2022 Global Innovation Index: Innovation impact vs productivity

The World Intellectual Property Office (WIPO) Global Innovation Index (GII) is a helpful indicator of geographical areas that are active when it comes to innovation. It also provides an up-to-date view of the important global innovation topics and trends.

Now in its 15th year, the comprehensive analysis of innovation input and output activity helps to determine the innovation position of global economies and areas in comparison with each other.

These rankings can help to provide a barometer of innovation around the world as well as help summarise the impact that innovation is having on global growth.

The 2022 GII reports that innovation investment remains high though this investment is not necessarily creating the expected impact. Slow adoption of technology and a stilted ability to translate innovations into productive implementation is seen as a key challenge to address.

In terms of the country rankings, Switzerland remains the highest-ranking country for level of innovation investment and success, and Europe features the largest number of top-ranking countries, reconfirming its place as a world-leading innovation area.

Emerging economies are also making their presence known and performing well, especially when compared to the relative size of their economies. Newcomers to the rankings include Indonesia, Uzbekistan and Pakistan. This indicates the future potential of a truly global innovation landscape.

The 2022 GII highlights two ‘innovation waves’ that WIPO believes to be influential in driving growth in the future:

A digital age innovation – supercomputing, AI and automation

A Deep Science innovation – biotechnology, nanotechnology and new materials.

These developments are likely to have a particular impact in areas such as Health, Food, Environment and Mobility.

The potential of these innovation waves though is likely to take some time to materialise, the report warns. In order for innovations to improve society and improve equality, obstacles such as technology adoption and diffusion need to be overcome first.

“Productivity is at the core of what we want our societies and economies to be tomorrow, in particular if we want to combine higher levels of equality while using natural resources more sensibly. A true revolution is driving innovation today, guided by Digital Age and Deep Science waves. We have a collective responsibility to draw the lessons of recent crises to put this revolution on the right track, and gear it to the future we want.”

GII Co-Editor and Portulans Institute Co-Founder Bruno Lanvin

You can read the full 2022 Global Innovation Index here.

What is IP Insurance and why might you need it? 

Intellectual property (IP) is an asset your business owns. Like any asset, there are situations where insurance to defray potentially costly claims can be a sensible precaution to take.

IP legal expenses insurance (LEI) isn’t appropriate for all businesses, but it is worth being aware of the situations where it might be a sensible investment. This blog shares our summary of IP LEI, the situations where it might be useful and the benefits of having it in place.

 

What is IP legal expenses insurance?

As with any other type of business insurance, IP legal expenses insurance (LEI) helps to mitigate significant costs – in the case of IP LEI, the costs of enforcing your IP rights and/or the costs of defending your business against an IP infringement action. If someone else infringes your IP rights, IP LEI can cover the costs of suing them for infringement, and if you are on the receiving end of IP litigation alleging infringement of someone else’s IP rights, IP LEI can cover the costs of defending the litigation.

Whatever the situation, IP litigation can be very costly and time-consuming to deal with so having insurance in place means you have a policy that will provide the finances for you to resolve it.

 

What types of IP insurance are available?

There is generally a scale of options and which option is right for you will depend on the level of risk and the price you are willing to pay for a policy.

Some common policy types are:

  • Opinion only: This enables you to obtain a professional opinion on your chances of success if you were to enforce or defend an IP infringement action
  • Enforcement or defence: This covers the costs of taking IP litigation action to enforce your rights as the IP owner or to defend against an allegation of IP infringement from others.
  • Damages: If you did lose an IP infringement action then this would cover you for any damages awarded.
  • Validity: This covers the legal costs of defending challenges to the validity of your IP rights; this is most generally applicable to patents.
  • Other options can also be added such as lost revenue or, increasingly important, cyber losses related to IP

However, for IP LEI it must usually be taken out “before the event” (BTE), i.e. before an (alleged) infringement has occurred. BTE LEI will only cover risk before an infringement claim is made or before the possibility of an infringement action ought to be known about. A decision to take out IP BTE insurance should therefore be considered as early as possible – this will also help to keep the insurance premium down.

