G 2/24 - Intervention in appeal

Key points

• The Enlarged Board confirmed that G 3/04 is still good law: after withdrawal of all appeals, appeal proceedings may not be continued with a third party who intervened during the appeal proceedings.
• The Technical Board of Appeal wished to depart from G 3/04 and had referred the question under Art. 21 RPBA. 
• "Although Article 21 RPBA allows for, and even encourages, the further development of the case law, thereby granting the boards of appeal ample discretion for referral, the Enlarged Board does not find the prospect of a board of appeal referring a question of law solely because it disagrees with an earlier G-decision or opinion to be particularly appealing in terms of safeguarding consistent case law. In view of the legislative intent of Article 112 EPC to ensure a uniform application of the law, a board of appeal is expected to substantiate why it considers the earlier ruling on the interpretation of the law to have been superseded by a subsequent change in the law or for potential gaps in its reasoning. Another motivation for referring a question that had previously been answered by the Enlarged Board could be that a board of appeal is confronted with a new factual or procedural situation that distinguishes it substantially from the situation underlying the earlier referral. The Enlarged Board takes note of the referring board's criticism of the legal reasoning behind decision G 3/04 and will consider this in the following points."
• It seems that the President of the EPO, the epi and the German Patentanwaltskammer had also proposed to revise G 3/04. 
• Compared to the two recent decisions of the EBA, the present decision is of the usual length and contains detailed reasoning, applying the conventional types of legal reasoning.
• The EBA observes that there have been no relevant changes to the EPC since the time G 3/04 was given.
• The EBA analyses the 'legal concept of appeals' under the EPC,  citing the case law and the legal literature (handbooks), and in the same way analyses the legal concept of a 'party' to the proceedings (also citing the travaux), and the concept of intervention.
• The EBA also compares the legal situation in several EPC contracting states.
• "It follows from this comparative study that the procedural treatment of an intervener essentially depends on the specific regulation applicable in the respective court system. In the absence of a specific statutory provision stating that an intervention is independent of the main parties' procedural actions, an intervention is considered an accessory to the proceedings and ceases to have effect if the proceedings are terminated by the main parties."
• "As in the laws analysed in the comparative study, awarding an intervener an independent party status would require an explicit legal provision in the EPC. Hence, following and implementing the general, abstract and to some extent rather political observations of the President of the Office, four amicus curiae briefs (epi, Patentanwaltskammer, Mr Exner and Mr Thomas) and, to a certain extent, the referring board, would thus require amending the legal framework, i.e. the EPC and/or the Implementing Regulations."
• cf. Niklas Luhmann, Legitimiation durch Verfahren, page 131 (in the German original): "All dies ist bei Konditionalprogrammen [i.e., as in legal proceedings]  im Prinzip und weitgehend auch in der Praxis anders. Hier wird nach Maßgabe eines »Wenn« das programmierte »Dann« gewählt. Die Folgen werden von dem Entscheidenden nicht mit verantwortet, sondern dem angelastet, der das Programm erließ (und damit vielleicht seinerseits bestimmte Zwecke erreichen wollte). Die Verantwortlichkeit kann hier in weitem Umfange nach oben abgeschoben werden. Beim konditional programmierten Entscheiden geht es nur noch um den Nachweis, daß ein bestimmter Tatbestand faktisch vorliegt und daß es sich dabei um jenes Signal handelt, das nach dem Programm die Entscheidung auslösen sollte. Zum Entscheiden genügt juristischer Sachverstand, der sich nach Bedarf durch Zeugen und Sachverständige informieren läßt, die Entscheidung aber allein verantwortet. Auf diese Weise kann die Entscheidung gegen zahlreiche Möglichkeiten der Kritik praktisch immunisiert werden, vor allem ...  (4) gegen eine Kritik der Auswirkungen (im Unterschied zu den rein juristischen Konsequenzen). (...) Der dichotomisch zugeschliffene Darstellungsstil juristischer Begründungen, das Feststellen von Begriffen und Fakten als so und nicht anders, entspricht genau dieser Funktion, die Kritikfähigkeit einer Entscheidung zu reduzieren und auf wenige kontrollierbare Fehlerquellen zu beschränken - im Unterschied zum Denken in Wahrscheinlichkeiten und Chancen, gleitenden Skalen, Nutzenschätzungen, Wertverhältnissen und zeitbedingten Opportunitäten, das bei Zweckprogrammen [i.e., political decision-making] angebracht ist.
• Note that in the quote above, the part "i.e. the EPC and/or the Implementing Regulations" might be a key insight that was not a priori evident.
• The EBA refers in poin 37 to the 'rubrum' of the decision ("More specifically, the parties to the proceedings are first of all the parties for whom the deciding body intended to issue the decision. These are the parties that are named in the rubrum of the decision.")  It appears to be a German term (as explained e.g. here: https://www.pf.um.si/site/assets/files/5987/germany.pdf ) 

• EPO

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

T2328/22 - Res judicata against the intervenor

Key points

• In the first appeal, the Board decided to maintain the patent in amended form with a description to be adapted, and remitted the case.
• An accused infringer intervenes during the procedure before the OD after the remittal.
• Can the accused infringer contest the allowability of the claims?
• The Board concludes the accused infringer can not.
• The Board, in translation: "the board follows T 0694/01, which concerned a similar situation to the present case. In a first opposition appeal, the case was remitted to the opposition division for adaptation of the description. The intervention of the other opponents occurred subsequently, during the second opposition appeal. In T 0694/01, the question was discussed whether the intervener, as a party not previously involved in the proceedings, could still challenge the wording of the claim considered allowable by the board of appeal by raising new facts (in the form of a new ground for opposition), thus raising the same issue as in the present case."
• "In T 0694/01, the board denied the immediate res judicata effect of the board of appeal's decision against the intervener, but concluded that the res judicata effect of the decision against the previous parties to the proceedings could not be called into question (Reason 2.15)."
• The Board, in T 0694/01: "2.15 Die Beitretende beruft sich ferner darauf, daß die Entscheidung vom 27. Januar 2000 über den Wortlaut der Patentansprüche für sie nicht rechtsverbindlich sei, weil sie nicht an dem Verfahren beteiligt war. Auch die Kammer verneint eine unmittelbare Rechtskraftwirkung dieser Entscheidung gegenüber der Beitretenden, kann sich aber deren Schlußfolgerung nicht anschließen, daß durch den Beitritt auch die Rechtskraftwirkung der Entscheidung gegenüber den bisherigen Verfahrensbeteiligten in Frage gestellt werde."
• The Board then largely follows T 0694/01, which is a carefully reasoned decision.
• "In summary, there is therefore no apparent reason to deviate from the convincing arguments in Reasons 2.20 of T 0694/01 that an intervener joins a foreign proceeding and must consequently accept the proceedings in the state in which it finds itself at the time of the intervention."
• I don't know how this applies to the binding effect of ratio decidendi in the case of a remittal for further prosecution. There must be case law about it. Hints in the comments are welcome. 

