T 1138/11 – What Silence Does Not Mean

This decision contains some interesting paragraphs on the admissibility of a third party intervention.

[1.1] With letters of 10 and 15 August 2012 Bericap GmbH&Co. KG filed an intervention referring to proceedings before the “Landgericht Düsseldorf” which it had initiated against [the patent proprietor] for a ruling that it is not infringing the patent in suit […].

[1.2] The intervener’s submissions in respect of the patentability of the patent in suit and its claims need not be dealt with because the intervention has been found inadmissible by the Board for the following reasons.

[1.3] The formal requirements for the filing of an intervention of the assumed infringer set out in R 89, including the payment of the opposition fee, are fulfilled.

[1.4] According to A 105, any third party may, in accordance with the Implementing Regulations (R 89), 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

(b) 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.

[1.5] As decided by the Enlarged Board of Appeal (EBA) in case G 1/94, an assumed infringer of a European patent may also intervene in appeal proceedings and may base its intervention on any ground of opposition specified in A 100.

However, this decision of the EBA is silent in respect of the requirements of A 105 that need to be satisfied by the intervener.

[1.6] Since [the patent proprietor] has not instituted proceedings for infringement of the patent in suit against the intervener, the requirements set out in A 105(1)(a) are clearly not fulfilled.

[1.7] For an intervention to be admissible according to A 105(1)(b) there need to be (national) proceedings instituted by the intervener against the patent proprietor for a ruling that it is not infringing the patent.

[1.7.1] As discussed with the parties at the oral proceedings (OPs), the intervener has not sufficiently submitted nor proven that the proceedings before the District Court of Düsseldorf have actually been formally instituted.

For the question of whether and when a law suit has been instituted, the national procedural rules apply (Benkard/Schäfers, EPC, 2nd edition 2012, Article 105, para. 15).

In this respect §§ 261(1) and 167 of the German Code of Civil Procedure are relevant:

§ 261(1) ZPO: Pending suit

By the complaint being brought, the dispute shall become pending.

§ 167 ZPO: Retroactive effect of the service

If service is made in order to comply with a deadline, or to have the period of limitations begin anew, or to have it extended pursuant to section 204 of the Civil Code (Bürgerliches Gesetzbuch, BGB), the receipt of the corresponding application or declaration by the court shall already have this effect provided service is made in the near future.

[1.7.2] The intervener has only proven that it has filed a law suit according to § 261(1) ZPO for a ruling that it is not infringing the patent in suit and that the competent chamber of the District Court of Düsseldorf has ordered the service of the writ to [the patent proprietor]. However, there is no evidence that the service has actually been executed.

[1.7.3] The Board does not concur with the intervener on its interpretation of § 167 ZPO.

According to its clear wording, this provision is applicable to a case when a law suit is filed close to a deadline or a period of limitation. If the service of the writ is then executed after that deadline or period of limitation, it provides that – under certain conditions – the later service is given a retroactive effect (ex tunc) to the date of the filing of the law suit.

The intervener’s argument that the pendency of the current appeal proceedings are to be deemed as a deadline according to § 167 ZPO is legally without substance. The intervener misconceives not just the wording of that provision but also its object.

First, § 167 ZPO serves a specific purpose in a particular stage of civil proceedings before German courts that cannot be “transferred” to the distinctive procedural situation before a Board of Appeal as an international court competent for a different jurisdiction.

Second, the condition for the retroactive effect, i.e. the actual service of the writ, has undisputedly not (yet) been fulfilled, as it is still pending. For reasons of pure logic, without the proven service of the writ there is no room for a retroactive effect of it.

[1.8] Even if the proceedings before the District Court of Düsseldorf were to be considered as legally instituted proceedings, the further requirement provided for in A 105(1)(b), i.e. that prior to the institution of these proceedings the patent proprietor has issued a request to the intervener to cease alleged patent infringement, is not met.

[1.8.1] It is an undisputed fact that [the patent proprietor] has not requested the intervener to cease alleged infringement before the intervener filed the above mentioned proceedings before the District Court of Düsseldorf.

[1.8.2] The Board does not follow the intervener’s argument that this requirement is to be determined according to the relevant national law, i.e. German law.

[1.8.3] As discussed with the parties during the OPs, this requirement is an essential legal feature in A 105(1)(b) itself with no explicit or implicit reference to the national laws of the EPC contracting states; A 125 is evidently of no relevance in the current context.

Since the laws in the contracting states vary to quite an extent from one to another, this requirement needs to be applied in a harmonized manner for all contracting states. Such a harmonization can only be secured by way of an autonomous interpretation of the provisions and legal terms of the EPC by the Board.

