The European Patent Office (EPO) has offered the possibility of oral proceedings by videoconference since 1998, and in recent years has significantly increased their videoconferencing capacity in all of Rijswijk, Munich and Berlin. This has become increasingly important in view of the travel restrictions imposed by Covid-19. Applicants are now able to rely on videoconferencing for the majority of Examining Division oral proceedings, and the EPO recently launched a pilot project to assess suitability of videoconferencing for opposition oral proceedings.
AA Thornton Partner Mike Jennings was invited to share his experience of videoconference oral proceedings with EPO Examining Divisions, and his comments are shown below.
Q: I understand that AA Thornton has been making use of the videoconferencing option for some years. Are you able to provide some feedback on how well this is working?
Mike: Yes, we have handled a significant number of oral proceedings by videoconference in recent years, following countless oral proceedings in person. Our experience of the ViCo option in examination proceedings has been positive and we would be happy to share our experiences.
Q: Can I start by asking the critical question: do you think the outcome of the oral proceedings you handled by videoconference would have been the same or different if you had sat with the Examining Division in Munich, Berlin or Rijswijk?
Mike: I am confident that the outcome would have been the same, for all of the hearings that went ahead. We had one case that had to be postponed because of technical problems at the EPO, but I think only one. Once the videoconferences have started, we have had very good conversations with Examining Divisions. I should qualify that by noting that we would not have requested a videoconference for any case that we considered unsuitable, for example if we needed to present evidence or if we thought the videoconference would constrain our ability to succeed for our clients. I am pleased to see that it will still be possible to request a hearing in person for cases that require this, but many ex parte cases are suitable for a ViCo and our clients have been very happy with our ViCo success rate.
Q: How have your ViCo oral proceedings differed from oral proceedings held in EPO buildings.
Mike: In most respects, the experience has been the same once the call has started – we have had constructive conversations and reached a shared understanding. We experienced a few minor connection delays, but the EPO’s and our technical teams quickly resolved them and the videoconferences then felt very similar to normal examination oral proceedings. One of the main differences has been that we do not have to leave our videoconference room – we can prepare revised claim sets during the hearing and email them to the Examining Division, who then print and check them. This is actually easier for us than finding an EPO printer along a corridor from a hearing room in Munich or Rijswijk.
When the Examining Divisions need to discuss privately, they simply press a mute button and turn their camera to the wall, which has the same effect as asking us to wait outside the hearing room. Because nobody needs to leave their respective videoconference room and less time is required for printing, the oral proceedings may be slightly quicker than a traditional hearing, but the difference is marginal.
The main difference for me is what happens after the hearing – applicants and their representatives avoid a lot of travel time. I have never minded the travel and we prepare just as thoroughly regardless of whether we are in London, Rijswijk, Munich or Berlin, but it is lovely to finish a hearing and immediately start on the next project (or a celebratory drink!) instead of spending hours travelling home.
Q: Do you have recommendations for others who are trying videoconferences for the first time or choosing their ViCo equipment?
Mike: We wanted to make our videoconference oral proceedings as close as possible to the traditional face-to-face conversation with Examining Divisions. We need to hear every word that is said, and we need Examining Divisions to hear us clearly. That requires a quiet room, and we opted for large wall-mounted monitor screens that allow us to recreate the physical hearing space online. We have been using Polycom’s RealPresence videoconferencing software which offers good quality HD video and audio, with automatic compensation for low light and background light as well as background noise. We run over an H.323 connection with a maximum transmission rate of 1024 Kbit/s.
For my first ViCo, I relied on a monitor’s standard in-built camera and microphone, which was successful but not good enough – our video feed was not very clear for the EPO Examining Division – so we invested in a better camera and a better microphone. We selected Blue’s Yeti USB microphone to improve sound quality and Logitech’s BRIO Stream webcam to provide 4K video, and the feedback from our next EPO Examining Division was very positive. We have not changed our setup since then, except that we have invested in additional ViCo equipment so we can have ViCos running in different rooms at the same time.
Q: Do you have comments on the decision to make videoconferencing the default option for examination hearings, and the new pilot project to assess the suitability of videoconferencing for opposition hearings?
Mike: We respect the EPO’s huge efforts to continue operating as normally as possible during the Covid-19 “lockdown”, and videoconference oral proceedings have been an important part of Examining Division efforts to make progress on suitable cases. Our clients have been very pleased with the outcomes. I hope the EPO management team are congratulating themselves on the decision to invest in increased videoconference capacity.
We also have clients who are willing to contribute to the new opposition trial, but I am not yet recommending videoconferencing as a forum for contentious opposition proceedings – I certainly would not have recommended this before Covid-19 forced everyone to restrict their travel. However, I am grateful to the EPO for trialling this while travel restrictions are in place, as a way to make progress on suitable cases.