EPO allows a new form of evidence

On December 15, 2020, the European Patent Office issued a decision on a new admissible form of evidence in patent proceedings, which entered into force on January 1, 2021. In a world dominated by a pandemic, where traveling is difficult, and ecological issues arise (e.g. the carbon footprint of every traveler), the EPO decision is considered to be very reasonable and welcomed.

According to previous Rule 117 of Implementing Regulations of EPC, when the European Patent Office considers necessary to hear a party, witness, or expert, or to carry out an inspection, it shall take a decision, setting out the investigation to be carried out, relevant facts to be proved and to set out the date, time and place of the investigation. If the hearing of a witness or expert is requested by a party, the decision shall specify the period within which the requester must make known the name and address of any witness or expert concerned. In the light of previous Rule 118, at least two months notice of a summons issued to a party, witness, or expert to testify shall be given unless they agree to a shorter period.

Rule 117 changed in December 2020 indicates that the EPO’s decision mentioned above is additionally extended with information on whether it will be conducted by videoconference. The Rule 118 point 2 in the amended version of items a) and c) shall read as follows:

 “At least two months notice of a summons issued to a party, witness, or expert to testify shall be given unless they agree to a shorter period. The summon shall contain:

(a) an extract from the decision under the Rule 117, indicating the date, time, and place of the investigation ordered, specifying whether it will be conducted by videoconference, and stating the facts in respect of which parties, witnesses or experts are to be heard;(…)

(c) an indication that a party, witness, or expert who has been summoned to appear before the European Patent Office on its premises may, at his request, be heard by videoconference.”

The above change should be treated as another positive impact of the pandemic situation on proceedings in the IP world. Hearings in this form should speed up the procedure, and what is important, reduce the costs incurred by the parties.

Author: Piotr Godlewski