Like it or not, participation in oral proceedings with the EPO has been primarily limited to video conferencing or so-called "VICOs". The legality of this has already been discussed at great length, for instance, in our own feedback to the EPO as published on our website. However, in the meantime, this is the "new normal" that applicants, patent attorneys, and examiners are faced with.
I am here with my colleague Preston Richard, and we would like to share some of our own experiences of VICOs with you.
Preston, are there any exceptions to VICO?
In principle, it is possible to request an in-person oral proceeding, which currently will result in a postponement. But the chances that such a request is allowed are generally low since the party making such a request should provide a compelling reason supporting their request, such as physical impediment to attending a Video proceeding, or a need for demonstrating haptic features, etc. The technical complexity or commercial importance of an invention is not a valid reason. Therefore, it is highly likely that OP via VICO will nevertheless go ahead for many complex and very important cases.
In such cases, the applicant will be keen to sit in during the Oral Proceeding. I recently had such a case where a client and their foreign associate wanted to join oral proceedings before the Examining Division and the request came rather last minute.
And since Examination proceedings are not open to the public, this can be a tricky issue. So how did you handle it?
I sent the request to the Division by e-mail, and when I joined the proceedings the next morning, they initially took a break to deliberate whether this would be permissible.
In my case, the Chairman announced that it would be permitted providing that neither the client nor the foreign associate were to make any submissions of their own and would be under my supervision.
After the proceedings were concluded, the Division reiterated that, although they had come to a positive decision regarding this point in this instance, they could not speak on behalf of other Divisions so there is no guarantee that this would always be possible.
So what would be your general recommendation to improve the applicant's chances of such a request being allowed?
I would recommend announcing the intention for a client or foreign associate to join the proceedings as far in advance as possible, preferably with the written submissions at the latest, just like one would normally do in the case of proceedings in person.
How is it in opposition or appeals?
Since the opposition or appeal proceeding is open to the public, a request for participation are rather straightforward.
A member of the public could observe the Oral proceeding as a third-party by requesting an invitation link from the EPO.
However, if the inventor or an in-house counsel wishes to join the proceeding on behalf of the party, they should do so by making a simple request within the deadline indicated in the summons.
Such an announcement is important if they wish to do more than merely observe, such as making any submission under the representative's supervision, providing technical comments, or requiring simultaneous interpretation.
Although the EPO currently deems oral proceedings via VICO to be equivalent to proceedings in person, we have found that there are several things to keep an eye on in order to make sure one gets one's case across effectively.
For one, the hand gesticulations one might normally be accustomed to using when making submissions are less likely to be picked up on by members of the Division or Board.
Although looking at their screen, the participants may not be looking directly at you or may not have a full view of you on their screen.
It also becomes essential when demonstrating using a physical device, for instance, the placement of buttons on a game controller. Similarly, if you would like to bring the attention of the members to a certain passage or part of a figure in a particular document.
This means that one needs to assume that any emphasis of a point will be conveyed only by means of speech. For instance, instead of merely pointing to the image, you might need to indicate in words (i.e, top left part of the figure 4). Of course, it is possible to also share your screen, the effectiveness would differ based on the mode selected by the other participants of the Oral Proceedings.
Yes, it should also be borne in mind that the members of the Division or Board may themselves be sitting in different locations and not in the same room. Therefore, just as one might do in in-person proceedings, it is paramount that one consolidates technical arguments and explains them carefully, and not too quickly.
Talking slowly and clearly is also important to compensate for possible lags in the connection, especially in simultaneous interpretation. We hope to have given you some practical insights on VICO at the EPO.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
