It is not therefore:
- an informal interview with the Examiner;
- a telephone conversation.
Oral proceedings may be held (A116 (1) EPC):
- either automatically (Directives E-III 4, ex. necessary instruction);
- on request.
It is quite possible that the quotation will be sent even before another notification is sent by the Examination Division (Guidelines C-III 5) :
- if there is no likelihood of a patent being issued;
- the claims have not been amended since the RREE;
- the objections raised in the RREE are still relevant and have a decisive impact.
The procedure must be pending on the day of submission of the request (T556 / 95), ie
- in general, up to 3 days before the date of the decision (G12 / 91) unless a date of delivery to internal mail is clearly indicated on the decision (T2573 / 11);
- in opposition and where there are irregularities which may give rise to an untraded or inadmissible opposition, until the opposition is finally deemed to be unformed or inadmissible (Directives E-III 2.1).
As regards the oral examination procedure, it is not possible to trigger it before a response to an A94 (3) EPC notification has been issued (Directives C-III 4).
Obligation to grant request
Nevertheless, if for same facts and for same parts a new oral procedure is requested, it may be rejected (A116 (1) EPC):
- if the facts are changed after the first oral procedure which did not terminate the proceedings by a decision (eg new documents), the application must be granted (T194 / 96 and Directives E-III 3);
- if new (even procedural) issues are raised (eg admissibility according to the R137 (3) EPC), the application must be granted (T1775 / 12).
- if it does not consider it useful, and
- if the rejection of the application is not considered.
If a party has requested oral proceedings without indicating that the request was made only incidentally, and that the competent body intends to grant the applicant's request on the merits, the The complainant is informed and the EPO asks if his request for oral proceedings is withdrawn. If no withdrawal occurs, oral proceedings must take place (Directives E-III 2).
Obligation to respect the principle of legitimate expectations
If the EPO indicates that the next step will be an oral procedure but that the holder has never requested the latter, it is not possible for the EPO to change its mind without prior warning (T1423 / 13).
Indeed, the applicant can legitimately expect to be summoned to oral proceedings and to take a decision without this oral procedure would be a breach of the principle of legitimate expectations.
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 the written procedure (Directives E-III 7.2.2).
The EPO then decides whether to maintain or cancel the scheduled oral proceedings.
Implied withdrawal of request for oral proceedings
As indicated below with regard to non-appearance, the fact of indicating to 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 (Directives E-III 7.2.2).
Moreover, the fact that an applicant (in an appeal) does not provide a statement 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 citation
The summons to oral proceedings must mention (Directives E-III 6):
- the subject of the oral proceedings;
- the day and the hour;
- only one date is fixed (" Notice from the European Patent Office dated 18 December 2008 concerning oral proceedings before the EPO », OY 2009, 68 and Notice from the Vice-President, Directorate-General 3 of the European Patent Office dated 16 July 2007 concerning the holding of oral proceedings before the boards of appeal of the EPO », OG 2007, Special Edition No. 3, H.1, point 1);
- the place (chosen freely by the EPO without the possibility of asking to change T1012 / 03);
- a provisional and non-binding notice of the proceeding;
- an invitation to submit observations and evidence (Directives E-III 5);
- the date up to which it is possible to produce documents or parts (R116 (1) EPC) : later 2 months before the oral procedure (Directives E-III 5 or D-VI 3.2 Guidelines).
Deadline for filing documents and exhibits
As mentioned above, the EPO sets a deadline for submission for oral proceedings.
The D-VI 3.2 Guidelines conclude that this date is not "decalable". The Board of Appeal T1750 / 14 does not share this analysis: according to her, this deadline is subject to the discretion of the EPO and the examining (or opposition) division can therefore decide to postpone or refuse its postponement (but must then justify it ).
However, even if the oral proceedings are canceled, this deadline is maintained (T1817 / 16).
Adjournment of oral proceedings
On the initiative of a party
A motion to fix another date may be made if there are substantial grounds for an adjournment (seeA15 (2) RPCR for the appeal).
