This is an appeal against the revocation of the opposed patent.
In this case the opposition had been withdrawn on July 16, 2010, about two years of the beginning of the proceedings (August 6, 2008) but about a year before (on October 7, 2009) the withdrawal a third party (JDC) had declared its intervention. The intervention was based on a “Privatanklage” raised against the intervener on behalf of Street Surfing LLC before the Landesgericht für Strafsachen Wien on 7 July 2009. This “Privatanklage” (which under Austrian law is a request or complaint for instituting criminal proceedings) alleged a wilful infringement of European patent 1 511 541 of which Street Surfing LLC was the exclusive licensee for Austria. The Landesgericht Wien dismissed the “Privatanklage” on 5 August 2009 as manifestly flawed.
The Opposition Division (OD) considered that the intervention by JDC was admissible and that the subject-matter of claim 1 as granted could not be carried out and added unallowable subject-matter. Furthermore none of the auxiliary requests were found to overcome the objections based on A 123. The OD, therefore, revoked the patent.
The decision contains an interesting discussion of the admissibility of the intervention by JDC:
[2.1] A number of arguments have been raised by the patentee both in opposition and on appeal why the above intervention by JDC should be held inadmissible, namely:
- Intervention under A 105 should be limited to civil proceedings, and criminal proceedings under Austrian law did not provide for injunctive relief or damages;
- Proceedings should be pending at the time the intervention was raised;
- The “Privatanklage” was rejected a limine and therefore deemed never to have existed or “instituted”;
- Neither “Privatanklage” nor dismissal thereof were officially communicated to the intervener;
- Abuse of process due to ownership interests of JDC in Street Surfing LLC (or vice versa).
The patentee in this respect remarks that the Austrian proceedings “were incorrectly filed as criminal proceedings and were procedurally flawed, lacking the requisite evidence and basis and being directed to an association rather than a natural person”, and for its view of inadmissibility further relies upon the travaux préparatoires and a statement of the Austrian law firm Schwarz Schönherr. During oral proceedings, the patentee further advanced the argument that proceedings according to A 105 required a two-party procedure in order to avoid conflicting decisions. Thus, two parties should be involved. This was clear from decisions T 305/08 and T 452/05. In the case at issue, no proceedings were instituted because the judge dismissed the case without involvement or notification of the other party. Thus, there was no date for calculating the time period under R 89(1), and consequently these proceedings would not be eligible for triggering an intervention. In the absence of an official notification, no intervention could be made.
[2.2] A 105 establishes a link between national laws of the Member States and the EPC in that it allows a party to intervene in ongoing opposition proceedings after expiry of the opposition period if faced with an infringement action or allegation of infringement which can only be instituted in a national jurisdiction under national law. As the EPC must accommodate for different national proceedings in its Member States, current and future, it can give no specific definition of what constitutes proceedings for infringement but can only refer to infringement in the broadest of terms. Furthermore, it is clear that intervention was conceived as a procedurally exceptional situation, which is justified only by a substantial legitimate interest of the assumed infringer to enter the opposition proceedings. This substantial legitimate interest does not arise from the fulfilment of special procedural provisions, but from the fact of actually having been confronted with infringement proceedings (or at least having been called upon to cease an alleged infringement seriously enough so as to justify a counteraction). Given this exceptional nature of the intervention, it does not appear likely that there would have been a legislative intent to create an elaborate and intricate system of procedural provisions for the admissibility of interventions, and therefore the Board should also refrain from creating such a system through its jurisprudence. Rather, it appears preferable to concentrate on the examination of the substantive conditions for admitting an intervention, namely whether the action of the proprietor reaches the level which is sufficient to establish a substantive legitimate interest to intervene. The fulfilment of the requirements of R 89(1) should be examined similarly, concentrating on the legislative intent instead of creating further procedural preconditions.
[2.3] A 105(1) draws up two scenarios: First, “proceedings for infringement of the same patent have been instituted against” the intervener, and, second, “the proprietor of the patent has requested that [the intervener] cease alleged infringement of the patent and that [the intervener] has instituted court proceedings for a ruling that he is not infringing the patent.” In the first case, the right to intervene rests upon “proceedings for infringement”, in the second case, on proceedings for ascertaining non-infringement. The first option is more broadly worded. It does not require “court” proceedings, or a request by the patentee to cease and desist the allegedly infringing behaviour. But it does require the patentee to take the first step.