UK cover will be the cheapest to obtain, followed by cover for Europe, Worldwide cover excluding the USA, and Worldwide cover including the USA; US IP litigation is the most expensive to action or defend, hence higher premiums will need to be paid. The premiums you pay will reflect the geographical cover you need. Taking out domestic cover early and expanding the cover as your markets grow is likely to be the most cost effective option.

Why might you consider getting IP Insurance?

The justification for IP insurance will depend on your specific situation and the value that Intellectual Property holds for your business. Of course, the level of risk of there being an issue will also play a role in determining if it is a wise investment.

If you operate in a highly technical or specialised area you may feel that you would benefit from the protection IP LEI provides. Similarly, if your market is highly competitive and IP plays a significant role in terms of competitive advantage, again it might be a good idea to have this enhanced protection.

As well as providing actual protection and financial support if the worst was to happen, it can also act as a deterrent. Weak claims that may not result in any legal action but could take time and effort to defend are more likely to go away if you have the insurance behind you to take robust advice and action from the outset. Similarly, alleged infringers are more likely to mediate or negotiate with you if they know you have the financial backing to see a case through and fully defend it.

 

What are the costs of IP insurance?

The insurer will calculate a premium based on a range of risk factors, including in which court you would intend to enforce any IP rights in the UK. The IP Enterprise Court (IPEC) costs less to take and defend IP litigation actions than going to the high court, and LEI just covering IPEC enforcement can have a premium that is lower as a result.

If the cover does require to be higher or cover a broad geographical area, then premiums are likely to be higher, but as with all insurance, it is worth being realistic on the level of cover you will require dependant on the circumstances.

 

Is litigation my only option for resolving an IP dispute?

Although LEI provides a comprehensive safeguard, there are other, cheaper options that you can also consider as a way to resolve an IP dispute.

Obtaining an option from the UK IP Office is one way. Although not a legal decision is it an informed and professional opinion from a senior examiner which can help steer the case one way or another, and help you decide whether it is better to negotiate a settlement or proceed with IP litigation.

Mediation is another route and one which the courts would have expected to have been attempted prior to starting legal proceedings. This often results in reasonable outcomes for all parties though will likely involve a compromise from both sides.

 

How do I find out if IP insurance is appropriate for me?

The Chartered Institute of Patent Attorneys (CIPA) and The Chartered Institute of Trade Mark Attorneys (CITMA) also provide a list of companies that offer IP insurance products.

Further information about IP legal expenses insurance can be found at the UK Intellectual Property Office: Intellectual property insurance – GOV.UK (www.gov.uk)

If you have invested in protecting your IP, then you will likely already have a patent or trade mark attorney who you work with, so they would be your first point of contact. Our expert patent and trade mark attorneys are also happy to help, you can get in touch at hello@two-ip.com

What lawn bowls can teach business on the CoffeeCast podcast. 

Lawn bowls and business might not seem like a natural pairing, but this combination was the topic of discussion on this episode of the CoffeeCast podcast.

Co-founder of Two IP, (and Bowls England Senior Independent Director) Anna Molony and Doug McPherson from Size 10 1/2 Boots discuss the importance of team communication in bowls and what business can learn from the sport.

Listen on Apple Podcasts

Listen on Spotify

Then watch England’s international bowlers in action and see how an elite team communicates to win a gold medal: 

Watch on iPlayer here (zip forward to 3 hours 30 into the program to find the start of Men’s Triples Gold medal match, England v Australia)

And if all this inspires you to try out lawn bowls yourself (or as a team building session) why not book a Bowls Bash session? It is an exciting, short form of lawn bowls for new players, that is really easy and fun for all ages and abilities. Find out more about Bowls Bash at Bowls Bash – Bowls England

Find a club and book a Bowls Bash session at www.play-bowls.com

A report on the CIPA webinar – Attracting and retaining staff in a post-pandemic era.  

CIPA recently held a webinar panel discussion about the challenges of attracting and retaining staff in a post pandemic era. This article summarises the points that were discussed and what it might mean for employers and employees looking for different options.

As approaches to our working lives have changed and continue to change, it is timely for the profession to explore current viewpoints, experiences, and opinions about what people are looking for in their working life and what that means for firms looking to attract and keep good people.

