During prosecution of a European patent application, the Examining division may request oral proceedings during which the European representative (Patent Attorney) will be given the opportunity to present his arguments formally to several technically qualified examiners. This procedure may arise when it is felt that the case is not genuinely progressing, or when a technical point needs to be clarified.

Until now such oral proceedings were happening preferably in person before the Examining division, and although the applicant could place a request for the oral proceedings to take place via videoconferencing, such a request had to be placed well in advance and could be rejected.

According to a recent decision from the president of the EPO (1) entering into force on the 2 April 2020, oral proceedings before examining divisions are now to be held by video-conference. It should be stressed that this decision only concerns the procedure before the examining division and does not affect other oral proceedings procedures before the opposition division or the board of appeal.

The decision specifies that oral proceedings may still be held on the premises of the EPO under special circumstances. This may happen either at the request of the applicant or at the instigation of the examining division if there are “serious reasons” against holding the oral proceedings by video-conference. Example of such serious reasons include the need to take evidence directly.

From a practical standpoint, the new procedure provides some flexibility regarding the location of the various parties attending the proceedings. For instance, the applicant and its representative may connect to the oral proceedings by video-conference from different locations. Importantly, the decision also mentions that if technical problems were to prevent the oral proceedings from being conducted, the examining division would then issue a new summons to oral proceedings.

Although there might be concerns about the effectiveness of performing such an important formal procedure remotely, the use of videoconferencing will open‑up the procedure to a wider range of applicants by significantly reducing the cost of attending oral proceedings. This decision of the President of the EPO takes place in a challenging global context. Governments have committed to reduce carbon emissions to net zero and the recent COVID‑19 outbreak demonstrated the limit of the current system in a period of crisis. At Scintilla we feel that this decision goes in the right direction and that the greater use of videoconferencing should be embraced.

If you would like more information regarding the practical implementations of this new oral proceedings procedure, contact us at mail@scintilla-ip.com or give us a call.

(1) https://www.epo.org/law-practice/legal-texts/official-journal/president-notices/archive/20200401.html