EPO 

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

T 1865/23 - Intervention and remittal

Key points

• Yesterday's post demonstrated that Article 123(3) does not apply by analogy to the set of claims that the Board considers possibly allowable and which set of claims forms the basis for the Board's decision to remit the case. In other words, the claims can be broadened during the procedure before the OD after the remittal, compared to the set of claims on which the Board based its decision to remit.
• In today's decision about solar cells, a notice of intervention was filed in appeal (hi G 2/24) by "Commissariat à l'énergie atomique et aux énergies alternatives (CEA)". I checked the file, and apparently, this French public institute was sued for patent infringement by the proprietor, though the details are redacted in the file wrapper.
• Opponent 1 filed the appeal against the decision of the OD to maintain the patent in amended form. The proprietor withdrew their appeal during the oral proceedings before the Board. The main request is therefore the set of claims held allowable by the OD.
• The Board finds the main request to be unallowable (Article 123(2), intermediate generalisation)
• The Board admits AR-10 and finds it complies with Article 123(2)).
• The Board remits the case.
•   In the present case, in its statement of grounds for intervention [filed during the appeal hortly after the appeal proceedings began by the Notice of appeal Opponent 1 and the proprietor], Opponent 2 questioned the priority of the patent in suit, referred to further documents (D32 to D51) and also to documents D29 to D31, which the Opposition Division had not admitted, and raised further objections with reference to these documents. In its reply to the patent proprietor's statement of grounds of appeal, it also submitted the additional documents D52 to D57."
• "Since Opponent 2/Intervenor is entitled to challenge the patent in suit "by all available means", documents D32 to D51 and documents D29 to D31, which were not admitted by the Opposition Division, must be taken into account."
• It is unclear to me if Opponent 1 had objections of novelty and inventive step against AR-10 in appeal. 
• It is also not entirely clear to me if the proprietor may now shift the subject-matter compared to the claims held allowable by the OD in the first decision of the OD. I mean that set of claims contained an added feature, which had to be narrowed in appeal to address the Article 123(2) issues of intermediate generalisation. Apparently, the proprietor had defended broader claims in its own appeal, but there is no written decision of the Board on those requests because the proprietor withdrew its appeal.

EPO 

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

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.

G 2/24 - Referral - Intervention in appeal - T 1286/23

Key points

• The proprietor (only) appeals the (interlocutory) decision that the patent can be maintained in amended form. An admissible intervention is filed in appeal. The proprietor withdraws the appeal.
• G 3/04 held that (headnote) : "After withdrawal of the sole appeal, the proceedings may not be continued with a third party who intervened during the appeal proceedings." 
• Following G 3/04, the current appeal would have to be closed without decision, such that the decision of the OD that the patent can be maintained in amended form becomes final. The proprietor can then file the amended claims under Rule 82 EPC and the formal decision to maintain the patent in amended form can be issued.
• The present Board requests the EBA to reconsider the holding of G 3/04 and refers a corresponding question to the EBA.
• "if the intervener is permitted to enter at the appeal stage, and the intervener is to be considered an opponent with full rights (consistent with the above-mentioned case law), then it is inequitable to demand from the intervener the impossible, namely to retroactively establish themselves as parties who have also been parties to the earlier proceedings, in order to satisfy the requirements of Article 107 EPC, either first or second sentence."
• " Based on the above, the intervener should thus be regarded as satisfying the requirements of Article 107 EPC alone by way of the fiction derived from Article 105 EPC: the intervener becomes either one of the parties of the "any party to proceedings adversely affected by a decision" or simply an "other party to the proceedings". 
• "The adverse effect requirement can be retained and the expected adverse effect can also be defined in a straightforward manner. This can be done without requiring the intervener to have been a party to the proceedings, namely by defining the adverse effect in substantive terms as the continued existence of the very patent the intervener is alleged to have infringed."
• "Accordingly, depending on the outcome of the appealed decision, the intervener must be given the choice of entering the proceedings in any party position open to them, as above. In particular, they must be given the opportunity to file their own appeal in a given case, of course upon payment of the appeal fee."
• "In the Board's view, it follows from the above that the intervener Geske by advancing their grounds of opposition and by properly paying the opposition and appeal fee within the three-months time period of Article 105 EPC is entitled to continue appeal proceedings even upon a withdrawal of Beurer's appeal. This result is however at odds with decision G 03/04. "
• " For all these reasons, the Board decides to refer a question to the Enlarged Board of Appeal for decision, as set out in the order. It is understood that the term "all appeals" is intended to cover all appeal situations, irrespective of the number of original appellants, whether only one or several, so that the question referred encompasses the situation of the "sole appeal" within the meaning of G 03/04."
• Question presented: "After withdrawal of all appeals, may the proceedings be continued with a third party who intervened during the appeal proceedings? In particular, may the third party acquire an appellant status corresponding to the status of a person entitled to appeal within the meaning of Article 107, first sentence, EPC?"
• In case you wonder, there is no divergence in the case law. That is no requirement for a referral by a TBA (Article 112 EPC) as confirmed by Art. 21 RPBA: "Should a Board consider it necessary to deviate from an interpretation or explanation of the Convention contained in an earlier decision or opinion of the Enlarged Board of Appeal according to Article 112, paragraph 1, EPC, the question shall be referred to the Enlarged Board of Appeal".
• 
  
• EPO 

The link to the decision and an extract of it can be found after the jump.

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. 
• 
  
• 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.