The request must be motivated in a written declaration:
- for oral proceedings before a court of first instance:
- ( ' Notice from the European Patent Office dated 18 December 2008 concerning oral proceedings before the EPO », OY 2009, 68);
- for an oral procedure before a board of appeal:
Date of request for adjournment
This adjournment must be requested as soon as possible.
If the adjournment is requested late:
- this postponement may be accepted, and a decision may also be taken regarding the apportionment of costs (T930 / 92 and Directives E-III 22.214.171.124);
- this postponement may be refused (ex. 1 week before the oral proceedings T1080 / 99).
Are serious reasons (Directives E-III 7.1.1 or " Notice from the Vice-President, Directorate-General 3 of the European Patent Office dated 16 July 2007 concerning the holding of oral proceedings before the boards of appeal of the EPO »Additional publication, Supplementary publication, OJ 1/2016, VII.1):
- a summons to another procedure (oral or national) in the days before or after the date fixed;
- a serious illness
- a death in the family;
- a marriage ;
- business trips or holidays which have already been the subject of a firm reservation before service of the summons to the oral proceedings.
Nevertheless, it is necessary to explain in detail how the agent can not be replaced by another agent (" Notice from the Vice-President, Directorate-General 3 of the European Patent Office dated 16 July 2007 concerning the holding of oral proceedings before the boards of appeal of the EPO »Additional publication, Supplementary publication, OJ 1/2016, VII.1 and T861 / 12):
- Replacement cost issues are not a criterion;
- The fact that the mandated attorney had specific knowledge in relation to the legal and technical issues to be discussed is too vague (T861 / 12);
- A personal relationship between the agent and the client is not enough (T861 / 12) .
Are not serious reasons (Directives E-III 7):
- a heavy workload;
- a citation to another procedure (oral or national), but served after service of the summons on oral proceedings;
- the fact that the oral procedure is a Monday or a Friday and that this requires traveling the WE;
- a serious illness of the holder without any justification as to why his presence is necessary (T275 / 89);
- the fact that a US participant must participate in the process, but that day is a holiday in the United States (T664 / 00).
Motivation of the EPO in the event of refusal
In any case, in case of refusal of the adjournment, the EPO must justify its decision in order to explain how its discretion was properly used (T447 / 13): she must therefore explain the reasons why she considers the statement of reasons insufficient.
This motivation must not be a simple factual reminder (eg "the reason given is not in the Directives" or "We warned you that the change of agent was not likely to displace the OP"). T2018 / 17) but must explain in detail the reason for the refusal taking into account the facts of the case.
On the initiative of the EPO
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 it.
The new date must allow a minimum period of 2 months between the notification of the new date and the oral procedure (unless the parties agree on a shorter period, Directives E-III 7.2).
If a party has not been convened in the required form, and the latter is absent during the oral proceedings, it must be mentioned in the minutes, close the oral proceedings and set a new date (Directives E-III 126.96.36.199).
This principle is recalled in the summons to oral proceedings (R115 (1) EPC).
Any restitutio in integrum can not be granted if a party has not been able to come because of an impediment (Directives E-VIII 3.1.1).
If a party comes after the end of the oral proceedings, the latter may be reopened (Directives E-III 188.8.131.52):
- if the parties agree, and
- if no decision has been taken at the end of this oral procedure.
If a party shows up late, but before the end of the oral proceedings, that party has the right to be heard (Directives E-III 184.108.40.206).
Even if a party did not compare, the provisions of theA113 EPC remain applicable and this party retains the right to defend itself in relation to possible new facts (Directives E-III 220.127.116.11 for opposition and Directives E-III 18.104.22.168 for the exam).
Room / Division Information
Where possible, the representative who is instructed not to appear in oral proceedings must inform the Examining Division, the Opposition Division or the Board of Appeal.
There is no obligation in itself (T1760 / 09) but the principle of courtesy (erected by the »Code of Professional Conduct concerning the members of the Institute of Professional Representatives before the European Patent Office », OG 1/2015, additional publication) must prevail (T1939 / 10).
