Definition

Oral proceedings are official proceedings under A116 EPC (or under A15 RPBA for appeals).

It is therefore not:

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

Conditions

Principle

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

It is quite possible that the summons may be sent even before another notification is sent by the Examination Division (Guidelines C-III 5):

  • if there is no likelihood that a patent will be granted;
  • the claims have not been amended since the ESOP;
  • the objections raised in the ESOP are still current and have a decisive impact.

The proceedings must be pending on the date of filing the request (T556/95), i.e.

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

Regarding the examination oral proceedings, it is not possible to trigger them before a response to an A94(3) EPC notification has been issued (Guidelines C-III 4).

Obligation to grant the request

If a party requests oral proceedings, the competent body is required 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 proceeding is requested, it may be rejected (A116(1) EPC) :

  • if the facts are modified after the first oral proceedings which did not conclude the procedure with a decision (e.g., new documents), the request should 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 should be granted (T1775/12).

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

  • if it does not deem them necessary, 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 if the competent body intends to grant the applicant’s request on the merits, the applicant is informed and the EPO asks whether the request for oral proceedings is withdrawn. If no withdrawal occurs, the oral proceedings must take place (Guidelines E-III 2).

Obligation to respect the principle of legitimate expectation

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 warning (T1423/13).

Indeed, the applicant can legitimately expect to be summoned to oral proceedings and taking a decision without these oral proceedings would be a violation of the principle of legitimate expectation.

Explicit withdrawal of the request for oral proceedings

It is quite possible to withdraw the request for oral proceedings 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 request for oral proceedings

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

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

Summons to oral proceedings

Content of the summons

The summons to oral proceedings must mention (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 « Communication from the Vice-President of 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 without the possibility of requesting a change T1012/03) ;
  • a provisional and non-binding opinion of the division ;
  • an invitation to submit observations and evidence (Guidelines E-III 5) ;
  • the date by which it is possible to submit documents or evidence (R116(1) EPC) : at the latest 2 months before the oral proceedings (Guidelines E-III 5 or Guidelines D-VI 3.2).

Deadline for submitting documents and evidence

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

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

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

Nevertheless, even if the oral proceedings are cancelled, this deadline is maintained (T1817/16).

Furthermore, the summons to oral proceedings must respect a minimum period of 2 months between the notification and the date of the proceedings (Rule 115(1) EPC). Failure to comply with this period constitutes a substantial procedural defect, unless the applicant has expressly consented to a shorter period (T1550/21).

Postponement of the oral proceedings

At the initiative of a party

Principle

A request to set another date may be submitted if there are serious reasons justifying a postponement (see A15(2) RPBA for appeal).

The request must be justified in a written statement:

  • for an oral procedure before a first-instance body:
    • (« Communication from the European Patent Office dated 18 December 2008 concerning oral proceedings before the EPO« , OJ 2009, 68) 
  • for an oral procedure before a board of appeal:
    • (« Communication from the Vice-President in charge of 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 postponement request

This postponement must be requested as soon as possible.

If the postponement is requested late:

  • this postponement may be accepted, 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 « Communication from the Vice-President in charge of 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 procedure (oral or national instance) in the days preceding or following the set date 
  • A serious illness
    • i.e. the representative’s inability 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 marriage 
  • business trips or vacations that have already been firmly booked before the summons to the oral proceedings was issued.

However, it is necessary to explain in detail why the representative cannot be replaced by another representative (« Communication from the Vice-President in charge of 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 issues related to replacement are not a criterion 
  • The fact that the prevented 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

These are not serious reasons (EPO Guidelines E-III 7) :

  • a heavy workload ;
  • a summons to another procedure (oral proceedings or national proceedings), but served after the summons to the oral proceedings ;
  • the fact that the oral proceedings are on a Monday or a 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 the day is a holiday in the United States (T664/00);
  • the fact that the representative has lost their passport (T1810/18).
EPO’s reasoning in case of refusal

In any case, if the postponement is refused, the EPO must provide reasoning for its decision to explain how its discretionary power was correctly used (T447/13) : it must therefore explain the reasons why it considers the given reasoning to be insufficient.

This reasoning must not be a simple statement of fact (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, taking into account the facts of the case.