T 0689/19 - (III) Intervention and res judicata

Key points

•  This is the second appeal in this opposition case. In T 0950/13, the Board remitted the case. 
• "When justifying the remittal to the opposition division, the board drew attention to the fact that the decision then under appeal dealt solely with the grounds of added matter and lack of sufficiency of disclosure, but had not decided on other grounds for opposition such as inventive step (point 6). It remitted the case to the department of first instance for further prosecution (order)." 
• Multiple parties intervene in the proceedings under Article 105 EPC.
• " All the interventions were filed after decision T 950/13 had been issued following an appeal by the patent proprietor against the decision of the opposition division dated 1 February 2013 revoking European patent no. 1 610 780. Decision T 950/13 remitted the present case to the opposition division for further prosecution of outstanding issues raised by the opposition filed on 21 January 2011. " 
•  " In their notices of intervention and on appeal, the appellants [itnerveners] argued that the medical use claimed in the main request was not sufficiently disclosed. They asked that this ground be reconsidered, and argued that the application did not disclose a plausible concept of treatment but a mere allegation without proof that dasatinib treats the same cancers as imatinib. " 
• The Board does not admit these objections.
•  The Board: " According to the established case law of the boards of appeal, res judicata is a generally accepted principle which means that a matter which has been judicially determined in a final manner between parties by a tribunal of competent jurisdiction cannot become the subject of subsequent proceedings between the same parties or their successors" 
• "Hence a board's decision is an absolute bar to subsequent proceedings on the same matter between the same parties (or their successors). The order and the reasons for the decision determine the extent to which the decision is final (T 460/95, OJ EPO 1998, 587, point 2 of the Reasons). The "same matter" refers to all issues of fact and law which have been finally settled (T 694/01, OJ EPO 2003, 250, point 2.10 of the Reasons; T 167/93, OJ EPO 1997, 229, point 2.5 of the Reasons; see also T 843/91, OJ EPO 1994, 832, headnote and point 3.4.2 of the Reasons; T 153/93, point 2 of the Reasons; T 308/14, catchword and point 1.3)."
• In T694/01, the Board had remitted with an order specifying the claims.  T167/93 r.2.5 states "any generally recognized principle of estoppel by rem judicatam for the Contracting States is of extremely narrow scope". For the decisions cited as "see also", T 843/91 deals with a remittal specifying the claims in the order. T 153/93, however, indeed says that "The previous finding of the Board of Appeal that Claims 1 to 5 as amended in the course of oral proceedings were novel, were clear and were inventive, are therefore res judicata. Furthermore, the findings of fact i.e. the clarity of the term "normal background lawn" as well as the construction of the disclosure of DE-A-2 924 861 in its entirety, are findings of fact that were part of that decision and are likewise binding upon the parties in all subsequent proceedings before the EPO, including its judicial arm, the Boards of Appeal" but again the previous decision T761/90 had an order specifying the allowable claims.
• In T 308/14, the earlier appeal decision was indeed to remit for further prosecution, i.e. not with an order to maintain the patent with certain claims. However, in that decision, it was held that: 'This decision constituted res judicata and thus was binding on the opposition division in the subsequently resumed opposition proceedings (Article 111(2) EPC)." So in that decision, the binding effect under Article 111(2) EPC and res judicata were seen as one and the same.
• However, as held in T 0449/15, "The principle of res iudicata and that of the binding effect of the ratio decidendi pursuant to Article 111(2) EPC 1973 are not mutually exclusive, but complement one another. " 
• The Board then takes a deep dive and gives an interesting analysis of the concepts of res judicata and binding effect. Extensive internal citations are omitted in the following.
• " The principle of res judicata and that of the binding effect pursuant to Article 111(2) EPC are not identical, but complementary. The binding effect of the ratio decidendi pursuant to Article 111(2) EPC is limited to proceedings regarding the same application or patent following a remittal of the case after a (first) decision of a board of appeal. The department dealing with the case in the subsequently resumed proceedings and the board dealing with a possible second appeal arising from these proceedings are bound by the ratio decidendi of the first decision. This binding effect extends to matter which is not finally settled (res judicata), but encompassed by the ratio decidendi "  
• " On the other hand, it only applies "in so far as the facts are the same" []  The principle of res judicata is not limited to a situation of remittal for further prosecution but also applies in such a situation. Matter which has become res judicata is not open for reconsideration following remittal. Since this principle applies to all issues of fact which have been finally settled, it precludes a change of facts as contemplated by Article 111(2) EPC [] New facts, evidence or arguments seeking to cast doubt upon settled issues of fact cannot be considered. "
• " The nature of opposition and opposition appeal proceedings therefore does not support the view that a matter finally settled by an appeal decision remitting the case to the opposition division for further prosecution only binds the parties to the appeal proceedings and does not prejudice an intervener that only becomes a party to the opposition proceedings subsequent to the remittal of the case. The result of applying the principle of res judicata depending on the party status in the appeal proceedings leading to remittal would be absurd. The adjudged matter had to be accepted by the initial parties, and the opposition division had no power to re-open such matter in respect of those parties, whereas interveners would be allowed to disregard the final findings of the decision remitting the case to the opposition division and start opposition proceedings anew. However, in opposition proceedings it is not possible to take separate decisions for different parties on the form of the patent to be maintained."  
It is also not possible to conceptually separate the opposition proceedings into two different parts, the first one being the original opposition and the second one opposition proceedings including the interveners. A European patent can only be the subject of one common opposition procedure []. The filing of oppositions by different opponents or interveners does not lead to separate opposition proceedings for each party, not even conceptually.
• " In view of the above, the board considered whether the object and purpose of Article 105(1) EPC might justify and constitute an exception to both the principle of res judicata and the binding effect under Article 111(2) EPC." 
The board therefore agrees with decision T 694/01 that there "is nothing in the EPC to suggest that the intervention of an assumed infringer opens a new stage of proceedings which invalidates binding results of the proceedings to date" (T 694/01 []).
• In T 694/01, the Board had in the first appeal decided on the wording of the claims and remitted for maintenance of the patent in amended form with a description to be adapted, and the interveners intervened only at that stage.
• " In the case at hand, the grounds of opposition of added matter and sufficiency of disclosure have been finally determined in decision T 950/13. These grounds are therefore not open to an intervention and can be considered neither by the opposition division nor by the board on appeal. As set out above, due to the principle of res judicata, it is not possible to change the facts underlying the decision T 950/13 even if this change is acceptable in view of the ratio decidendi." 
  
  
• As a comment, the effect of this decision seems to be that each finding of fact and conclusion of law by the Board is res judicata, and hence binding after a remittal, even if a party could successfully invoke the exception expressly foreseen by the legislator in Article 111(2) EPC. In other words, does this line of case law on res iudicata make the exception of Article 111(2) EPC a dead letter?

