J.A. McStea Teemacs GmbH

Relief beyond belief…

Bubendorf, 15 May 2023

The great exhaling you heard recently came from CIPA. The UK’s application to join the CPTPP caused a great deal of nervousness, not because of the UK’s distance from the Pacific and the improbability of relocating the country there, but because of the Treaty’s provision of a grace period, the implementation of which in UK IP law would have meant exclusion from the EPC, which has only the Article 55 provisions (theft of property and international exhibition). CIPA lobbied furiously, spending serious money, and it was helped by the UKIPO, which produced figures to the effect that the value of the patent profession to the UK economy was in excess of £1 billion. To my surprise, the UK Government actually did something sensible for a change – it listened and negotiated to keep the UK in the EPC, and it succeeded, such that a grace period would only be considered in the context of a broader patent law harmonisation. The sigh of relief may be heard here.

Good sense is not a strongpoint of UK governments, and cutting itself off from its natural market just across the Channel was an enormous act of self-harm. Brexit is not the only cause of the mess in which the UK currently finds itself, but it added considerably to it. An article in the international edition of the German newsmagazine Der Spiegel covers it well – I’m assured by contacts in the UK that this is an accurate picture, particularly oop North. In a recent visit to the south, we saw that this area seems as prosperous as ever (we are also able to confirm that, at certain times of day, London’s M25 ring road is indeed the capital’s biggest parking lot).

Still on the subject of that sceptred isle, unless you’ve been living under a rock, you’ll realise that Australia has a new Head of State, Chuck III (but for how long?). Personally, my money was on his becoming George VII. Let’s face it, British kings called Charles have not had a good run – the first one parted company with his head, the second one may have been the victim of mercury poisoning (a lifelong interest in alchemy led to his stirring large vats of the stuff). On the other hand, perhaps the endless stream of mistresses simply wore him out. And the two Stuart Pretenders called Charles didn’t have much luck in 1715 and 1745. My reason for thinking George was after Liz’s beloved father, the famous stammerer helped by a bit of good ol’ Aussie know-how, and whose early death was at least partially responsible for that long reign, not quite pipping Louis l’État, cêst moi XIV. Perhaps she should have danced more…

I can remember (just) Liz’s coronation (I was in primary school). We all got a medal and a commemorative metal pencil case with two bars of Fry’s Five Boys chocolate (which I scoffed at the first opportunity – this might have been the start of the chocoholism that still afflicts me). The coronation procession was much grander – just look at the number of colonial troops here. Last time, they had a whole battalion of Mounties, this time only five. One wonders what Will’s bash will be like – at least, barring miracles, we won’t have to wait 70 years to find out.

To Zoom or not to Zoom: that is the question:
Whether ’tis nobler in the mind to suffer
The slings and arrows of outrageous technical hitches,
Or to take arms against a sea of troubles on the other side of the table,
And by opposing end them?

Sorry, other Will, but you’re out of copyright… The recent Enlarged Board of Appeal decision G1/21 held that in-person oral proceedings are the “gold standard”, and are to be preferred over video conferencing (ViCo) proceedings, because of the uncertainties of ViCo. This arose out of a challenge to the use of ViCo, which argued that they were contrary to the Rules of Procedure of the Boards of Appeal. The EBA responded that, in the case of general emergencies, such as Covid, ViCo was perfectly legal. Unfortunately, the Board neglected to answer the question that everyone really wanted answered – what about all those non-emergency times? Especially since the EPO had already embarked on a digital strategy, which envisaged the widespread use of ViCo, including its mandatory use in certain formalities procedures. Indeed, the first decision involving the question, T0758/20, said:

Decision G 1/21 cannot be read as restricting the possibility of summoning for oral proceedings by videoconference contrary to the will of one of the parties only in the case of a general emergency. G 1/21 does not exclude that there are other circumstances specific to a case that justify the decision not to hold the oral proceedings in person.

