Notice from the European Patent Office dated 10 November 2020 concerning non-attendance at oral proceedings in the examination procedure
Recent developments in oral proceedings in the examination procedure have revealed the need to revise the practice in relation to non-attendance at oral proceedings, to clarify certain aspects of this practice and to replace the notice from the EPO relating to this published in 2008.[ 1 ]
1. Withdrawal of the request for oral proceedings
Applicants may decide not to make use of the opportunity to present their comments at oral proceedings on any of the objections raised by the examining division and thus not to attend the oral proceedings. In such a case, they have a duty to inform the EPO as early as possible. This applies irrespective of whether the oral proceedings were arranged at the request of the applicant or at the instigation of the examining division and whether the oral proceedings are held by videoconference or, by way of exception, on the premises of the EPO.[ 2 ]
Applicants choosing not to attend oral proceedings should withdraw their request for oral proceedings by filing an unambiguous statement to that effect. This statement serves the purpose of legal certainty and efficiency, as it avoids unnecessary intermediate action from the EPO seeking clarification of the situation.
An announcement of non-attendance at oral proceedings or a statement that the party will not be represented at oral proceedings is normally interpreted as a withdrawal of any request for oral proceedings (see also Guidelines for Examination in the European Patent Office (hereinafter Guidelines for Examination) E-III, 7.2.2).
A request for a decision according to the state of the file is also interpreted as a withdrawal of any request for oral proceedings on file (see T 2704/16). When requesting a decision in that form, applicants are expressing their interest in an immediate written decision on the application without any further involvement from their side. Accordingly, the practice described in paragraphs 3 and 4 of sub-section C-V, 15.1 of the Guidelines for Examination 2019 is discontinued.
2. Impact on the examination procedure of the withdrawal of a request for oral proceedings
2.1 Oral proceedings held in the absence of applicants
If a request for oral proceedings is withdrawn or deemed to be withdrawn, the decision on whether the scheduled oral proceedings are maintained or cancelled is at the discretion of the examining division (Guidelines for Examination E-III, 7.2.2). This discretion is exercised having regard to the principle of procedural economy (Guidelines for Examination C-IV, 3) and to applicants' right to be heard. The division may also decide to maintain the date of the oral proceedings, but to hold them by videoconference even if they had originally been scheduled to take place on the EPO premises by way of exception, or to allow remote participation of the members of the examining division.
Since an announcement of non-attendance is normally interpreted as a withdrawal of any request for oral proceedings, the examining division is not bound by any request from applicants not wishing to attend the oral proceedings but simultaneously maintaining their request for oral proceedings or even insisting on the oral proceedings taking place in their absence (see e.g. T 910/02).
If applicants who have been duly summoned to oral proceedings do not appear as summoned, oral proceedings may be conducted without them (Rule 115(2) EPC, Guidelines for Examination E-III, 8.3; Article 5 of the Decision of the President of the European Patent Office dated 1 April 2020 concerning oral proceedings by videoconference before examining divisions, OJ EPO 2020, A39). In such a case, the decision may be given orally in the absence of the applicants (Rule 111(1) EPC). Oral proceedings give applicants the opportunity to present their comments, in accordance with Article 113(1) EPC. If applicants decide not to attend oral proceedings, they choose not to make use of their opportunity to comment at the oral proceedings on any of the objections, and thus rely solely on the arguments as set out in the written submissions.
Oral proceedings are usually maintained when applicants have filed amended claims in reply to a summons to oral proceedings. Applicants who file amended claims or other submissions in reply to a summons to oral proceedings should expect that any objection relating to the amended claims and submissions will be dealt with at the oral proceedings. The fact that oral proceedings are maintained indicates that objections are still outstanding and that they will be discussed at the oral proceedings. Applicants should thus expect that a decision based on objections which arise against the amended claims during oral proceedings will be taken in their absence.
2.2 Resumption of the written procedure
If the examining division cancels oral proceedings, it may resume the written procedure by issuing a decision on the application. That will normally be the case where applicants have been informed about all the grounds against the grant of the patent and have had the opportunity to comment on them.
The issuance of the written decision on the application in such cases is not normally subject to any time limit, i.e. it may take place before the final date fixed under Rule 116(1) EPC for making written submissions. The main aim of this provision is to allow the decision-making department and the parties sufficient time to prepare thoroughly for the oral proceedings, thereby ensuring that the procedure can be brought to an end at the oral proceedings (see OJ EPO 1995, 418 and 419; T 765/06).
3. Effect of the present notice
The present notice applies and replaces the Notice from the European Patent Office concerning non-attendance at oral proceedings before the examining division (OJ EPO 2008, 471) with effect from 1 December 2020.
[ 1 ] See OJ EPO 2008, 471.
[ 2 ] Decision of the President of the European Patent Office dated 1 April 2020 concerning oral proceedings by videoconference before examining divisions, OJ EPO 2020, A39; Notice from the European Patent Office dated 1 April 2020 concerning oral proceedings and interviews to be held by videoconference, OJ EPO 2020, A122.