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0689/19 - (II) Intervention and Portuguese arbitration and nullity

Key points

• The question is whether the interventions are admissible.
• The patentee had initiated "arbitration proceedings under Portuguese Law No. 62/2011 of 12 December 2011" against the interveners.
• These are the mandatory "arbitration" proceedings for pharma patent cases under Portuguese law.
• It seems that this kind of mandatory arbitration procedure is of historical interest only. "The 2018 amendment to Law 62/2011 removed the mandatory arbitration requirement for disputes in connection with pharmaceutical patent infringements, subjecting them to the jurisdiction of the Intellectual Property Court." (link); idem Global Patent Litigation, Portugal, para. 200.
• "It has not been contested that Articles 2 and 3 No. 1 of Law No. 62/2011 confer on arbitration tribunals exclusive jurisdiction in disputes, including requests for preliminary injunctions, arising from industrial property rights related to so-called reference medicines and generic medicines "
• "The dispute is about whether these proceedings, in view of their subject and nature, qualify as "infringement proceedings" within the meaning of Article 105 EPC.
•  "Consequently, an autonomous interpretation of what constitutes "infringement proceedings" should avoid interfering with national legislation by adopting a definition that is tailored to some, but not all, national systems. Moreover, the legislative intent has to be taken into account."
• " The purpose of Article 105 EPC is to avoid parallel proceedings (infringement proceedings, nullity proceedings or declaratory proceedings for non-infringement) before national courts of the contracting states while centralised opposition and opposition appeal proceedings are still pending. This ensures efficient use of the judicial system and avoids contradictory decisions (see G 4/91, points 3 and 4 of the Reasons; G 1/94, OJ EPO 1994, 787, point 7 of the Reasons)."
• Note (added 29.12.2022: it is interesting that nullity proceedings before national courts are listed because Art. 105 refers only to infringement and non-infringement proceedings).
• " In the board's opinion, it does not matter whether these proceedings are set off in the present case by a request for a marketing authorisation either. What matters is that the exclusive rights conferred by a European patent are invoked in these proceedings and their enforcement is sought. Indeed, "infringement" means contravention of the rights conferred by a patent on its owner, which are rights to exclude (prevent) third parties from making use of the subject-matter of a patent without the authorisation of the patent proprietor. The board therefore concurs with the definition given in decision T 1713/11 that "proceedings for infringement" within the meaning of Article 105(1)(a) EPC are (national) proceedings "meant to establish whether a third party is commercially active in an area that falls within the patentee's right to exclude" (T 1713/11, point 2.6 of the Reasons)."
• The interventions are admitted.
  
  
• See also T0223/11 concerning the predecessor administrative Portuguese proceedings. 
• EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2951/18 - Intervention and Art.14 RPBA

Key points

•  "The patent proprietor argued that, following decision T 384/15, the Board had to consider wether, in the present case, when invoking Article 105 EPC, the intervener attempted to circumvent the law by abuse of process."
• "The patent proprietor submitted that the legal requirement to present relevant evidence within the original 9 months opposition period was circumvented by the intervener."
• The Board: "The alleged existence of a relationship between the appellant and the intervener, even if confirmed, would not be sufficient for concluding that procedural abuse occurred."
• The Board derives from G3/97 r.2.1 that "it is neither vexatious nor illegitimate if the opponent and the intervener coordinate their actions within the limits of the applicable procedural framework."
• "Referring to documents and objections submitted by the opponent does not represent an abuse but rather an attempt of the intervener to pursue their legitimate interest by using information which was publicly available, e.g. by file inspection, when the intervention was filed. There is also no requirement in the EPC that the objections and the evidence submitted by an intervener should not be related to those previously submitted by an opponent."
• Finally, "The argument that using a straw man as opponent allowed the intervener to create a second, abusive, opportunity to circumvent the legal requirement to present relevant evidence within the original 9 months opposition period is therefore not convincing."
• "The procedural conduct of the intervener leading to the timing of the intervention is also not regarded as abusive, because in the present case it was the cease and desist letter, e.g. the legal action initiated by the patent proprietor against a third party, which triggered the filing of the notice of intervention at a very late stage of proceedings before the EPO."
  
  
• "The patent proprietor further argued that the evidence submitted by the intervener not be admitted into opposition proceedings in application of Articles 12(6) and 14 RPBA 2020. This was because [] Article 14 RPBA 2020 specified that Article 12(6) RPBA 2020 also applied to interventions, with the result that there were clear limits to what an intervener is allowed to submit in appeal proceedings, which were similar to those foreseen for an appellant-opponent."
• The Board: "In the present case the Board, taking into account the principle, firmly established in the case law, that an intervener has the right to present a new ground for opposition at the appeal stage (G 1/94), concludes that the purpose of an intervention under Article 105 EPC during appeal proceedings would be meaningless if the evidence upon which the intervener decides to rely was not admitted therein. Systematically preventing interveners from referring to duly filed prior-art documents only because the same or similar evidence was filed late by an opponent would force these third parties to pursue their legitimate interest, recognized under Article 105 EPC, in national proceedings. This would lead to a situation which is incompatible with the spirit and purpose of the EPC (Article 23 RPBA 2020). As a consequence of the above the Board concludes that the evidence filed by the intervener should be admitted into the present proceedings."
• Hence: " Article 12(6) RPBA 2020 is not applicable to the present case" (for the intervener)
• The Board remits the case without considering any of the substantive issues. "the particular circumstances of the present case, in particular in view of the filing of an intervention based on substantially new evidence after the decision under appeal had been announced by the opposition division, call for remitting the case to the opposition division (see also G 1/94, point 13 of the Reasons)."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2904/19 - Intervention in appeal period

Key points

• An intervention was filed under Art.105: “The decision under appeal was announced at the end of the oral proceedings held before the opposition division on 12 June 2019. Two days later, on 14 June 2019, the intervention of an assumed infringer according to Article 105 EPC was filed. The intervention meets the formal requirements and is substantiated and therefore is seen as admissible in the sense of Rule 89 EPC. In accordance with G 4/91, point 6 of the reasons, in this particular situation where an intervention is filed after the opposition division announced its decision and where a party to the opposition proceedings files an appeal, the notice of intervention will be deemed to be filed in appeal proceedings, see also T 791/06 of the same Board in different composition, point 2.2 of the reasons. 
  ... Therefore, the Board concludes that the intervention cannot be rejected and that it forms part of the proceedings.
• The patentee is the respondent and filed new AR's with its Appeal Reply Brief. The Board: "In the case at hand, new matters have been raised in view of the notice of intervention, which was filed after oral proceedings before the opposition division were held. The respondent was thus not in place of reacting to these new matters during opposition proceedings with arguments and/or auxiliary requests. The Board concludes that due to the course of the opposition proceedings and the subsequent intervention, the filing of auxiliary requests 1 to 14 with the reply to the statement of grounds of appeal and to the intervention, where the respondent is required to form its complete appeal case in the sense of Article 12(3) RPBA 2020, was, in the present case, an appropriate point of time to present the auxiliary requests. In view of these particular circumstances, the Board, exercising its discretion under Article 12(4) RPBA 2007, admits auxiliary requests 1 to 14 into the appeal proceedings."
• The Board deals with the attacks of the opponent/appellant. "It follows that the appellant has not provided admissible objections and/or convincing arguments that would demonstrate that the subject-matter of claims 1 and 9 according to auxiliary request 7 lacks an inventive step in the sense of Article 56 EPC."
• However, "The intervener confirmed that it had objections to the claimed subject-matter of auxiliary request 7 other than the appellant's objections. The intervener also requested that the case be remitted to the opposition division"
• The Board remits the case taking into account that the Board "concludes that new facts, evidence, arguments and objections filed with the intervention, in combination with the new auxiliary requests filed by the respondent cannot be decided without an undue burden for all parties and the Board, amount to special reasons in the meaning of Article 11 RPBA 2020 that, hence, justify a remittal to the opposition division for further prosecution."

