T 0304/17 - Intervention and national court proceedings

Key points

• This case is about the admissibility of a Notice of intervention, and in particular, if it was filed within the time limit of three months, more in particular, the question was what the starting point was for that period. 
• "Pursuant to Rule 89(1) EPC, notice of intervention is to be filed within three months of the date on which proceedings referred to in Article 105 EPC are instituted, i.e. either when proceedings for infringement of the same patent have been instituted against the assumed infringer (Article 105(1)(a) EPC), or when, following a request of the patent proprietor to cease alleged infringement, the assumed infringer has instituted proceedings for a ruling that he is not infringing the patent (Article 105(1)(b) EPC)."
• The intervener had filed the Notice of intervention within 3 months from the date of filing of the counterclaim of infringement by the Patentee in the UK. However, a counterclaim is generally filed in running court proceedings, in this case in running court proceedings initiated by the intervener, namely proceedings for a declaration of non-infringement .
• The Patentee argues that the intervener had already earlier standing to intervene, namely under Article 105(1)(b).
• "This point is of relevance because it is established case law that the two alternative means for intervention under Article 105(1) EPC are mutually exclusive in the sense that once an opportunity has existed for the third party to intervene under one alternative, subsequent fulfilment of the requirements under the second alternative does not provide any further opportunity to intervene"
• It appears that in this case, patentee had requested the intervener to cease infringement only after the proceedings for a declaration for non-infringement had been instituted, i.e. in the reverse order of what is envisaged in Article 105(1)(b).
• The Board concludes that because of this reverse chronological order (request after, not before, the commencement of proceedings for a declaration of non-infringement", Article 105(1)(b) was not met, such that the intervener had still a right to intervene when the patentee started the action for non-infringement.

EPO T 0304/17 - link


VI. On 4 April 2018, notice of intervention under Article 105 EPC was received from Eli Lilly and Company (intervener I) and the opposition fee was paid. A copy of Genentech's counterclaim of infringement in proceedings before the Patents Court, High Court of England and Wales, case reference HP-2017-000041, was filed in support of the intervention. The counterclaim is dated 5 January 2018 and document D97 in these proceedings.

XI. By letter dated 21 November 2019, notice of intervention under Article 105 EPC was filed, together with supporting evidence, by Eli Lilly Nederland B.V. (intervener II). The opposition fee was paid on the same date.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

Interventions (Article 105 EPC)

Intervention of Eli Lilly and Company

2. Notice of intervention was filed on behalf of Eli Lilly and Company on 4 April 2018 in a written reasoned statement in accordance with Rule 89(2) EPC and Rule 76 EPC. The opposition fee was paid on the same date.

3. Pursuant to Rule 89(1) EPC, notice of intervention is to be filed within three months of the date on which proceedings referred to in Article 105 EPC are instituted, i.e. either when proceedings for infringement of the same patent have been instituted against the assumed infringer (Article 105(1)(a) EPC), or when, following a request of the patent proprietor to cease alleged infringement, the assumed infringer has instituted proceedings for a ruling that he is not infringing the patent (Article 105(1)(b) EPC).

4. There was no dispute that the appellant's counterclaim for infringement was made on 5 January 2018 (see also document D97) and that the three-month time limit under Rule 89(1) EPC was met when calculated on this basis (see also Rule 131(1) and (4) EPC).

5. However, the appellant argued that Eli Lilly and Company had had standing to intervene at an earlier point in time, such that the three-month time limit had already expired by 4 April 2018. This point is of relevance because it is established case law that the two alternative means for intervention under Article 105(1) EPC are mutually exclusive in the sense that once an opportunity has existed for the third party to intervene under one alternative, subsequent fulfilment of the requirements under the second alternative does not provide any further opportunity to intervene (see also decision T 296/93, OJ EPO 1995, 627, point 2.6 of the Reasons, and decision T 18/98, point 2.2 of the Reasons).

6. The appellant's objection was based on the argument that Article 105(1)(b) EPC did not specify a particular chronology of events and that, accordingly, the three-month time limit was triggered once the two conditions - the patent proprietor's request to cease infringement and the institution of proceedings by the assumed infringer for a ruling of non-infringement - were fulfilled.

7. However, the board does not agree with this understanding of Article 105(1)(b) EPC. The principles set out in Articles 31 and 32 of the Vienna Convention on the Law of Treaties (VC) are taken into account when interpreting EPC provisions (see also decision G 5/83, OJ EPO 1985, 64, points 1 to 6 of the Reasons). Pursuant to Article 31(1) VC, a treaty is to be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose.

8. It follows from the clear wording of Article 105(1)(b) EPC that the provision is based on a specific sequence of events ("following a request of the proprietor of the patent ..., the third party has instituted proceedings ..."; emphasis added by the board).