In addition, a resolution of the EPI indicates that the representative must inform the EPO of his non-attendance at least one month in advance (" PPE - Collection of Council Decisions, updated on 15/06/2016").
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 it is the directives that say it: Directives E-III 7.2.2)
In review, the summons to oral proceedings must mention any new fact and thus ensures that the right of the applicant to be heard (Directives E-III 22.214.171.124 and Notice from the European Patent Office concerning non-appearance in oral proceedings before the Examining Division », OG 2008, 471).
If ever the claimant files amended claims in response to the citation, he can reasonably expect that such changes may be rejected in the course of proceedings on the basis of new claims. case (G4 / 92, Directives E-III 126.96.36.199 and Notice from the European Patent Office concerning non-appearance in oral proceedings before the Examining Division », OG 2008, 471).
On the other hand, it is not possible to use new facts if the applicant is not present (e.g. documents of the prior art, G4 / 92) or to expose a new reasoning based on existing facts. If an Examining Division ignores it, it sets its decision on a procedural violation (T1448 / 09).
If the applicant is present, it seems entirely possible to introduce new facts (T482 / 16) but this should not be intended to cover poor quality research.
News evidence (which may be prior art documents proving the general knowledge of those skilled in the art) may be presented during the oral proceedings if (G4 / 92):
- they were previously announced
- they only confirm the allegations of the party invoked by them.
In opposition, a party may very well cite new facts or means, even during the oral proceedings (under certain conditions, see below).
The procedure is then the following, in case of absence of a part (Directives E-III 188.8.131.52):
- new claims proposed during the oral proceedings in order to overcome objections of the opponent are acceptable even in the absence of the opponent (T202 / 92);
- new arguments may be used if they do not alter the grounds on which the decision is based (G4 / 92);
- these new facts or means are usable if the absent party has already tried, before the oral proceedings, to refute them (T133 / 92)
- it must be examined whether these new facts or means are late (A114 (2) EPC);
- if they are eligible, these new facts or means can not be used than to make a decision against a party present (G4 / 92 ex. used to revoke a patent if the absent party is an opponent and the holder is present, T1049 / 03).
A priori, the decision G4 / 92 no longer applicable to the appeal procedure since the entry into force of the new rules of procedure of the Boards of Appeal on 1 May 2003 and new facts and arguments could be submitted during the procedure, possibly basing a decision against an absent party (T1621 / 09, T706 / 00 and Instructions for parties to appeal proceedings and their representatives », OJ 2003, 419point 3.5).
Nevertheless, the admissibility of such facts and means should pass through the sieve of A13 (3) RPCR.
Express waiver of participation in oral proceedings
If the holder indicates that he has decided not to participate in the oral proceedings, this statement shall be construed as a waiver of the right to be heard according to theA113 (1) EPC (T892 / 94): the decision can then be based on new facts and means.
Procedure of the oral procedure
Oral procedure in physics
As we will see below, oral procedures in physics are not the norm (OJ 2020, A39).
Even if it remains possible in physics, it is necessary (OJ 2020, A39) :
- the requestor requests it, or
- that this is on the initiative of the examining division, if there are serious reasons preventing the oral procedure from being held by videoconference.
If the oral procedure is refused in physics, the applicant is informed of the reasons for the rejection. No independent appeal is possible (OJ 2020, A39).
Normally oral opposition proceedings take place in physics.
Recourse on examination
Normally oral appeal proceedings take place in physics.
In appeal on opposition
Normally oral appeal proceedings take place in physics.
Oral proceedings by videoconference
Before the Examining Division, oral videoconference procedures are the norm (OJ 2020, A39).
In the case of videoconferencing, documents submitted during the oral proceedings (ie under the R50 EPC) may be submitted:
- by fax (Directives E-III 11.3.1) or
- by e-mail (" Decision of the President of the European Patent Office dated 20 April 2012 concerning the filing of documents by e-mail during interviews and oral proceedings organized in the form of videoconferences" OG 2012, 348 and Directives E-III 11.3.2).