EPO T 2904/19

The link to the decision is provided after the jump.

T 1891/20 - Intervention by entity related to opponent

 Key points

•  A legal entity belonging to the same economic group as one of the opponents files an intervention. The patentee objects that the intervention is inadmissible because the opponent and the intervener would not be separate parties.
• The Board: " In the present case, the intervener did not have the status of an "opponent" in the opposition proceedings. In particular, the intervener is a legal entity which is separate from appellant II. This has not been disputed by the respondent. In T 305/08, it was stated that "any third party" in Article 105(1) EPC cannot be given an interpretation other than that each party must be a separate legal entity, and that this also applies to an intervention filed by a legal entity belonging to the same group of companies as the opponent (Reasons 1.5.2)." The Board follows this case law.
• The Board: “ As to the respondent's objection to appellant II and the intervener having a common representative, the board refers to Rule 151 EPC, according to which parties may appoint a common representative. ”
• As a comment, I think this is confusing.  Rule 151(1) first sentence refers only to the case of multiple applicants. Rule 151(1) third sentence reads: “The same shall apply to third parties acting in common in filing a notice of opposition or intervention and to joint proprietors of a European patent.” As I understand it, this refers to joint opponents (multiple natural or legal persons filing a single opposition and paying one opposition fee, see G 3/99) and to joint proprietors (including the backreference to the mandatory common representative of Rule 151(1), first and second sentence). The opponent and intervener in the present case are not joint parties. Nevertheless, there is no provision prohibiting two (non-joint) opponents from appointing the same representative. However, it would indeed be very confusing if the same representative speaks for two (non-joint) parties (“Mr/Ms. Chair, thank you, Opponent 1 has no novelty objections and Opponent 2 submits that claim 1 is not novel over D4”).
• The Board, on the admissibility of the appeal: “Questions of admittance of allegedly late-filed submissions and the admissibility of an appeal should not be mixed up (see e.g. T 2069/15, Reasons 4). With regard to the latter, the board does not see any convincing reasons why the appeals of appellants I and II should be considered inadmissible under Rule 99(2) EPC.”

T 1891/20 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t201891eu1.html

Reasons for the Decision

1. Admissibility of the intervention (Article 105 EPC)

1.1 The respondent requested that the intervention be dismissed, for the following reasons:

i) During the licence negotiations following the appealed decision, the intervener claimed to be equivalent to appellant II, so that they would automatically inherit the rights of appellant II in the framework of a legal agreement concerning, inter alia, the patent under dispute. In fact, the main representative of appellant II in the cross-licence agreement was Mr. Branzka, which was listed in an e-mail of 25 January 2017 as Director of Patents/Licences for the intervener, while successive e-mails of the same thread defended the position of appellant II. The identity between both appellant II and intervener was reinforced by the fact that the notice of intervention was filed in the name of the intervener, but with the same address and the same representative as the notice of opposition of appellant II filed two years earlier. The position of the intervener was contradictory. On the one hand, they tried to defend that appellant II "does not qualify as a different party" from the intervener on a cross-licence agreement signed by the intervener but, on the other hand, tried to defend that the intervener and appellant II were different entities that should have rights as different parties to the opposition proceedings.

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).

T 1665/16 - Documents withdrawn intervention

Key points

• In this opposition appeal, there was an admissible Notice of intervention filed in the appeal stage; the Notice included documents E1-E20. The intervener withdrew his intervention during the appeal. The question is whether E1-E20 are admissible. 
• The Board: " Documents E1 to E20 were thus as a matter of fact part of the appeal proceedings even without there being a need for the exercise of discretion or a decision of the Board on the admittance of these documents into the proceeding." 
• "The withdrawal of the intervention [...] did not change the legal and factual status of documents E1 to E20. The withdrawal of the intervention only terminated the status of the intervener as opponent and party to the proceedings, but has no direct procedural consequences for the appeal proceedings as the original opponent, who had filed a valid appeal, remained party to the proceedings. The withdrawal of the intervention does not affect the legal validity of procedural acts like the filing of documents or other evidence carried out before the withdrawal of the intervention. In particular, the withdrawal of the intervention does not render the intervention retroactively inadmissible, since such a withdrawal has only the legal effect ex nunc. Consequently, contrary to the proprietor's/respondent's opinion, there is no legal basis for regarding documents E1 to E20, which have been filed in the context of an admissible intervention, as retroactivly late filed after the withdrawal of the intervention." 
• The case is remitted to the OD for consideration of E1-E20.

EPO T 1665/16 - link





2. Status of documents E1-E22

2.1 The intervention filed on 17 October 2017 (second intervention) has been timely filed within the three months time period after institution of the infringement proceedings, Rule 89(1) EPC. It also fulfils the requirements of Article 105 EPC and Rule 76 EPC. Documents E1 to E20 were annexed to the intervention of 17 October 2017. Since the intervention, apart from the requirements according to Article 105 and Rule 89(1) EPC, is not subject to any time limit, documents E1 to E20 have been filed as early as possible. Documents E1 to E20 were thus as a matter of fact part of the appeal proceedings even without there being a need for the exercise of discretion or a decision of the Board on the admittance of these documents into the proceeding. The Board in its communication of 29 January 2019 regarded the intervention filed on 17 October 2017 (second intervention) as admissible. The respondent/patent proprietor neither objected to the Board's opinion nor contested the admissibility of that intervention. The intervention is therefore admissible.

2.2 In G 3/04 (OJ EPO 2006, 118), the Enlarged Board concluded, inter alia, that the valid intervener acquired the status of an opponent, irrespective of whether the intervention occurred during the proceedings before the opposition division or at the appeal stage (Case Law of the Boards of Appeal, 8th Edition, July 2016, IV.C.3.2.1). Furthermore, the Enlarged Board ruled that if the intervention was filed during the appeal proceedings, as it is the case in the present appeal, the intervener, because he could only acquire the status of an opponent, had the same rights and obligations - apart from the right to raise new grounds of opposition - as any opponent who had not filed an appeal.