This was backed up by T1158/20, which said that:

Holding oral proceedings by videoconference can meanwhile be often considered an equivalent alternative to oral proceedings in person because the boards and the parties have gained such extensive experience with videoconferencing and using the tools involved since G1/21. Holding oral proceedings by videoconference is hence no longer that disadvantageous as it was when the decision G1/21 was issued.

In other words, the inference is that the basis for G1/21 no longer exists and it can be ignored. However, to rain on the parade, along comes T2432/19,

  1. Although the order of G 1/21 refers to an emergency situation, it follows from the ratio decidendi of this decision that in-person oral proceedings can only be denied under very limited conditions, even in a situation of general emergency such as a pandemic.
  2. Due to the fact that videoconferences, at least with current technology, can only provide a suboptimal form of communication, parties have a right to the optimum format for oral proceedings, i.e. in-person oral proceedings, that can only be denied under very limited conditions.
  3. Further, e contrario it also follows from the reasons underlying the Enlarged Board’s decision, that parties cannot force Boards to conduct videoconferences instead of in-person oral proceedings.

Further down, it adds:

In particular, the Board cannot recognise any improvements that can be said to provide the level of communication which is possible when all participants are physically present in the same room.

Unlike found in T 758/20 (cf. point 1.4.7(b) of the Reasons) and further elucidated in T 618/21 (cf. point 4.1.3 to 4.1.5 of the Reasons), this Board finds that the situation for the time being has not changed since the issue of G 1/21.

So, the old problem of two streams of Board decisions disappearing off in two different directions. where does that leave us, apart from up the creek without a paddle? Are we going to need another Enlarged Board decision to clear up this matter? Personally, I’ve been involved in several EPO Opposition and Appeal hearings by ViCo, and they have worked perfectly well. I start to wonder whether the T2432/19 Board has shares in the hotels in Munich.

Covid is now officially over in Swizzieland, so I have had to decide how to conduct business in future. Pre-Covid, I went to Givaudan in Zug twice a week. I had a first-class Generalabonnement (GA), which allowed me to use any public transport anywhere in Switzerland. This wasn’t cheap – CHF4840 for a senior GA – but cheaper than buying tickets every day, and, in any case, my little company kindly bought it for me. However, Covid was a revelation. It had me working from my little Teemacs office down the valley from where we live, half an hour by bike, as opposed to 2 hours by train. And I could do everything for Givaudan from this office. So, I decided that I would no longer regularly do the long haul to Zug – I cancelled the GA and ordered a Halbtaxabonnement (cost CHF165, buy any train ticket at half-price,) and a TNW (Tarifverband Nordwestschweiz) annual ticket, giving unlimited travel on all public transport in the north-west corner of the country (CHF800). Givaudan now wants everyone back in the office, with limited working-from-home time, but “everyone” = employees, which isn’t me.

The countdown to the UPC continues. Givaudan has already decided which patents to opt out of the system. Initially, the traffic in opt-outs was surprisingly low, but now, with 3 weeks to go, they’re coming in like an artillery barrage at zero hour, now over 100,000, so much so that the case management system, whose initial problems led to the delaying of the opening of the UPC, is groaning under the strain. Givaudan has one attorney registered for the UPC (done by having an electronic identifier, either smart card or USB stick), but I can’t see our ever making much use of the system, given that Givaudan usually validates in only 6 EPC Contracting States (and two of those, Switzerland and the UK, are not EU countries).

One interesting recent aspect is that the UPC will have a provision for protective letters. These are counter-claims for invalidation of a patent, but filed in a court in advance, if the filer thinks that they may be hit with an infringement lawsuit, with preliminary injunction, seizure of assets, etc. They exist in some countries in the EU (e.g., Germany, Netherlands), and also in Switzerland, but are not universal. Given the possibility of a sudden central invalidation action against a valuable patent that, for some reason, hasn’t been opted-out of the clutches of the UPC, I can imagine that this possibility could be of interest.

So, will June bust out all over, or be a bust? Watch This Space…

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