The panel on this webinar consisted of a range of experts from different perspectives able to share the feedback and conversations they have had with IP professionals over the past 18 months.

Demand for talent is high

Richard Lucas from Streamline IP who chaired the session provided both statistical and anecdotal evidence that patent and trade mark firms have continued to grow, and that the IP market is buoyant. This means that IP professionals have a lot of choice when it comes to who they work for. This has been exaggerated by firms resisting recruitment, or in some cases making cuts, during the pandemic. Now that the situation is more settled, and firms are recruiting again, this has created an increased demand for talent.

The outcome is that people who may have been stressed and overworked whilst firms were holding back recruitment are now seeing new and potentially more attractive options elsewhere. For firms such as Two IP, this provides an opportunity to offer the work life balance so many high performers in the profession crave.

Connection is key for both retention and development of future talent

Clare Tanner from Gill Jennings & Every was able to share her HR perspective and how recruitment and talent development has changed. She has found that things that were previously taken for granted now need much more attention and thought. Creating opportunities for informal connection and continuous learning being good examples. Specific initiatives have been developed to help people stay connected as working patterns have changed but it is a constant loop of learning and asking for feedback.

Nash Inam who works in-house at Ocado felt that there may be a risk that these informal connection points and learning opportunities will affect trainees more. If senior colleagues choose to spend more time working from home, the more junior team members may miss out on informal learning opportunities. Employers therefore need to plan how they work thoughtfully, which is difficult when everyone has different requirements and desires from their working life.

For experienced attorneys this may offer a frustrating conflict. They would prefer to continue to work from home but the needs of the wider firm, for example to support trainees or building internal relationships, means they are required in the office. Fully remote teams such as Two IP have stripped that away allowing senior level attorneys to build a working pattern that works for them whilst still providing the social connection through the firm’s wider ecosystem.

The candidate driven market is real.

Catherine French from Sacco Mann recruitment confirmed that the market for talent has shifted significantly over the pandemic and has still not settled into a firm position. The wide introduction of hybrid working has brought more movement and change with people reconsidering what is important to them. This movement and revaluation isn’t restricted to particular groups either. Although it is widely understood changes in working patterns generally impacted women more, Catherine has found that new ways of working and making positive changes more permanent is being considered across all demographics.

This approach has also opened up the desire for working from anywhere. The possibilities of attorneys wanting to work from other countries was discussed and Chris Braganza from Sheridans pointed out examples of where this could create complexity and risk for some firms and that this would need to be carefully considered before being offered. For firms like Two IP however, this possibility is baked into the model as we recognise the attraction of that level of flexibility.

Employees want a reason to come into the office.

Clare’s advice for firms moving to a more hybrid model is to ensure that people have a reason to come into the office. Make it an environment that people want to be part of and create specific interventions such as training and social occasions so that people feel part of a wider culture.

People have now experienced both the personal and productivity benefits of working from home, so the office needs to offer something over and above a working space.

Nash has found that in his role, he uses the time in the office to speak to engineers and spend time with them understanding their developments, so he is fully informed on how to support them. For people in private practice, aspects such as training, socials and relationship building are all important reasons to get people together. For some this is an important part of their working life, and they appreciate the opportunity to be involved with the company on a wider level.

For others though, they prefer a working arrangement that allows them to simply focus on their client work and spend the rest of their week pursuing hobbies or spending time with the family.

As with a lot of the discussion on this panel, it will vary between individuals and so people are now able to choose the arrangement and therefore the employer that best fits with their preferences.

Where does Two IP fit in?

Overall, this discussion highlighted the challenges that face firms in providing working models and arrangements that will suit a wide variety of desires and expectations. The new consultancy model that Two IP operates provides an alternative option for attorneys looking to work fully remotely (wherever that might be), with full flexibility and control in their working life. If this is something that appeals to you, then you can find out more about how our model works here

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Strategic ambitions for the IPO published  

Sustainability, efficiency and creating a world-leading IP office all feature in the priorities for the UK  Intellectual Property Office (UK IPO) in its recently published strategic direction.  