2.3 With the valid filing of the notice of opposition with the intervention, the factual and legal framework of the present opposition in appeal was defined by the sum of the facts and statements of the extent to which the patent was opposed and by the grounds for opposition submitted and substantiated in the notices of opposition provided by each opponent. In that regard, the documents E1-E20 filed by the opponent/intervener were added to the proceedings alongside document D1 filed by the original opponent.

2.4 The withdrawal of the intervention with letter of 9 April 2019 did not change the legal and factual status of documents E1 to E20. The withdrawal of the intervention only terminated the status of the intervener as opponent and party to the proceedings, but has no direct procedural consequences for the appeal proceedings as the original opponent, who had filed a valid appeal, remained party to the proceedings. The withdrawal of the intervention does not affect the legal validity of procedural acts like the filing of documents or other evidence carried out before the withdrawal of the intervention. In particular, the withdrawal of the intervention does not render the intervention retroactively inadmissible, since such a withdrawal has only the legal effect ex nunc. Consequently, contrary to the proprietor's/respondent's opinion, there is no legal basis for regarding documents E1 to E20, which have been filed in the context of an admissible intervention, as retroactivly late filed after the withdrawal of the intervention. Since there is no legal basis in the EPC that foresees the exclusion of documents from continuing opposition proceedings when one of the oppositions is withdrawn, the documents E1-E20 submitted by the opponent/intervener with the notice of opposition remain in the proceedings and have to be taken into account in the Board's decision.

2.5 As the Board has no discretion not to admit documents E1 to E20 in the proceedings, the request not to admit these documents must be refused.

T 0439/17 - Intervention and two national procedures

Key points

• In this opposition appeal, the Board has to decide on the admissibility of a Notice of intervention under Article 105 EPC.
• The intervener basis the intervention on a " Beweissicherungsverfahren nach § 485 Abs. 2 ZPO (Deutsche Zivilprozessordnung)" (evidence seizure proceedings). The question is whether such a procedure is a "proceedings for infringement " of the patent in the sense of Art.105(1)(a) EPC.
• Following recent decision T1746/15, the Board decides that they are not. 
• The fact that the evidence seizure procedure was followed by an actual infringement complaint in the national procedure, does not change this. The later national infringement procedure is a separate procedure which can not retroactively make the intervention admissible.
• The intervener had based a second intervention on the national infringement procedure. However, that second intervention was filed during the appeal procedure. However, the other parties had withdrawn their appeal (during the oral proceedings). Hence, the appeal proceedings are terminated if the first notice of intervention is not admissible (G3/04).  

EPO Headnote


1. Die Entscheidung T 1713/11 definiert eine Klage wegen Verletzung für die Zwecke des Artikels 105 EPÜ als "ein Verfahren zur Feststellung, ob ein Dritter in einem Bereich, der dem Ausschlussrecht des Patentinhabers unterliegt, wirtschaftlich tätig ist". Nach Meinung der Kammer bedeutet dies, dass das Entscheidungsorgan, üblicherweise ein Gericht, aufgefordert wird, "[eine Verletzung] festzustellen", als abschließendes Rechtsergebnis dieses Verfahrens. Die Tatsache, dass die Patentinhaberin oder eine andere Partei das fragliche Verfahren ganz offensichtlich mit dem Ziel eingeleitet hat, dem Patentinhaber die Feststellung einer Verletzung (als Tatbestand) zu ermöglichen, ist für das Vorliegen einer "Klage" im Sinne von Artikel 105 EPÜ irrelevant. (Nr. 6 der Gründe)

2. Die Zulässigkeit des Beitritts muss zum Zeitpunkt des Beitritts gegeben sein und kann nicht später rückwirkend (ex tunc) hergestellt werden. (Nr. 13 der Gründe)

3. Die Kammer stellt fest, dass ein Beweissicherungsverfahren nach § 485 Abs. 2 ZPO und die anschließende Verletzungsklage im Hinblick auf die Anwendung von Artikel 105 (1)(a) EPÜ als zwei getrennte Verfahren zu betrachten sind. (Nr. 15 der Gründe)

EPO T 0439/17 -  link

Entscheidungsgründe

1. Die Beschwerde und die Beschwerdebegründung wurden rechtzeitig eingereicht, und die Gebühren wurden entrichtet. Die Beschwerdeführerin ist durch die Entscheidung beschwert. Die Beschwerde ist zulässig.

Parteistellung der beschwerdeführenden Einsprechende 2

2. Wie bereits in der vorläufigen Stellungnahme der Kammer erläutert, wird die Parteistellung der Einsprechenden 2 durch die Beurteilung der Frage bestimmt, ob ihr erster oder zweiter Beitritt zulässig und damit auch rechtswirksam ist. Wird lediglich ihr zweiter Beitritt anerkannt, aber nicht der erste, so erlangt sie nur die Parteistellung einer Einsprechenden, nicht aber die einer Beschwerdeführerin in Bezug auf die Feststellungen der Entscheidung über das Streitpatent (G 3/04 vom 22. August 2005, ABl. EPA 2006, 118, Gründe Nr. 6 und Nr. 10, erster Absatz). Ihre Parteistellung als Beschwerdeführerin in der vorliegende Beschwerde wird sich somit auf die Frage der Zulässigkeit ihres (ersten) Beitritts beschränken.

T 0435/17 - Intervention by (not?) a third party

Key points

• In this opposition appeal, two notices of intervention were filed under Article 105 EPC. The patentee protests that the interveners are not really third parties, because of their "factual proximity" to the opponent " in geographical, accounting (i.e. EPO deposit account] and representational terms". The interventions would, therefore, be an abuse of procedure to delay the opposition.
• The Board finds that there is no legal basis to hold an intervention inadmissible because of proximity to the opponent.

