T 1889/19 - Intervention by related company

Key points

• A notice of opposition was filed by "XSYS Germany GmbH". A notice of intervention was filed by "XSYS Prepress NV". This is no issue and is not discussed in the present decision.
• As a comment, some USA patent attorneys may find this formalistic approach strange. 
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• The Board concludes that claim 1 as granted is not new over document E3 and not new over E4
• A new request AR-2 is admitted: "the board accepts that the second auxiliary request was filed (as former eleventh auxiliary request) as a direct response to the notice of intervention and as a reaction to the issues discussed therein."
• The Board remits the case.
• "According to the headnote of G 1/94, intervention of the assumed infringer under Article 105 EPC may be based on any ground for opposition under Article 100 EPC. Point 13 of the reasons further states: "[...] the purpose of intervention is to allow the assumed infringer to defend himself against the Patentee's action. Therefore, to prevent him from making use of all available means of attacking the patent, which he is accused of infringing, including the raising of new grounds for opposition under Article 100 EPC not relied upon by the proper Opponent, would run contrary to this purpose of intervention. [...] if a fresh ground for opposition is raised by the intervener, the case should be remitted to the first instance for further prosecution, unless special reasons present themselves for doing otherwise, for example when the Patentee himself does not wish the case to be remitted".
• "In the present case, the notice of intervention included the fresh grounds for opposition under Article 100(b) and (c) EPC and new lines of attack under the ground for opposition under Article 100(a) EPC in conjunction with Articles 52(1), 54(1), (2) and (3), 56 EPC in view of newly filed documents E14 to E22f, see section IV. above. None of these issues had been subject of the first instance proceedings, let alone the impugned decision.'

• "The opponent and the intervener requested that the second auxiliary request be examined regarding novelty and/or inventive step over document E3 before the case was remitted to the opposition division.

  The board takes the view that it would not be appropriate for the board to limit its examination of the second auxiliary request to the assessment of novelty and/or inventive step only with respect to the document E3 and leaving aside the other novelty and/or inventive step objections based on other documents."

Following G 1/94, the case is therefore to be remitted to the first instance for further prosecution.

The link to the decision is provided after the jump.

https://www.epo.org/law-practice/case-law-appeals/recent/t191889eu1.html