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Status of assumed infringers intervening in appeals (G2/24 referral)
There has been a new referral to the European Patent Office’s Enlarged Board of Appeal which may result in a broadening of the rights afforded to assumed infringers who intervene in opposition proceedings during the appeal stage.
Background
Article 99 EPC allows any interested party to oppose a granted patent, namely by filing a reasoned Notice of Opposition and paying the EPO’s opposition fee within 9 months of the Decision to Grant. Article 105 EPC effectively extends this period, although only for parties that have been accused of infringement of the patent.
Article 105 EPC allows such an “assumed infringer” to request an intervention in existing opposition proceedings within 3 months of either the patentee instituting the infringement action or the accused infringer instituting proceedings for a ruling that they do not infringe. The assumed infringer must also file a notice of opposition and pay the EPO’s opposition fee within the 3 month period.
An allowable request sees the assumed infringer become an opponent with the same rights as the other opponent(s). The assumed infringer may raise any grounds of opposition, including those not previously raised, as well as submit new prior art documents and arguments.
The assumed infringer also has the right to appeal the decision of the Opposition Division, subject to the usual provisions of Article 107 EPC. This article says: “Any party to proceedings adversely affected by a decision may appeal. Any other parties to the proceedings shall be parties to the appeal proceedings as of right.” To be adversely affected requires a party to have one of their requests refused by the Opposition Division, e.g. an opponent who requests revocation of the patent, but sees the patent maintained.
Matters get more complicated when a party is accused of infringement after the Opposition Division has issued its decision. The Enlarged Board of Appeal has previously decided that an assumed infringer could intervene when appeal proceedings are pending (as this effectively means that the opposition proceedings are continued – G1/94).
A more recent decision ruled that an assumed infringer intervening during appeal proceedings can be conferred the status of an opponent but not that of an appellant (G3/04). This was based on the conclusion that the first sentence of Article 107 EPC required an appellant to have been a party to the proceedings leading to the decision: an assumed infringer could not meet this requirement as they intervened after the decision had been issued. Consequently, such an assumed infringer could only become a party as of right within the sense of Article 107 EPC.
This can become an important distinction when an appeal is withdrawn. If all appeals are withdrawn, then the Board of Appeal must terminate proceedings and the decision of the Opposition Division becomes final. When there are multiple appellants, any particular appellant is safe in the knowledge that the appeal proceedings will continue as they have not withdrawn their appeal. On the other hand, the existence of parties as of right makes no difference to the termination of the proceedings. So a party as of right has no power to continue with appeal proceedings after all appeals have been withdrawn.
G3/04 concluded that because the assumed infringer was a party of right rather than an appellant, the appeal proceedings could not be continued after the withdrawal of the sole appeal by the other opponent.
The current appeal (T1286/23)
The circumstances of the current appeal case are very similar to those of G3/04. Foreo AB’s patent was opposed by Beurer GmbH who requested revocation of the patent. At oral proceedings before the Opposition Division, the patent was maintained in amended form. Beurer subsequently appealed, again seeking revocation.
Foreo had sent Geske GmbH & Co KG a warning letter that included a threat of legal action in respect of alleged infringement. Geske subsequently filed a request for a declaration of non-infringement, and used this as basis to intervene in the appeal proceedings. The request to intervene included a Notice of Appeal, Grounds of Appeal and payment of the Appeal fee.
The Board of Appeal scheduled oral proceedings for June 2024, but Beurer withdrew their appeal before this date. The Board of Appeal continued with the oral proceedings where they discussed whether Geske could be considered an appellant such that the appeal proceedings could be continued, and whether a referral to the Enlarged Board of Appeal was needed to answer this question.
The Board concluded that Article 107 EPC did not appear to have been drafted with any consideration of interventions during appeal proceedings, and so there is a lack of clarity. The Board also noted that a consequence of G3/04 is an imbalance between the positions of the patentee and the assumed infringer. A patentee is in control as it is they who choose when to start an infringement action, and so can avoid or reduce the issues of an intervention. If the patentee waits until after the Opposition Division issue their decision, the assumed infringer would be left in a weaker position because G3/04 says that they cannot appeal.
The Board noted that Article 105 EPC creates a fiction in that the assumed infringer becomes an opponent because they are deemed to have filed their opposition within the allowed 9 month period. The Board suggested that this fiction could be extended to assumed infringers intervening in appeal proceedings, in which case they too would be deemed to have filed their oppositions in the allowed 9 month period. It follows that they can then be deemed a party to the proceedings leading to the decision.
Whether the assumed infringer could meet the requirement to be adversely affected by the decision of the Opposition Division was also considered. The Board noted that an assumed infringer must not be happy with the decision of the Opposition Division if they are intervening and so can be deemed to be a party adversely affected by the decision.
The Board considered that Geske could be regarded as an appellant and so the appeal proceedings could continue. However, the Board believed this was in conflict with G3/04 and so concluded that a referral to the Enlarged Board of Appeal was justified. The following questions have been referred:
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?
Takeaway
We will of course provide further updates of this referral. In the meantime, any assumed infringer considering whether to file a request to intervene during appeal proceedings should be more encouraged to do so. Any patentees should still weigh up the pros and cons of approaching an assumed infringer when their patent is under opposition, while appreciating that an accused infringer may be more willing to intervene and may gain new powers to continue appeal proceedings.