EPO T 0435/17 -  link

Motifs de la décision

1. Recevabilité des interventions

1.1 Dans la notification selon l'article 15(1) RPCR la Chambre a annoncé et motivé son avis provisoire que les deux interventions sont recevables comme suit:

"8.1 La Chambre juge les deux interventions recevables parce qu'elles satisfont aux dispositions de l'article 105 CBE et de la règle 89 CBE. En particulier, les deux contrefactrices présumées ont apporté la preuve qu'une action en contrefaçon fondée sur le brevet a été introduite à leur encontre (cf. assignation devant le TGI Paris du 22 décembre 2017).
8.2 La titulaire du brevet soutient que les deux interventions sont irrecevables parce que les contrefactrices présumées ne sont pas des tiers au sens de l'article 105(1) CBE, en raison de leur proximité factuelle en termes géographiques, comptables et de représentation avec l'opposante 1, et qu'elles utilisent donc la procédure d'intervention pour porter tardivement à la procédure des moyens qui auraient déjà pu être présentés devant la division d'opposition.
8.3 Toutefois, la Chambre estime que le terme "tout tiers" figurant à l'article 105(1) CBE doit être interprété au sens où le contrefacteur présumé doit être une entité juridique distincte des autres parties à la procédure (cf. par exemple la Jurisprudence des Chambres de recours de l'OEB, 2016, chapitre IV.C.3.1.1), et qu'il n'existe aucune base juridique pour exclure qu'un contrefacteur présumé partage avec un opposant des locaux, un compte courant pour le paiement de taxes - lesquelles peuvent par ailleurs être payées par toute personne - et/ou un mandataire agréé. Il ne ressort pas des éléments présentés par la titulaire du brevet que les contrefactrices présumées et l'opposante 1 ne sont pas des entités juridiques distinctes.
8.4 La Chambre n'est donc pas persuadée que le fait d'autoriser les interventions revienne à permettre à l'opposante 1 d'introduire tardivement de nouveaux moyens dans la procédure de recours."

1.2 La titulaire du brevet n'a pas répondu sur le fond à cet avis provisoire.

1.3 Au début de la procédure orale, la Chambre a constaté qu'en l'absence d'élément nouveau la conclusion communiquée à titre provisoire devait s'appliquer de manière inchangée et a ainsi décidé que les interventions étaient recevables.

1.4 Les intervenantes sont par conséquent assimilées à des opposantes pour la suite de la procédure (article 105(2) CBE).

T 0691/16 - Intervention

Key points

• The Board gave this decision publication code [C] and hence I discuss it here.
• There was an intervention. The patentee has some criticism of the advice of delivery of the writ in the infringement case. According to Art. 105, there must be infringement proceedings started by the Patentee in order to for the assumed infringer to be able to intervene; the Notice of intervention must also be filed within 3 months from the start of the infringement proceedings. In this case, the Notice of intervention was filed on 05.09 and the date of receipt of the writ was 05.06 according to the intervener. 
• The Board: "Im Hinblick auf die rechtzeitige Zustellung dient der Rückschein gerade dem Nachweis über die Zustellung, und sowohl Stempeldatum als auch handschriftliches Datum weisen, soweit leserlich, den 5. Juni aus. Insoweit besteht jedenfalls ein Anscheinsbeweis, gegen den die Patentinhaberin auch keine substantiierten Zweifel geltend gemacht hat. Im Übrigen drückt Regel 126 Abs. 1 letzter Halbsatz EPÜ einen allgemeinen Grundsatz aus, wonach nicht der Empfänger, sondern der Absender eines Schriftstückes im Zweifel zu beweisen hat, dass und wann dieses den Empfänger erreicht hat. Zweifel, die sich unter anderem aus Unleserlichkeiten ergeben, gehen daher nicht zu Lasten des Empfängers. " 
• As a comment, I think that the intervener must prove that he has received the writ which starts the court infringement proceedings. If the Notice of intervention is filed more than 3 months after the date given on the writ, the intervener will have to show that the Notice of intervention is in time calculated from the date of delivery (or receipt) of the writ, perhaps even depending on national law. Finally, I think that Rule 126(1) EPC specifies that the EPO has to proof delivery (as opposed to receipt or dispatch); which seems specific to EPO procedures. 

EPO T 0691/16 - link

4. Zulässigkeit des Beitritts

4.1 Die Beschwerdeführerin-Patentinhaberin bestreitet die Zulässigkeit des Beitritts mit den folgenden Argumenten:

Eine Vollmachtserklärung für den Vertreter fehle, weil das Kästchen "Einsprechenden" auf dem Vollmachtsformular nicht angekreuzt sei. Es fehle jedenfalls am Nachweis, dass der Beitretende in einem Vertragsstaat seinen Wohnsitz habe.

Es fehle der eindeutige Nachweis, dass die in Artikel 105 EPÜ genannte drei-Monatsfrist eingehalten worden sei, da auf dem Rückschein über die Zustellung der Klage der 5. Juni als Datum nicht eindeutig erkennbar sei. Auch sei die Unterschrift auf dem Zustellungsbescheid nicht mit der des Beitretenden identisch.

Die Einsprechende bezeichne die Patentinhaberin als "Hauni Maschinenbau AG", das Patent sei zwischenzeitlich aber auf die (personengleiche) Hauni GmbH überschrieben worden.

T 0384/15 - Intervention and straw man opponent

Key points

• The opponent was a straw man, intervention was later filed by two legal entities (within the same company). The patentee protested that the opponent (straw man) was already acting for the same company as now intervening. The Board decides that the interventions are admissible.
• " The board agrees with the proprietor that an intervener must be a different party to the opponent in order to be a "third party" within the meaning of Article 105(1) EPC. However, the board considers that there is no question that the interveners are "third parties", i.e. different legal entities, with respect to the opponent Santarelli SA whether or not one of Bose GmbH and Bose Limited is the principal instructing Santarelli SA." 
• "In the board's view, the same situation exists in the present case [as in T 305/08, in which case the opponent-appellant OI was alleged to be the patent department (although had an entirely different name) acting for interveners OII and OIII] . The respondent has produced evidence suggesting a relationship between the appellant and the interveners, but no proof, as admitted by the respondent, that Santarelli SA was acting directly on behalf of either Bose GmbH or Bose Limited. Further, the representatives for the appellant and the interveners expressly denied that this was the case."

EPO T 0384/15 - link

Reasons for the Decision

1. Admissibility of the opposition and the interventions (cf. respondent's requests 1.1 and 1.3)

1.1 The respondent argued that there was credible evidence that the opponent Santarelli SA was acting on behalf of one or more divisions of Bose Corporation, but had concealed this relationship. Further, all divisions of Bose, including the assumed infringers and interveners Bose GmbH and Bose Limited, were legally inextricably linked to the Bose Corporation. A requirement for an admissible intervention is that it be filed by a third party. By having chosen to protect its anonymity by filing the opposition in the name of a straw man, the true opponent has availed itself of the possibility of also intervening in the opposition proceedings because it is impossible, at least at first glance, for the EPO or any other party to ascertain whether the interveners are third parties or not. This constituted an abuse of process allowing circumvention of the law as laid out in Article 105(1) EPC. This anonymity also allowed Bose to pick and choose who they might subsequently wish to present as the true opponent, depending on circumstances, which also resulted in an abuse of process. As a consequence, the opposition filed in the name of Santarelli SA must be deemed inadmissible ex tunc. In turn, this meant that there were no pending opposition proceedings when the notices of intervention were filed by Bose GmbH and Bose Limited respectively. It followed that the interventions were also inadmissible.