[2.4] As the patentee rightly points out, not any step will do. The patentee in this respect particularly points to the decision T 305/08. Here, the Board held that nullity proceedings concerning the patent at issue are not proceedings that could lead to the determination whether the patent was infringed, and would thus not qualify. The Board found the same also for saisie-contrefaçon proceedings, and in this respect held the following:
“[1.3.5] As regards the fact that a “saisie-contrefaçon” (seizure procedure) in Zaragoza/Spain had been instituted earlier, it is stated in A1 […] that this procedure does not constitute infringement proceedings. In order to find the correct definition of infringement proceedings in the sense of A 105 reliance has to be placed on the specific national law. The respondent provided no evidence which could lead to a contrary interpretation under Spanish national law than that given in A1.[1.3.6] OT2 is an order regarding the findings of a seizure procedure according to a Court resolution of 29 December 2006 […] providing conclusions as to the patent of the present appeal […] stating that “we cannot determine if there exists hints of a potential violation as the information is not sufficient...”. In accordance with Article 130 of the Spanish Patents Act […], it is evident that the procedure does not simply continue as though an infringement action has been brought, but that a new procedure must commence. In as far as concerns Article 130 of the Spanish Patents Act […] a judge must indeed order the opening of a separate file in cases where “the Judge considers that it is not presumable that the devices inspected serve to execute the violation of the patent.” The case relating to OT2 is therefore also not proceedings which correspond to A 105(1)(a) or (b).”
[2.4.1] The Board however fails to see how decision T 305/08 could assist the patentee. Decision T 305/08 aims to distinguish proceedings for infringement from other proceedings that may concern the patent at issue but are not aimed at ascertaining whether there is infringement or not. To this end, the present board would agree with T 305/08 that the “saisie contrefaçon” is such a procedure. In countries where the saisie exists, it is not a procedure for ascertaining infringement, but for preserving evidence: “As a preliminary measure prior to an infringement action, the saisie contrefaçon … allows for a surprise inspection and...does not depend on the likelihood of success in the main action … the applicant may proceed with a request for saisie even on the basis of a patent that takes no effect in France...This is completely consistent with the saisie-contrefaçon being a provisional measure meant to preserve evidence....” (L. Petit, The Enforcement of Patent Rights in France, in: Heath/Petit, Patent Enforcement Worldwide, IIC Studies 23, Hart Publishing 2005, 152/153). The same holds true for the Italian descrizione: “The “description” is an order granted by the President of the competent court authorising the plaintiff … to inspect and describe the allegedly infringing products/processes … The aim and use of this procedure is to collect official evidence of infringement for the purpose of using it in the trial” (G. Casucci, The Enforcement of Patent Rights in Italy, in: Heath/Petit, Patent Enforcement Worldwide, IIC Studies 23, Hart Publishing 2005, 196/197). The decision T 305/08 points to the same situation for Spain.
[2.4.2] The patentee could have further pointed to decision T 223/11. Here, the patentee had instigated proceedings before the National Authority of Medicines and Health Products and the Ministry of the Economy and Innovation in Portugal in order to prevent the defendants from issuing a marketing authorisation to the intervener. While the Board appreciated that a ruling in this case could have adverse commercial effects on the marketing position of the intervener, it found that in making a ruling on this issue, the Lisbon Administrative Court did not have to rule on the issue of infringement:
“Although the present board appreciates that these proceedings can obstruct the intervener’s possibilities of (future) market entry with an allegedly infringing product, it is neither the patent proprietor’s claim nor the court’s assessment that the intervener is in fact infringing the patent. The court is rather assessing that the granting of the marketing authorisation opens up the possibility for a future infringement.It is internationally a widely accepted principle that the submission of a request for a marketing authorisation for a pharmaceutical product by a generic company does not constitute patent infringement (the so-called Bolar exemption). The EU Council and the EU Commission have for instance adopted the following common position: “The Council and the Commission consider that the submission and subsequent evaluation of an application for a marketing authorisation as well as the granting of an authorisation are considered as administrative acts and as such do not infringe patent protection” (Official Journal of the European Union 2003, C 297 E/66, footnote 1).The principle behind the Bolar exemption is that generic companies should be in a position to take the necessary preparatory measures in order to be able to enter the market without delay once patent protection expires.The Portuguese legislator has in the meantime codified this principle in law No. 62/2011 of 12 December 2011. This law entered into force after the judgement of the Administrative Court was rendered. However, this circumstance does not mean that prior to the promulgation of the new law the proceedings instigated by the patent proprietor, no matter how obstructive these may have been to a future market entry of the intervener’s product, can be considered as equivalent to infringement proceedings.The present board thereby notes that according to the judgement of the Administrative Court, one of the intervener’s arguments, in line with the Bolar exemption, was that it “has the right to undertake the preliminary and preparatory steps so as to be in a position to sell the medicinal products the day after the industrial property rights held by the Plaintiff lapse”. It can therefore not even be established by the board that the intervener had the actual intention of bringing its product onto the market while the patent was still in force.Thus, as the proceedings before the Lisbon Administrative Circuit Court cannot be considered to be infringement proceedings, the intervention is inadmissible.” (reasons  of the decision)
The Board in the above case therefore examined whether the proceedings in substance amounted to infringement proceedings, and denied this, because the question of infringement was not determinative on the outcome of the case.