At the EPO’s initiative

Exceptionally, the division may postpone the oral proceedings:

  • if one of its members is in a situation mentioned above, and
  • if it is not possible to find a member to 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, EPO Guidelines E-III 7.2).

Incorrect summons

If a party has not been summoned in the required form, and if they are 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 (EPO Guidelines E-III 8.3.3.1).

Non-appearance

Principles

The fact that a party does not appear is not a reason not to hold the oral proceedings (Rule 115(2) EPC or Article 15(3) RPBA for appeals).

This principle is recalled in the summons to the oral proceedings (Rule 115(1) EPC).

No restitutio in integrum can be granted if a party could not attend due to an impediment (EPO Guidelines E-VIII 3.1.1).

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

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

Simple delay

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

Absence

Principle

Even if a party does not appear, the provisions of Article 113 EPC remain applicable and this 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 to the Board / Division

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

There is no obligation as such (T1760/09) but the principle of courtesy (as set out in 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, a resolution of the EPI indicates that the representative must notify the EPO of his non-attendance at least one month in advance (« EPI – Collection of Council Decisions, updated 15/06/2016« ). The EPO recalls that the representative does not show courtesy when he notifies his absence the day before the oral proceedings (T124/22): in my opinion, the EPO simply ignores that the representative is only a representative, he follows the instructions of his client and it often happens that the instructions of non-participation arrive late.

Most often, the fact of 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 it is what the guidelines say: Guidelines E-III 7.2.2).

Examination

In examination, the summons to oral proceedings must mention any new fact and thus ensures that the applicant’s right to be heard is guaranteed (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, he can 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).

On the other hand, it is not possible to use 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, it exposes its decision to a procedural defect (T1448/09).

If the applicant is present, it seems quite possible to introduce new facts (T482/16) but this should not aim to cover a poor quality search.

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

  • they have been previously announced
  • they only confirm the allegations of the party invoking them.

Opposition

In opposition proceedings, 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 the absence of a party (E-III 8.3.3.2 Guidelines) :

  • new claims proposed during the oral proceedings in order to overcome objections from the opponent are acceptable 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) ;
  • these new facts or arguments are usable if the absent party has already tried, before the oral proceedings, to refute them (T133/92)
  • it is necessary to examine whether these new facts or arguments are late (A114(2) EPC) ;
  • if they are admissible, these new facts or arguments may be used only 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

A priori, the decision G4/92 is no longer applicable to the appeal procedure since the entry into force of new rules of procedure of the boards of appeal on May 1, 2003 and new facts and arguments could be submitted during the procedure, possibly founding a decision against an absent party (T1621/09, T706/00 and « Instructions to parties to appeal proceedings and to 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.

Explicit waiver to participate in the oral proceedings

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

Course of the oral proceedings

Technical modalities

In-person oral proceedings

Examining Division

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

Even if it remains possible in person, it is necessary (OJ 2020, A39) that:

  • the applicant requests it, or
  • it is at the initiative of the examining division, if serious reasons (G1/21) oppose the holding of the oral proceedings in the form of a videoconference.

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

Opposition Division

Normally, oral proceedings in opposition take place in person.

On appeal from examination

Normally, oral proceedings on appeal are held in person.

On appeal from opposition

Normally, oral proceedings on appeal are 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 videoconferencing, documents submitted during the oral proceedings (i.e. pursuant to Rule 50 EPC) may be submitted:

Opposition Division

The EPO offers a pilot project to organize opposition proceedings by videoconference (OJ 2020, A41).

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

  • if the Opposition Division proposes it (at its discretion);
  • all parties agree.
On appeal from 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 have rejected requests for oral proceedings by videoconference on the grounds that no « general framework » existed.

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

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

On appeal from opposition

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

But as long as the presence of the public is possible, the Boards of Appeal may accept it (T1378/16).

Recordings

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

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

The parties do not have the right to record (OJ 2020, A40).

Electronic devices

Electronic devices are allowed if they do not disturb other participants and are not used to make sound recordings (EPO Guidelines E-III 8.2.1 or « Communication from the Vice-President DG3 of 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

It is quite possible for the EPO to limit the speaking time of participants as a necessary procedural measure (T601/05).