The EPO proposes a pilot project to organize oppositions in videoconferences (OJ 2020, A41).
Thus, opposing videoconferences are possible (OJ 2020, A41). :
- if the opposition division offers it (at discretion);
- the parties all agree.
Recourse on examination
While videoconferences before an examining division are clearly possible, there is currently no corresponding provision for the boards of appeal.
In the past, Chambers have rejected requests for oral proceedings by videoconference on the grounds that no “general framework” existed.
Today, and in particular because of COVID-19, the boards of appeal (T1378 / 16) have relaxed their position and now accept these videoconferences.
The Boards of Appeal may refuse it on a discretionary basis (T2068 / 14).
In appeal on opposition
Historically, it was not possible to appeal against opposition by video: there were no provisions regarding the appropriate video conference rooms or the possibility for the public to attend such video conferences (T1266 / 07, T2068 / 14).
But as soon as the presence of the public is possible, the boards of appeal can accept it (T1378 / 16).
Only an EPO official can record the oral proceedings, but the recording is only used in exceptional circumstances (eg witness hearing).
This registration is only kept until the end of any proceedings that may be initiated and is never communicated to the parties (Directives E-III 10.1).
The parties have no right to record (OJ 2020, A40).
Electronic devices are allowed if they do not interfere with other participants and are not used to make sound recordings (Directives E-III 8.2.1 or " Notice from the Vice-President, Directorate-General 3, dated 10 February 2014, concerning the use of laptops or other electronic devices in oral proceedings before the boards of appeal », OJ 2014, A21).
It is quite possible for the EPO to limit the speaking time of participants as a necessary procedural measure (T601 / 05).
In addition, only attorneys are normally allowed to speak. Nevertheless, a person accompanying the representative may be allowed to speak if (G4 / 95) :
- this person speaks under the control and supervision of the attorney
- this is authorized by the EPO (authorization left to his discretion)
In the context of an opposition, the main conditions of the EPO agreement are (G4 / 95) :
- an authorization must be requested and must contain the name and qualifications of the person wishing to speak and specify the purpose 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 statement. Otherwise the authorization must be refused (if agreed by the opponents) (point 10 of the reasons);
- Speaking is under the permanent responsibility and control of the authorized representative (point 8 of the reasons).
There is no particular reason to limit the quality of this person (eg it can be a former member of the EPO, under certain conditions G2 / 94) or the subject of the discussion (technical or legal, T661 / 14)
Power point presentations
It should be noted that the EPO does not provide a projector (Directives E-III 8.5.1).
As part of the procedures inter partesthe presentation should be provided well in advance. The Opposition Division must assess whether this presentation allows the appellant to defend himself (eg situation or very complex product) and the other party to understand the means invoked (Directives E-III 184.108.40.206).
As part of the procedures ex-partethe competent body may be more flexible and may even authorize such a presentation even though it is proposed during the oral proceedings (Directives E-III 220.127.116.11).
Changes to the request
It may happen that, during oral proceedings, amendments are proposed by the applicant.
These modifications must respect the conditions of the R49 EPC and R50 EPCand, in principle, must 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 », OG 2013, 603): thus, the handwritten modifications must in principle be forbidden.
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 », OG 2013, 603):
- a laptop or similar device to prepare changes
- electronic versions of application documents
Printers are normally at the disposal of the agents.
The identity of the persons present must be identified before the beginning of the oral proceedings (unless they are known by a person of the division, Directives E-III 8.3.1).
Verification of credentials
It must be verified that if a party is represented byDirectives E-III 8.3.1 and Decision of the President of the European Patent Office dated 12 July 2007 concerning the deposit of powers », OG 2007, Special Edition No. 3, L.1):
- a professional representative who does not have a sub-delegation and is not part of the same firm as the usual representative, and who intervenes for the first time in the oral proceedings, or
- a lawyer or an employee of a party who is not a professional representative.
