Article: Effectively resolving IP disputes in the pharmaceutical industry
The Acquisition International magazine interviewed Mr Folke Johansson, Director and European Patent Attorney, and Ms Erja Partio, European Patent Attorney
While it has been possible to hold oral proceedings before the Examining Division by video conferencing, I have been somewhat hesitant to do so. I have felt that the important personal contact should not be missed. I suppose I feared I would get a colder treatment by the Examining Division through video than if I sit physically in the same room.
The European Patent Office started a pilot project on 4 May 2020 that will run until 30 April 2021 to hold oral proceedings in opposition by video conferencing. My first such hearing took place on 21 September 2020.
I was surprised how well it worked. I used Skype for Business, and it was very convenient. The picture was high quality and all the parties could hear each other well. All I needed was a regular laptop, a web camera, and a conferencing speaker with a microphone. Thus, there is no need to invest in any expensive video conferencing equipment. Skype for Business also allows the parties to share information (basic information like phone numbers and email addresses) over the chat functionality.
Additionally, I had another laptop where I had all the documents I would need, and to play safe I also had printouts of the documents. The paper versions allowed me to spread out for example the claims while reviewing sections of the patent on the laptop.
As a curiosity I need to mention that the other party was sitting and video conferencing with us in the building across the street.
Both parties were extremely happy with how well and smoothly everything worked. The oral proceedings lasted for 2 hours, so I saved a lot of time compared to travelling to Munich the previous evening and flying back late the next evening. I warmly recommend using video conferencing to everyone, also in oral proceedings before the Opposition Division (OD).
At the moment, this is the only way to conduct oral proceedings in an EP opposition, as the EPO has postponed all oral proceedings scheduled until 31 December 2020. Note also that in order to hold the oral proceedings before the OD under the pilot project, the consent of both parties must be obtained.
All oral proceedings before the Examining Division (ED) have to be currently held by video conferencing.
– Join the Skype meeting well in advance. I called in about 40 minutes before the start. The Chair of the OD was online already, and we were able to test everything in good time. This was a good thing, because for some reason Skype for Business had tuned off my speaker volume automatically, so I could not hear the EPO until our client who joined for the oral proceedings noticed that the small speaker icon on my screen showed silent. The other party joined in only a few minutes before the start, which was a little too late and caused the proceedings to start a few minutes off schedule.
– Don’t wear jeans (although they are not visible) and a t-shirt. It’s not an ordinary Skype meeting but oral proceedings before the EPO. The OD all dressed formally, and the male members had a tie or a bow tie. It is a nice gesture to dress correspondingly, like you would do if you attended the oral proceedings at the premises of the EPO.
– Prepare, prepare, prepare! This is something I learnt already over 20 years ago before I had my first oral proceedings. You can’t really over-prepare. The fact that the oral proceedings take place by video conferencing makes no exception to how the proceedings are conducted. You will have to argue your case well, and that requires you to prepare thoroughly and know the patent and all the arguments extremely well.
– Ensure you have water, coffee, or tea to keep you refreshed…
– Know the rules and procedures of oral proceedings, and should you experience technical problems, luckily a new summons to the oral proceedings will be issued.
– Documents can be submitted during the oral proceedings over email, and you can even share your screen for illustrative purposes with the consent of the OD.
Enjoy the new proceedings. I believe this will be the new norm for oral proceedings, even after we’ve put the pandemic behind us. Using video conferencing saves time and travel costs, and reduces our CO2 emissions.