The UK IPO plays a critical role at the centre of the IP ecosystem, and they are central to the UK maintaining its position as a world-leading IP environment. 

In order to deliver on this, it has recently published updated information on its refreshed corporate strategy to 2026 and its strategic priorities for 2022-2023. 

The overall strategic ambition for the IPO is still to ensure that it supports and encourages researchers, inventors, creators, businesses, and organisations to pursue innovation.  

The updated strategy discusses how it will deliver on this ambition with three main aims: 

  1. Deliver excellent IP services 
  1. Create a world-leading IP environment 
  1. Make the IPO a brilliant place to work 

These ambitions are underpinned by the IPO’s principles which are to “support our people, focus on customers and strive for efficiency.” 

Within the detail of the priorities are clear areas of focus for the IPO in the short and medium-term.  

Delivering on the ongoing transformation programme will see the IPO build a more user-friendly and digital service supporting the delivery of its customer service standards 

The IP environment in the UK will continue to be modernised to keep up with society and digital changes whilst increasing the level of awareness and education about IP and its potential for impact. The approach described in the Counter-Infringement Strategy will be further embedded as well as the development of an intelligence centre of excellence.  

The UK’s position both with the EU and internationally will continue to be strengthened via free trade agreements and the promotion of the international IP business support service.   

Within the IPO itself, the focus will be on sustainability namely the development of a carbon net-zero strategy and how, as a workplace, the IPO can support its people to thrive both now and in the future.  

In summary, these updated priorities help to provide a direction of travel for the IPO and how it is supporting the wider industry to continue to invest and benefit from innovation and new technological developments.  

 

The Unitary Patent – introducing the new patent game in town 

It is possible to obtain an EU Trade Mark and an EU Registered Design both of which are a single right which provides protection for owners against infringement anywhere in the EU.   

For over 50 years, the EU has been trying to establish an equivalent EU patent. However, political agreement between all of the EU member states has proved impossible. Rather than give up, the EU member states who want an EU patent have come together and created a compromise, a half-way house if you will, called the Unitary Patent. This new patent is called a Unitary Patent rather than an EU patent as it will only cover a subset of the member states of the EU.  

The UK had been involved in developing the Unitary Patent, but following Brexit the UK is no longer able to join the Unitary Patent system. UK based applicants will however be able to obtain a Unitary Patent. 

 The Unitary Patent will exist alongside a European Patent as something related but entirely different at the same time.  The current European Patent system is a system for examining and granting patent applications at the European Patent Office (EPO). Once granted, a European Patent becomes a bundle of national patents in countries that are contracting states of the European Patent Convention (EPC); these include both EU member states and non-EU countries including UK, Switzerland, Iceland, Turkey and Norway. Currently, if an applicant wants their European Patent to cover all of these countries, they are required to complete formalities (validation) in each country, which at the very least requires paying an annual renewal fee to the local patent office in each country. So, under the current European Patent system, if you want your European Patent to cover all of the EU member states this means validating the patent in 27 countries and then payment of annual renewal fees to 27 separate patent offices. 

With the new Unitary Patent system, an applicant will have the choice at the end of the European Patent application process to either turn it into a Unitary Patent (with a single renewal fee) or to continue as a European Patent, validating and renewing in each country that they want the patent to take effect in. 

The Unitary Patent is expected to start toward the end of 2022 and will initially commence with approximately 17 EU countries that have ratified the Unified Patent Court Agreement. These include France, Germany, Italy and the Netherlands which, along with the UK, to date have been the most popular countries for validating a European Patent in. For those countries outside of the unitary patent system, there will be no change to the current European Patent validation procedures. 

For applicants who currently validate their European Patent in a large number of EU states, the new Unitary Patent system offers significant opportunities for cost savings. For applicants, who only validate their European Patent in two or three EU member states however, it may be less attractive as the renewal costs for a Unitary Patent will be higher. This is because although the Unitary Patent has a single annual renewal fee, it is set to be equivalent to the total of the annual renewal fees for the four most popular validation countries (France, Germany, Italy and the Netherlands). 

The Unitary Patent is accompanied by a new court called the Unified Patent Court which we will discuss in a following post. 