T 1746/15 - Intervention not admitted

Key points

• An admissible intervention of an accused infringer in opposition, requires that "proceedings for infringement" have been instituted.
• The Board decides in this case that "selbstständiges Beweisverfahren" under German law are not such proceedings. Therefore, the intervention is not admissible. The German procedure is similar to "saisie" procedures as they exist e.g. in France, and "saisie" procedures do not make an intervention admissible according to existing case law.

Headnote
Independent evidentiary proceedings under § 485 of the German Code of Civil Procedure ("selbstständiges Beweisverfahren", also known under "Beweissicherungsverfahren" or "Düsseldorfer Verfahren") do not qualify as proceedings for infringement under Article 105(1)(a) EPC (see reasons, point 1).
T 1746/15 - link

Summary of Facts and Submissions

VII. The appellant argued essentially as follows:
Admissibility of opponent/respondent II's intervention
The independent evidentiary proceedings to which respondent II is currently subject in Germany ("selbstständiges Verfahren", also known as "Beweissicherungsverfahren" or "Düsseldorfer Verfahren"), hereafter referred to as "BSV proceedings", do not qualify as proceedings for infringement pursuant to Article 105(1)(a) EPC.
Proceedings initiated by the patent proprietor are deemed to be "proceedings for infringement" pursuant to Article 105(1)(a) EPC only where a court is called upon to establish by a ruling "whether a third party is commercially active in an area that falls within patentee's right to exclude".
This is not the case in BSV proceedings, since no facts are established by a court in the sense that the opinion provided by the expert inspecting the alleged infringing product or process is not binding for the subsequent distinct infringement proceedings to be initiated by an action.
There is no automatic or procedural link between BSV proceedings and subsequent infringement proceedings. There is no time limit for bringing the case to infringement proceedings, so that opponent/respondent II in the present case may not even be faced with an actual accusation of infringement.
Respondents in BSV proceedings are not faced with injunctions, contrary to the order in the Belgian proceedings discussed in T 188/97 (not published in OJ EPO), in which the assumed infringer is unambiguously prohibited from "releasing or alienating" in any way the infringing articles described by the expert.
In BSV proceedings, the assumed infringer is not left without any means of defence, since, according to § 494a German Code of Civil Procedure (Zivilprozessordnung, hereafter "ZPO"), it can force the patent proprietor to bring the case to infringement proceedings.
According to the Case Law of the Boards of Appeal (see T 1713/11 and T 305/08, neither published in OJ EPO), "saisie-contrefaçon" in France or "descrizione" in Italy, which are proceedings comparable to BSV proceedings, do not qualify as "proceedings for infringement" pursuant to Article 105(1)(a) EPC.
As a consequence, BSV proceedings under German law cannot be considered as proceedings for infringement within the meaning of Article 105(1)(a) EPC. Therefore, the intervention of opponent/respondent II should not be admitted.

Reasons for the Decision

1. Admissibility of opponent/respondent II's intervention

1.1 The present intervention of respondent II was filed pursuant to Article 105(1)(a) EPC, which states the following (emphasis added by the Board):

"(1) Any third party may, in accordance with the Implementing Regulations, intervene in opposition proceedings after the opposition period has expired, if the third party proves that

(a) proceedings for infringement of the same patent have been instituted against him, or..."

Hence, for an intervention to be admissible and treated as an opposition pursuant to Article 105(2) EPC, "proceedings for infringement" must have been initiated against the intervener, i.e. respondent II in the present case.

T 0614/13 - Admissibility of intervention

T 0614/13 

For the decision, click here ([C] / DE)

Key points

• The case is about admissibility of an intervention by an alleged infringer, since the three month  period of Rule 89 EPC was triggered by the serving of a writ in China of which the precise date was difficult to prove. 
• A party intervening in opposition can appeal the decision of the OD holding the intervention to be inadmissible as being late filed after the three month period of Rule 89. 
• In this case, the period of about six months between the filing of the complaint with the German court and the serving the writ in China under the 1965 The Hague Service Convention, does not change the fact that the three month period of Rule 89 started from the receipt of the writ by the defendant.  
• The case is interesting since the patentee disputed admissibility of the appeal, of the intervention, and of the documents filed as evidence of the date of serving of the writ. 
• Refusal of the remittal to the OD requested by patent proprietor and intervener (not by other opponent). 

Sachverhalt und Anträge

I. Die Beschwerde der Einsprechenden/Beitretenden Kingfa Sci. & Tech. Co. Ltd. (Beitretende) richtet sich gegen die auf die mündliche Verhandlung vom 14. Dezember 2012 ergangene Entscheidung der Einspruchsabteilung vom 22. Januar 2013. Mit dieser Entscheidung hat die Einspruchsabteilung u.a. den "… Einspruch der Einsprechenden Kingfa Sci. & Tech. Co. Ltd. … als unzulässig verworfen". Die Beitretende habe nicht hinreichend nachgewiesen, dass ihr die Klageschrift (beim Landgericht Düsseldorf von der Patentinhaberin gegen die Beitretende eingereichte Klage auf Verletzung des Streitpatents) erst am 3. Juli 2012 zugestellt wurde, und damit die Erklärung des Beitritts mit Schreiben vom 27. September 2012 rechtzeitig erfolgte.

Mit der angefochtenen Entscheidung hat die Einspruchsabteilung zugleich den Einspruch der Einsprechenden Arkema France (Einsprechende 1) zurückgewiesen. Die Einsprechende 1 hat gegen die Entscheidung der Einspruchsabteilung ebenfalls Beschwerde erhoben.

II. Mit ihrem Schreiben vom 27. September 2012 hat die Beitretende u.a. die Dokumente D 13 und D 14 vorgelegt. Danach - insoweit zwischen den Beteiligten unstreitig - hat die Patentinhaberin gegen die Kingfa Sci. & Tech. Co. Ltd. am 3. November 2011 auf der Grundlage des Streitpatents eine Verletzungsklage beim Landgericht Düsseldorf (Az: 4b O 168/11) eingereicht (D 13). Das Landgericht Düsseldorf hat dann mit Datum vom 11. Januar 2012 einen Antrag auf Zustellung der Klage an das Bureau of International Judicial Assistance, Ministry of Justice der Volksrepublik China nach dem "Übereinkommen über die Zustellung gerichtlicher und außergerichtlicher Schriftstücke im Ausland in Zivil- oder Handelsachen, unterzeichnet in Den Haag am 15. November 1965" ("Haager Zustellungsübereinkommen") gerichtet (D 14).