This check is as follows:
- if the person is an authorized agent, the division checks the file to determine whether the former mandatary's power has expired:
- if the power of the former attorney has expired no further action is necessary.
- otherwise, the agent concerned is asked to indicate a reference to a general power of attorney or to deposit a particular power.
- if the person is a lawyer or an employee, the division asks that person to indicate a reference to a general power of attorney or to file a particular power.
When a power is missing, the procedure can continue normallybut:
- the person concerned is invited to produce this power as soon as possible (immediately, or if this is not possible, under 2 months);
- no decision can be pronounced until the power is provided.
Late facts, evidence or changes
In the first place
This paragraph does not apply to late submissions (T131 / 01).
In oral proceedings, the summons indicates a date after which the facts, evidence (R116 (1) EPC) or modifications (R116 (2) EPC) will be considered late: normally, this date precedes 1 month the date of the oral proceedings (D-VI 3.2 Guidelines).
Late facts and evidence
The division is free not to take into account these facts, late proofs (R116 (1) EPC).
Nevertheless, the Opposition Division may accept these facts or evidence if they are, prima facie, relevant (T156 / 84) or if they are motivated by changes in the facts of the case (eg modifications of the claims made by the holder which obliges the opponent to quote a new document, H-II Guidelines 2.7.1).
If a first notification informing the owner or the applicant of the reasons opposing the grant or maintenance of the patent (R116 (2) EPC), the examining division or the opposition to a discretionary power to refuse any modification: in any event, it is necessary that these late modifications born are not, prima facie, no admissible (eg violation ofA123 (2) EPC evident E-VI 2.1 Guidelines).
If these facts, proofs or late amendments result in the adjournment of the proceedings, the division may examine the distribution of costs or simply decide not to take them into account (Directives E-III 8.6).
In appeal procedure
Amendments requested after the date of the proceedings have been fixed can not be admitted if they raise questions which can not be dealt with without adjourning the oral proceedings (A13 (3) RPCR).
Presentation of several possible attacks relating to inventive step
Opponents may exhibit multiple inventive step attacks using each document cited as the closest state of the art document.
In practice, after having determined true The closest state of the art document, the EPO will only discuss attacks from this document.
Refusing to discuss other attacks is not a violation of the right to be heard because the problem-solution approach is properly applied (R13 / 13).
Closure of the oral proceedings
Last modifications before decisions
If a patent is to be issued or maintained in a modified form, the division may adopt the text with the parties during the oral proceedings.
It is also possible for the division to give the applicant or holder a time limit (2 to 4 months in general) to provide an amended request. Otherwise, the patent will be revoked or the application rejected (Directives E-III 8.11).
In the absence of the holder, some opponents sought to revoke the request for non-compliance of the application with the amended claims. The Boards of Appeal state that they are not required to revoke on this ground and that remand is always possible (T985 / 11)
A meaning of this decision in writing will come later (R111 (1) EPC).
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 a change of composition occurs in the chamber or division, an oral procedure must be reconvened.
A report is drawn up following the oral procedure (R124 (1) EPC) containing the essential points of the oral procedure.
If a statement has been made (eg witness, expert), the report is read to him (if he does not waive this right, R124 (2) EPC) and a statement is made that he approves or disapproves of it.
This statement is signed by the officer who drafted it and the chairman of the oral proceedings (R124 (3) EPC).
A copy of the minutes is sent to the parties (R124 (4) EPC).
Public / non-public procedure
The procedure is non-public (A116 (3) EPC):
- in front of the deposit section,
- before the examination divisions,
- before the legal division.
In addition, the court may decide that this procedure is not public (although it should normally be public) if it can present, in particular for a party, serious and unjustified disadvantages (A116 (4) EPC). This is particularly the case when there is discussion about the exclusion of certain parts of the public inspection (T1401 / 05).
If the application has been published, this procedure is normally public (A116 (4) EPC):
- before the boards of appeal;
- before the Enlarged Board of Appeal;
- before the opposition divisions.