The Top 100 Global Innovators

Clarivate has just published its latest annual “Top 100 Global Innovators” report, identifying the organisations that are excelling at the innovation game. It also gives some insights into the key current and emerging areas of technology.

Innovation Trends

Key trends reported include a doubling of both the number of aerospace and defence firms and the number of automotive firms within the Top 100. In aerospace, Rolls-Royce makes it into the Top 100 Global Innovators, while Ford, Volkswagen and Kia Motors are new automotive entries and Honda and Toyota make it into the Top 100 for the eleventh time.

Top Companies

Notable mentions include US chemicals and materials firm 3M, Swedish telecommunications firm Ericsson and Japanese electronics and computing equipment firm Sony.  

Top Countries

The report gives us a view of innovation across the globe and shows the countries and regions where innovation continues to thrive. Japan has the largest number of firms with the Top 100 from a single country, with thirty-five. The UK has two new entries on the list with industrial systems firm CNH Industrial and, as previously mentioned, aerospace and defence firm Rolls-Royce. The US has 18 firms included on the list. This is down from last year’s report but the evaluation methodology used by Clarivate has changed for 2022, so it will be interesting to see how the numbers play out next year. Energy firm Saudi Aramco has become the first ever entry from the Middle East region signalling an increase in geographical diversity of innovation activity.

Top Technology Areas

The electronics and computing equipment sector leads the way in terms of number of firms, with  twenty-eight firms in this industry sector making into the Top 100. The sector with second highest number of firms in the Top 100 is automotive, with twelve firms listed, closely followed in third place by the chemicals and materials sector with ten firms. So the electronics and computing equipment sector continues to dominate global innovation activity.

Predictions for the Future

Using their data, Clarivate present us with a forecast for the increase or decrease in performance of technological areas for the future. Industrial systems and Telecommunications are predicted to have significant increases in a matter of a few years. In our view, this will be driven by the implementation of Industry 4.0 and the continuing roll out of 5G telecoms networks. We can expect to see remote controlled factories and driverless vehicles which is made possible by the swift speeds of the 5G network. With this new technology being integrated, firms will be able to revolutionize the way they manufacture, enhance and deliver their products.

 

You can read the full Clarivate “Top 100 Global Innovators” report here.

Two IP interviewed by The Patent Lawyer

Our co-founder, Anna Molony, sat down with The Patent Lawyer magazine to talk about the new breed consultancy model that Two IP operates. She explains what Two IP offers patent and trade mark attorneys, and talks about the benefits of this new way of working and how the firm functions.

Anna also discusses Two IP’s belief in thinking differently and how this lead to designing a better way of working that gives patent and trade mark attorneys the ability to have real work/life balance – which for Two IP means more life and less work. She also talks about how Two IP’s different way of working makes for better services for our clients, and explains the core values of the firm.

Are you an experienced patent or trade mark attorney looking for a better way of working? Interested to know more about how Two IP came about and what you could expect if you were to join the firm as a consultant? Read the interview at page 86 of the March/April issue of The Patent Lawyer to find out more : The Patent Lawyer March/April 2022

Why you need a patent strategy

All companies have a business strategy and technology led companies will have an R&D strategy that supports the business strategy. The most successful technology led companies also have a patent strategy. Why is that? And what benefits does it bring to the business?

Why have a patent strategy?

Intellectual Property (IP) can be a valuable business asset both in terms of adding value to your company and supporting your business strategy. A patent strategy defines how a business will use patents and patent applications, and the information that its competitors’ patents contain, to secure the IP in its product developments and its position within the technological sector in which it operates.

Patents offer protection for new developments and can help ensure exclusivity in the market, to aid companies in building market share and margins. Patents can also help defend market share against rivals and infringers. A patent (and even a patent application) in itself can be enough to dissuade a competitor against copying a product development. And if a competitor does copy your patented product development, you can take patent litigation action to enforce your rights, make them stop and seek damages.

Patents can also help establish joint ventures and strategic partnerships. However, there are some important points to consider and manage in relation to IP to ensure a successful joint venture or partnership that supports your business strategy. We’ll look at those in more detail later.