[1.8.4] Even if there were circumstances recognized by the German civil law courts in which a prior written warning (“Abmahnschreiben”) could be dispensed with before commencing a law suit for a declaration of non-infringement of a patent, and even if the EPO and the Boards of Appeal might in their findings consider the practice of the national institution competent for a ruling that the intervener is not infringing the patent, it is for the EPO and the Boards of Appeal alone to decide whether or not a request referred to in A 105(1)(b) has actually been issued (cf. Günzel in Singer/Stauder, EPÜ, 5th edition 2010, Article 105, para. 3).

The cited decision of the German Federal Court of Justice (BGH XII ZR 20/94) speaks certainly not in favour of the intervener. It concerns the issue of the admissibility of a negative declaration for the defence of a claim for matrimonial maintenance issued for the past and therefore concerns quite a different area of law and a very particular procedural situation, both not comparable with the present case.

[1.8.5] Apart from this, the following has to be taken into account.

An intervention of a third party is treated as an opposition and this party is thus granted the status of an opponent, as an exception to the 9-month time limit for filing a notice of opposition A 99(1)). It follows from this that A 105 is to be interpreted in a restrictive manner.

[1.8.6] Consequently, it is an essential requirement for the admissibility of this intervention that [the] patent proprietor has requested the intervener to cease alleged infringement before the intervener filed the above mentioned proceedings against [the patent proprietor].

A mere warning letter from the patent proprietor, the threat of an infringement action or a warning addressed to a third party associated with the assumed infringer, or a letter addressed to the assumed infringer that the patent proprietor reserves its right to commence legal proceedings in the future cannot be qualified as the request required by A 105(1)(b). It is rather for the intervener to establish that a request to cease an alleged infringement was addressed to him (see: T 392/97 [2.2 et seq.]; T 887/04 [2.1 et seq.]; Benkard/Schäfers, EPÜ, 2^nd edition 2012, A 105, para. 15; Günzel in Singer/Stauder, EPÜ, 5th edition 2010, Article 105, para. 3).

[1.8.7] The intervener’s letters to [the patent proprietor] and the latter’s replies […] cannot be qualified as a surrogate alternative for such a request.

With its letters of 26 June 2012 […] and of 5 July 2012 […], the intervener had explicitly requested [the patent proprietor] to confirm that it would not infringe the patent in suit “with regard to the import, sale, offer for sale and/or other forms of use of the Bericap AV3-closure in Germany” and that [the patent proprietor] would refrain from initiating any legal actions based i.a. on the patent in suit against the intervener. This request can be understood as an enquiry that [the patent proprietor] should otherwise state that it requested the intervener to cease such an infringement.

However, the decisive point in this context is that these letters were sent by the intervener to [the patent proprietor] and not vice versa and, hence, cannot qualify as a request of a patent proprietor to an assumed infringer within the meaning of A 105(1)(b). In its letter of 26 July 2012 […], [the patent proprietor] explicitly refused to issue any statement at all.

Even if one could presume an economic and also a legal interest of the intervener in having a clear legal situation in respect of the patent in suit before preparing the introduction of its product on the German market, this interest eo ipso is neither sufficient to replace the prescribed request to cease infringement, nor can it force [the patent proprietor] to either issue such a request or to clear the product release intended by the intervener.

[1.8.8] The Board to the contrary follows the argument of [the patent proprietor] that it was under no legal obligation to react in whatever way. With its letters the intervener merely confronted [the patent proprietor] with a hypothetical product.

There are simply no proceedings between [the patent proprietor] and the intervener.

The patent dispute in Turkey about the so-called Bericap AV3-closure assembly is between [the patent proprietor] and [the opponent], the latter being legally independent from the intervener according to its own submission. The proceedings in Turkey also do not have any effect on patent-related issues in Germany.

The intervener’s indication that it intended to place i.a. that assembly on the German market, also cannot qualify as such.

As a consequence, there was no need nor obligation for [the patent proprietor] to express itself on an abstract question of infringement and/or to issue a request to cease such a hypothetical infringement. Accordingly, the fact that [the patent proprietor] did not comply with the intervener’s request cannot be judged as a substitute for the request to cease infringement as required in A 105(1)(b).

[1.9] Therefore the intervention is to be rejected as inadmissible.

[1.10] As far as the intervener has paid not just the opposition fee in accordance with R 89(2), 2^nd sentence EPC but also an appeal fee, the latter was paid without legal basis (G 3/04 [11]). Consequently, the appeal fee is to be reimbursed ex officio.

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