2 to 4 months in general) to file an amended application. If this is not done, the patent will be revoked or the application refused (Guidelines E-III 8.11).

In the absence of the proprietor, some opponents have sought to request revocation of the application for failure to comply with the amended claims. The boards of appeal have clarified that they are not obliged to order revocation on this ground and that remittal is always possible (T985/11).

Decision

General principle

Decisions may be pronounced at the hearing (R111(1) EPC or R15(6) RPBA for appeal) and then become effective (G12/91).

A written notification of this decision will follow later (R111(1) EPC).

It is the date of this notification that starts the time limit for filing an appeal (A108 EPC and Guidelines E-III 9).

It is important to note that the decision must be signed by the EPO members who actually participated in the oral proceedings (T2175/16): if there is a change in the composition of the board or division, a new oral proceedings must be convened.

Special case of oppositions

In the case of oral proceedings in opposition, the opposition division may issue several types of decision:

• a decision to maintain the patent as granted
• a decision to maintain the patent in amended form
• a rejection

Once these decisions have been issued, it is not possible to go back (except in the case of an appeal, but that is another matter).

Special case of oral proceedings in examination

During oral proceedings in examination, the situation is slightly different.

Indeed, the examining division may only issue a decision of refusal.

If the examining division is of the opinion that a request allows for the grant of a patent, it will indicate its intention to grant a patent, but this is not formally a decision: it will be necessary to wait for the decision to grant, which will occur after the applicant’s validation of the Rule 71(3) communication.

I often hear examining divisions announcing, « Here is our decision: we are of the opinion that request No. X is allowable, » but I believe this is a mistake. This is not a decision.

Minutes

Minutes are drawn up following oral proceedings (R124(1) EPC) containing the essential points of the oral proceedings.

If a deposition has been made (e.g., witness, expert), the minutes are read to them (unless they waive this right, R124(2) EPC), and a note is made that they approve or disapprove of them.

These minutes are signed by the officer who drafted them and the chair of the oral proceedings (R124(3) EPC).

A copy of the minutes is sent to the parties (R124(4) EPC).

Public/non-public proceedings

Non-public proceedings

The proceedings are non-public (A116(3) EPC):

• before the receiving section,
• before the examining divisions,
• before the legal division.

Furthermore, the competent instance may decide that these proceedings be non-public (even though they should normally be public) if they could cause, in particular for a party, serious and unjustified disadvantages (A116(4) EPC). This is notably the case when discussing the exclusion of certain documents from public inspection (T1401/05).

Public proceedings

If the application has been published, these proceedings are normally public (A116(4) EPC):

• before the boards of appeal;
• before the Enlarged Board of Appeal;
• before the opposition divisions.