Finally, it is possible use patent to secure financing and develop new sources of revenue. There is no reason why the patents you’ve invested enormous resources in obtaining can’t become a profit centre for your company and your IP can attract venture capital investment to enable further growth. Thinking about how a patent strategy will support financing and growth plans can be extremely useful in delivering your business strategy.

What is in a patent strategy?

A patent strategy starts in the development phase by looking at your business strategy and understanding the technical landscape. Your business goals provide a long-term blueprint to guide the development of a valuable patent portfolio. Reviewing the patenting activity of key industry competitors, partners and customers can also help to get an overview of the patent landscape in your sector.

There are millions of published patent documents, all available through public databases, such as Espacenet.  This can be an extremely valuable source of information, to enhance R&D and product development efforts. It can be beneficial to do patent searching, looking at your competitors’ patents and applications, to see what competitors are doing and where there may be gaps in the market. This is known as patent landscaping. Patent watching is also a useful tool which involves receiving alerts when competitors have applications published in technological areas that you’re interested in. Including patent searching and watching within your patent strategy can provide a great deal of commercially valuable information.

An evaluation of you existing IP should be the next part to consider in your patent strategy. What patents or applications do you currently have? Where did you file them and for what areas of technology? You may also want to assess whether the IP that you already have is still useful and is supporting your business strategy. If it is not, do you still want to maintain this IP?

The core part of a patent strategy defines which countries you will file patent applications in for each area of technology relevant to your business strategy. Different technologies will have different levels of importance within your business strategy, so different extents of patent protection may be appropriate. For example, for a core technology you may want to file a European patent application, followed by an International Patent Cooperation Treaty (PCT) application at 12 months, resulting in national patent applications in a range of countries relevant to your key markets, R&D centres and manufacturing locations, plus those of your key competitors. For a second level technology, you may decide just to protect in countries of importance to you and not cover those of importance to your competitors. And for technology having the lowest level of importance in delivering your business strategy, you may decide just to file a European or UK patent application.

Once you have your patent strategy in place, you can get on with building a patent portfolio that provides the appropriate level of protection to each of your technologies and processes needed to delivery your business strategy. And you can do this consistently and efficiently, without having go through the decision making process of where to file patent applications each time.

A patent strategy should also cover licensing – do you want to licence all or part of your patent portfolio to others in the industry? – and how you intend to assert the rights established by your patents. What would be the triggers for you to start patent litigation? Against which competitors? And in which countries? In this stage you should consider evaluating competitors’ products to see whether they might infringe any of your patents and competitors patent portfolios to assess the potential for competitor counterattacks.  Patent litigation can be an expensive and time-consuming business, so a patent strategy should also consider whether to obtain litigation insurance to cover costs of taking (or defending) patent litigation.

If you are considering a joint venture or partnership, your patent strategy can help define how IP will be handled in a way that supports your business strategy. At the very least, you need to consider background IP and foreground IP. Background IP is your pre-existing IP that you are willing to bring to the venture, and share with your business partners. Foreground IP is the IP that is generated by the joint venture project. It is vital to protect the R&D investment that you are making and agree who will own any IP generated as a result of the collaboration. What background IP are you willing to bring to the project? What foreground IP do you want out of the project?

Finally, it is possible to sell patents and patent applications if they are not relevant to your business strategy. You can also receive royalty payments for patents and applications by licensing other companies to use your technology and IP. Is your business strategy better supported by offloading patents that are not core to your business or holding on to them? How might licensing support your business strategy, and pay for future patent strategy? Both IBM and Ericsson have patent organisations that make money for their respective businesses based on license income, so don’t assume that patents are simply a cost.

R&D involves significant investment in both staff time and resources, so having a strategy in place to protect the IP that your R&D team generates is only sensible. Having the right patent strategy in place will not only protect that investment but can also help to maximise the return for the R&D investment that the business is making.

