Thursday, 12 November 2009

T 898/07 – Intervention Made Possible By Summons to Take a Licence

[...] According to A 105(1)(b) EPC, any third party may intervene in opposition proceedings if the third party proves that following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for a ruling that he is not infringing the patent. The documents filed by the [intervening party] establish that the patentee has repeatedly expressed the opinion that the activities [of the intervening party] did violate a plurality of patents, including the opposed patent, and has summoned it to enter into licence negotiations, invoking pending infringements proceedings against third parties. [2.1]

Therefore the intervening party has been summoned by the patentee to refrain from the alleged patent infringement by contractual licensing and thereby to commute unlawful action (patent infringement) into lawful action (licensed use). This fulfils the first condition of A 105(1)(b), which provision, according to its wording, not only covers the summons to cease using the invention but also in general the summons to stop the alleged patent infringement. He who takes a licence also henceforth stops infringing the patent. [2.2]

The [intervening party] has also provided evidence that it has taken action, before the Tribunale di Roma, for a declaratory judgment that it is not infringing the patent and that the notification (Zustellung) of this action, which is not contested by the patentee, cannot have taken place before May 21, 2008. Thus the three months time limit under R 89 has been complied with. In this context it is irrelevant that the evidence for the fact that the action also concerns the opposed patent has only been provided after expiry of the three month time limit. [2.3]

To read the whole decision (in German), click here.