When your patent application becomes a “cause célèbre”

Q & A with Steve Howe

Steve Howe is a partner with Reddie & Grose in London. His area of expertise includes telecommunications, video and still image processing, satellite positioning systems, speech encoding and flash memory devices. When not representing clients at the UKIPO and EPO he can be found flying radio controlled model aircraft, riding his Triumph Bonneville motorbike and performing as a magician. He represents the patentee in the case which resulted in the pending referral G 1/21 "Oral proceedings by videoconference".

Steve Howe

Many of us in the European patent profession were following the oral proceedings before the Enlarged Board of Appeal (EBA) on 28 May, to find out the answer to the question of whether oral proceedings by video conference can be appointed without the consent of the parties. As representative of the patentee, what were your thoughts about the decision to postpone the oral proceedings until July 2021?
The original request to refer the question to the EBA was first raised by the opponent at the oral proceedings held by video conference on 8 February 2021. The interlocutory decision setting out the question to be referred was issued in mid-March, with the EBA oral proceedings scheduled for 28 May. Around 50 amicus curiae, as well as the comments from the President, were filed in advance of the oral proceedings and whilst these were available from the online register, these were only notified to the parties shortly before the hearing. Although it means a further delay in the proceedings, I think it is right that the parties should have sufficient notice of submissions to be able to consider and respond to these properly. Postponing the oral proceedings by five weeks does appear to balance the rights of the parties to consider submissions without too much additional delay.

What was your reaction to the referral?
We had not expected a request to be made during the oral proceedings before the Board of Appeal to make a referral to the EBA, and we have not been involved actively in the referral. If the question had not been raised in these proceedings, it is almost certain that it would have been raised in some other proceedings instead.

What is your own view on holding oral proceedings by video conference?
There are cases for which holding the oral proceedings in person is more appropriate than holding these by ViCo.. I have certainly taken part in oral proceedings where it is useful for the parties to be in the same room. However, for many cases, and especially where all the parties agree to ViCo proceedings, then it can be very useful and efficient. This is especially the case during the present pandemic when travel to attend oral proceedings in person difficult, and therefore ViCo oral proceedings can avoid delays in concluding proceedings. .

Thank you. Let's speak again when the EBA gives its final answer.