Two IP has lots of experience of working with R&D led businesses to develop patent strategies, so if you would like us to work with you to develop a patent strategy for your company get in touch with us at hello@two-ip.com

Update on ViCo Oral Proceedings at the EPO

Last year the European Patent Office (EPO), Enlarged Board of Appeal (EBA) issued its decision in G1/21 on the legality of oral proceedings held by video conference (ViCo). The EBA decided that the mandatory use of ViCo was appropriate during a state of general emergency, e.g. the COVID-19 pandemic. So how is the EPO applying G1/21 and what are its implications for the continued use of ViCo oral proceedings in appeal cases post-pandemic?


The G1/21 Decision
In 2021, to deal with the disruption to in-person oral proceedings being caused by COVID-19 related travel restrictions, the EPO introduced a new Rule of Procedure of the Boards of Appeal (RPBA), that permits a Board of Appeal to hold oral proceedings by ViCo whenever “the Board considers it appropriate to do so”. The continued use of mandatory ViCo oral proceedings sparked a referral, G 1/21, to the EBA on the legality of the new rule.


In G1/21 the EBA held that:
“During a general emergency impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference.”


How has the EPO been applying G1/21?
Given the emergence of the Omicron variant and the resulting continued state of general emergency into 2022, applying G1/21 has been relatively straight forward for the EPO Boards of Appeal. This is because G1/21 made a clear distinction between “normal times” and a “state of general emergency” in determining whether mandatory ViCo oral proceedings are appropriate.


For example in T 1259/17, relating to Procter & Gamble’s patent (EP1712610), one of the opponents requested that oral proceedings be held by ViCo due to the travel difficulties caused by the COVID-19 pandemic. The P&G objected to the use of ViCo and requested a delay to the oral proceedings to enable them to be held in-person.


The Board of Appeal (BoA) cited G 1/21 (Reasons 44) and noted that, whilst suboptimal, the use of ViCo was “normally sufficient to comply with the principles of fairness of proceedings and the right to be heard”. However, the BoA also interpreted G 1/21 as meaning that a request for proceedings to be held in-person can only be refused if ViCo is considered to be a suitable format for a particular case and if there are circumstances affecting the parties’ ability to attend (Reasons, point 1.4). In T 1259/17 both sides provided reasons as to why they could not attend the proceedings on the scheduled date (citing restrictions to travel and quarantine obligations). The question then became whether the BoA considered ViCo as a suitable format this this case.


P&G argued that the case was highly complex, involving several opponents, a large number of objections and the cited documents included experimental data. The BoA was not persuaded and held that that the number of documents and opponents did not make the use of ViCo inappropriate, since the ViCo software (Zoom) could easily deal with multiple participants. In face, the BoA suggested that Zoom would improve the oral proceedings experience, since “it is even easier to look at multiple presenters as all of them are shown in frontal view”, and that users “have the possibility of highlighting the speaker by individually choosing the ‘speaker view’ in Zoom”.


Important to the BoA’s decision in this case is the fact that the oral proceedings had already been postponed four times, resulting in a delay of almost two years. The opposition decision dated back to 2017, more than 4 years before the scheduled ViCo oral proceedings. Ultimately, the BoA decided that the use of ViCo oral proceedings was justified in this case (Reason, point 1.9). As a result of the Appeal oral proceedings, the patent was revoked.


Other decisions applying G 1/21 include T 0158/19, T 2817/19, T 1197/18 (IPKat), T 2030/18, T 1499/16, T 1870/16, T 2186/17, T 2474/17, T 0779/18. In each of these decisions the Boards of Appeal refused a request for in-person proceedings (and/or a postponement of proceedings) on the basis of G 1/21. Interestingly however, in T 1807/15, the case from which G1/21 arose, the BoA decided to grant the parties their request for in-person proceedings. In this case, in contrast to the other decisions applying G 1/21, both parties requested in-person proceedings in preference to ViCo.


What next?
As COVID-19 restrictions continue to be relaxed across Europe, how will the EPO Boards of Appeal now apply G1/21? Has the “state of general emergency” passed? It will be interesting to see whether there is another referral to the EBA on this matter. The EPO has a clear digital strategy and has made clear that it wants to make greater use of ViCo oral proceedings, a move which the Chartered Institute of Patent Attorneys, representing the UK patent attorney profession, is very much supportive of.


We believe that ViCo oral proceedings can be of great benefit to applicants – you can read our thoughts here.