Speaking

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

  • this person speaks under the control and supervision of the representative
  • this is authorized by the EPO (authorization left to its discretion)

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

  • authorization must be requested and it must contain the name and qualifications of the person wishing to speak and specify the subject of the oral presentation;
  • this authorization must reach the EPO sufficiently early before 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);
  • speaking is done under the permanent 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 can be a former member of the EPO, under certain conditions G2/94) or the subject of the discussion (technical or legal, T661/14)

« PowerPoint » type slide presentations

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

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

In the context of inter-partes proceedings, the presentation should be provided well in advance. The opposition division must assess whether this presentation allows the applicant to defend themselves properly (e.g., very complex situation or product) and the other party to understand the means invoked (EPO Guidelines E-III 8.5.1.1).

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

Amendments to the application

It may happen that, during the 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 typed 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 computer or similar device to be able to prepare the amendments
  • electronic versions of the application documents

Printers are normally available to representatives.

Practical arrangements

Verification of identities

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

Verification of authorizations

Authorization needs to 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 authorizations« , OJ 2007, Special Edition No. 3, L.1):

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

This verification is as follows:

  • if the person is an authorized representative, the division checks the file to determine if the authorization of the former representative has expired:
    • if the authorization of the former representative has expired, no further action is necessary.
    • otherwise, the representative concerned is asked to indicate a reference to a general authorization or to file a specific authorization.
  • if the person is a lawyer or an employee, the division asks this person to indicate a reference to a general authorization or to file a specific authorization.

When an authorization is missing, the proceedings may continue normally, but:

  • the person concerned is invited to produce this authorization as soon as possible (immediately, or if this is not possible, within 2 months);
  • no decision can be issued as long as the authorization is not provided.

Late facts, evidence or amendments

In first instance

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

During oral proceedings, the summons indicates a date after which facts, evidence (Rule 116(1) EPC) or amendments (Rule 116(2) EPC) will be considered late: normally, this date precedes the date of the oral proceedings by 1 month (Guidelines D-VI 3.2).

Late facts and evidence

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

However, the opposition division may accept these facts or evidence if they are, prima facie, relevant (T156/84) or if they are justified by changes in the facts of the case (e.g., modifications to the claims made by the proprietor that oblige the opponent to cite a new document, Guidelines H-II 2.7.1).

Late amendments

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

However, the opposition division may accept these amendments if they are justified by new relevant elements (T951/97 and T273/04).

If a first notification informs the proprietor or the applicant of the grounds opposing the grant or maintenance of the patent (R116(2) EPC), the examination or opposition division has discretionary power to refuse any amendment: in any case, it is necessary that these late 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 examination or opposition division was positive on certain points, the latter cannot exercise its discretionary power under R116(2) EPC (T688/16).

Economic aspect

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

In appeal proceedings

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

Amendments requested after the date of the procedure has been set cannot be admitted if they raise issues that cannot be addressed without adjourning the oral proceedings (A13(3) RPBA).

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

Presentation of several possible attacks relating to inventive step

It may happen that opponents present multiple attacks on inventive step by 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 based on this document.

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

Closure of the oral proceedings

Last modifications before decisions

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

It is also possible that the division may give the applicant or the proprietor a time limit (2 to 4 months in general) to submit an amended request. Failing this, 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 the revocation of the application for non-compliance with the amended claims. The Boards of Appeal clarify that they are not required to pronounce a revocation on this ground and that a referral is always possible (T985/11)

Decision

General principle

Decisions may be pronounced at the hearing (R111(1) EPC or R15(6) RPBA for the appeal) and will 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 members of the EPO who actually participated in the oral proceedings (T2175/16): if there is a change in the composition of the board or the division, a new oral proceedings should be convened.

Special case of oppositions

In the case of oral proceedings on opposition, the opposition division may pronounce several types of decisions:

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

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

Special case of the oral examination proceedings

During the oral examination proceedings, the situation is a little different.

Indeed, the examining division can only pronounce a decision of rejection.

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 follow after the validation of the 71(3) by the applicant.

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

Minutes

Minutes are drawn up following the 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 (if they do not waive this right, R124(2) EPC) and a note is made that they approve or disapprove 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).

The minutes must indicate the specific statements having an impact on the definition of the claimed subject-matter (T262/17, T263/05).

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 body concerned may decide that these proceedings be non-public (although they should normally be public) if they may present, in particular for a party, serious and unjustified disadvantages (A116(4) EPC). This is notably the case in the event of discussion on 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.