T 1841/23 - Intervention and UPC litigation

Key points

• Intervention - who expected it to become a hot topic (see G2/24).
• "the board summoned the proprietor and opponent 1 to oral proceedings to be held before the board on 11 December 2024." 
• "A notice of intervention was filed on 18 November 2024, "
  
• The intervention was based on UPC litigation on the patent.
• "In support of its requests for postponement of the oral proceedings before the board or of the board's decision on the appeal, the proprietor submitted, at the outset of those oral proceedings, essentially the following arguments."
• "the matter of postponement of the arranged oral proceedings is at the board's discretion."
• "In the present case, unlike the one underlying T 1961/09, the notice of intervention did, in the now relevant parts, not raise any further objections or new issues, but only argued on old topics. At oral proceedings before the board, opponent 2 was also free to put forward and develop such arguments, which it also did to some extent, as had the proprietor. Further, to ensure fairness between the parties, the present board had taken pains, in the run-up to the oral proceedings before it, to concentrate the debate on a few old, limited and highly relevant issues"
• " As a result, the proprietor's requests for postponement were to be refused and the oral proceedings continued, with the objection of added subject-matter as the next issue to be discussed."
• " In view of the above, the main request is not allowable under Article 123(2) EPC."
• "While an admissible intervention is to be treated as an opposition (Article 105(2) EPC), its filing shortly prior to the oral proceedings before a board does not generally excuse the proprietor (or the other parties), and in particular it does not hand them a voucher for more time. Its concrete implications for opposition appeal proceedings are rather to be determined on a case-by-case basis, under the provisions of the EPC and the RPBA. "
• "Nor are opposition appeal proceedings designed to serve as a placeholder for tactical considerations in parallel proceedings for infringement. They are rather an existential challenge to the title, on the basis of which enforcement is pursued in the infringement proceedings, and parameters such as legal certainty and procedural economy are also involved. Any difficulties for the proprietor in drafting auxiliary requests that also provide the best scope of protection, considering the ongoing infringement proceedings, are not a reason to delay the opposition appeal proceedings."
• Not sure what the Board means with 'placeholder' here, but clearly opposition appeal proceedings are not to be treated as subordinate to any parallel UPC proceedings.
• 
  

EPO 

The link to the decision can be found after the jump.

T 0123/23 - Food for thought - deleting alternatives

Key points

• I'm not sure what to think of this decision.
• The OD revoked the patent, for insufficient disclosure (Art. 83) of one feature.
• " Oral proceedings before the board were held on 17 December 2024. The final requests of the parties were: - The proprietor (appellant) requested that the patent be maintained on the basis of one of eighteen claim requests: main request (labelled as "auxiliary request 5"), auxiliary request 1 (labelled as "amended auxiliary request 5"), auxiliary requests 11, 23, 29, 34, 40, 45, 51, 56, 62, 67, 73, 78, 84, 89, 95 and 96. The decision under appeal is based on all those claim requests except for auxiliary request 1, which was filed during the oral proceedings before the board."
• Claim 1 as granted specifies two alternatives for one feature 1-E.l This feature is unrelated to the feature causing the Art. 83 issues before the OD. The Board finds one of the two alternatives to lack basis in the application as filed. In AR-1, filed during the oral proceedings, that alternative is deleted.
• The preliminary opinion of the Board was that there was no Art. 83 issue, i.e. that all claim requests complied with Art. 83.
• "the board does not dispute the fact that the deletion of the phrase "or other printed indicia" in claim 1 of the main request amounts to the removal of an alternative from this claim which prima facie overcomes the added-matter objection discussed with the board for the first time during the oral proceedings before it. However, this fact alone likewise does not amount to "exceptional circumstances" which necessarily justify admitting the claim request into the appeal proceedings. Instead, the whole situation of the appeal must be taken into account."
• The proprietor: "The added-matter objection to feature 1-E had not been discussed in the board's preliminary opinion. The board might have noted there (see point 7.2 of the board's communication under Article 15(1) RPBA) that further objections in relation to added subject-matter had been raised during the opposition proceedings. However, since the opposition division had not decided on any of these issues, the board's initial intention had been to remit the case on the basis of the claims of e.g. one of auxiliary requests 5, 11, 23 and 29 without conducting any further examination "
• The Board: "In any case, a patent proprietor should prepare the relevant "fallback positions" for that eventuality as early as possible, in line with the general obligation that its complete appeal case is provided as early as possible (see Article 12(3), first sentence, RPBA; see also e.g. T 614/21, Reasons 3.2). This is particularly true in the present case, as the opponents had raised the relevant objection at an early stage of the appeal proceedings, which the proprietor then attempted to overcome only at the latest possible stage, i.e. during the oral proceedings before the board. Moreover, it cannot be the purpose of a hearing held in appeal proceedings to allow an applicant or proprietor, after having discussed, in writing or orally, multiple (higher-ranking) claim requests, to present yet another amended set of claims in a trial-and-error fashion for finally defining its actual "invention" (see e.g. T 1924/20, Reasons 5.1; T 3258/19, Reasons 1.1.4(b))."
• "If the board were to admit the new claim request, it could settle the appeal immediately by remitting the case to the opposition division for further examination of novelty and inventive step - as initially intended - or it could continue with the examination of those issues in appeal, most likely in writing then due to the parties' need to present or amend their respective cases before the board. Both options would however be contrary to overall procedural economy."
• I'm not entirely sure what the Board here means with 'procedural economy' because it did not intend to consider novelty and inventive step at any rate, i.e. also if the Board would have agreed with the proprietor that the feature had basis in the application as filed. 
• "The proprietor could have filed this claim request already during the opposition proceedings, as it constitutes undeniably the safest defence against any possible objection to the presence of "indicia" in the former claims. A remittal would therefore give the proprietor a second opportunity to argue its case before the opposition division, including the possibility of filing even more claim requests if necessary."
• The request is not admitted. The patent is revoked.

• EPO 

The link to the decision can be found after the jump.