9. The Travaux Préparatoires confirm that this sequence of events had intentionally been chosen by the legislator (see document D117; for the legislative history of Article 105 EPC 1973 see http://webserv.epo.org/projects/babylon/tpepc73.nsf/0/A58D54B45320BD46C125742700477DCC/$File/Art105eTPEPC1973.pdf; in this context, see in particular BR/144/71, point 78; M/PR/I, points 417 to 419; M/19, point 14; and M/21, point 8; for the role of the Travaux Préparatoires in the context of interpreting EPC provisions, see Article 32 VC).

10. The result of a literal interpretation is also in line with a systematic interpretation, because in both alternative scenarios -  Article 105(1)(a) and (b) EPC -  it is the formal institution of proceedings (at a court or another competent national authority) which triggers the time limit. These are events which can be unambiguously established with legal certainty, since they are official dates (see also decision T 296/93 above, point 2.5 of the Reasons) and thus set "a clear demarcation line" (see also decision T 18/98, point 2.2 of the Reasons). It is important that the start of the time limit can be established with legal certainty, because this triggers a time limit, the purpose of which is to enable a third party to acquire the status of an opponent after expiry of the opposition period. Accordingly, the date should be unambiguously identifiable for the parties involved and for the EPO.

11. The decisions relied upon by the appellant in this context do not support its case since none of the underlying situations was comparable to the present one; rather, they were concerned with different issues. Decision T 392/97 addressed the question of whether certain letters qualified as a request to cease infringement within the meaning of Article 105(1)(b) EPC, and decision T 1713/11 addressed the question of whether the institution of a specific criminal action under Austrian law constituted the institution of proceedings under Article 105(1)(a) EPC.

12. In the absence of an earlier standing to intervene, in the present case the event triggering the three-month time limit under Rule 89(1) EPC was the filing of the appellant's counterclaim for infringement of the patent in suit. Given the uncontested date of 5 January 2018 for the counterclaim, the intervention of 4 April 2018 occurred in due time and the requirements under Article 105(1)(a) EPC were thus met.

13. In its second line of argument, the appellant had argued that its counterclaim for infringement of the patent in suit did not qualify as an event triggering the three-month time limit.

14. In contrast to the appellant's opinion, however, the board does not consider it relevant that the counterclaim for infringement did not initiate new proceedings and was to be dealt with in existing proceedings. Whether or not separate proceedings take place is a consequence of the relevant national law. It was not contested that the appellant was not obliged to launch a counterclaim for infringement and whether a counterclaim was made had therefore been up to the appellant. Nor was it in dispute that in the UK a counterclaim is treated in the same way as a free-standing claim and that, if proceedings for a declaration of non-infringement are discontinued, the counterclaim for infringement can continue.

15. Irrespective of the fact that the underlying situation of decision T 1713/11 is not comparable to the present one (see point 11), the board sees no conflict with the section referred to by the appellant. In point 2.3 of the Reasons of decision T 1713/11, the board in that case described the two alternative scenarios pursuant to Article 105(1) EPC and noted that, under Article 105(1)(a) EPC, the patent proprietor had to take the first step. The "step" referred to was the institution of proceedings for infringement which, as further noted in that decision, did not require court proceedings but it did "require the patentee to take the first step".

16. It is of no relevance that, at the moment of the appellant's (counter)claim for infringement, proceedings for a declaration of non-infringement were already pending, because those could not have triggered the time limit for filing notice of intervention in the absence of a preceding request by the appellant to cease alleged infringement (see also decision T 228/03, point 2.3 of the Reasons).

17. Lastly, decision T 188/97, referred to by the appellant, relates to a situation in which seizure proceedings containing an injunctive order were brought by the patent proprietor, followed by court proceedings brought by the patent proprietor for infringement. This is not comparable to the present situation, where proceedings for a declaration of non-infringement brought by the assumed infringer were followed by a counterclaim for infringement brought by the patent proprietor.

Intervention of Eli Lilly Nederland B.V.

18. The intervention of Eli Lilly Nederland B.V. complies with the requirements pursuant to Article 105(1)(a) EPC and Rule 89 EPC. This was also not contested by the appellant. Notice of intervention was filed on 21 November 2019 in a written reasoned statement in accordance with Rule 89(2) EPC and Rule 76 EPC. The opposition fee was also duly paid. The three-month time limit pursuant to Rule 89(1) EPC was met in view of the infringement proceedings which were instituted by the appellant against Eli Lilly Nederland B.V. on 11 September 2019 before the Regional Court of Düsseldorf.

19. The interventions by intervener I and intervener II were therefore admissible. Thus, the interveners had the status of opponents, in accordance with Article 105(2) EPC, and were designated opponent 06 (intervener Eli Lilly and Company) and opponent 07 (intervener Eli Lilly Nederland B.V.), or respondent VI and VII, respectively.