[2.5] It is not apparent to the Board why the definition of “proceedings for infringement” should be limited to civil proceedings, to proceedings that allow for certain remedies to be claimed, or two party proceedings. This is all the less so, given that A 105 has to be read onto national infringement proceedings of all Member States with often widely different national systems of ascertaining infringement of patents. It would therefore seem inappropriate to give A 105 a particular interpretation that might be tailored to national infringement proceedings in some Member States, but not in others. On an international level, the WTO/TRIPS Agreement ratified by all EPC Member States in Part III (Arts. 41 - 61) lists civil (Arts. 44 - 47), administrative (Art. 49) and criminal (Art. 61) proceedings in order to ascertain infringement, and mentions a wide variety of possible remedies. Apart from injunctive relief (Art. 44), there are damages (Art. 45) and “other remedies” (Art. 46). Remedies specified in cases of criminal enforcement are imprisonment and/or monetary fines. Mention of criminal procedures against infringement in Art. 61 TRIPS is thus indicative of the fact that this is one recognised way of enforcement (optional in the case of patents, but listed nonetheless). The patentee’s argument made in this respect that A 105 required proceedings between two parties (which criminal proceedings often are not) in order to avoid conflicting decisions (presumably between the national courts and the EPO) is not supported by the text of the provision. This argument is also difficult to sustain in light of the fact that if this had indeed been the intention behind the provision, then why does it mention only “proceedings for infringement” but not “proceedings for invalidation”? After all, national proceedings for invalidation on the one hand and opposition/appeal proceedings under the EPC on the other may well lead to conflicting results. Apart from that, infringement proceedings are meant to ascertain the question of infringement and not necessarily validity of the patent, which is what is investigated in opposition/appeal proceedings before the EPO.
[2.6] It therefore seems to the Board that as long as a patentee (or any other party entitled to do so) initiates proceedings meant to establish whether a third party is commercially active in an area that falls within the patentee’s right to exclude, such proceedings are “proceedings for infringement” in the sense of A 105. In the case at issue, the licensee of the patent at issue on 7 July 2009 raised a criminal complaint against the intervener alleging wilful infringement of the patent at issue. It is clear that in the course of these proceedings, the issue of whether the patent was infringed must be determined. Sec. 159 Austrian Patent Act that is the basis for criminal enforcement of patent infringement starts with the words: “Wer ein Patent verletzt....” (whoever infringes a patent). Thus, the criminal proceedings at issue were “proceedings for infringement” according to A 105.
[2.7] The patentee further argues that in order for a party to intervene under A 105, the proceedings for infringement must still be pending at the time the intervention is declared. The patentee in this respect relies on decisions G 4/91 and G 1/94 of the Enlarged Board of Appeal. These decisions for good reason require pending opposition proceedings for an intervention. But why “the same must be true vice versa for infringement proceedings”, as is argued by the patentee, is not apparent. While opposition proceedings before the EPO cannot be “reopened” due to the advent of an intervener, the Board sees no good reasons to require infringement proceedings still to be pending at the time of intervention. It is sufficient that the patentee has made its move in claiming that there is infringement and that such infringement will be sanctioned. If the Board were to agree with the patentee’s line of argument, it would mean that the possibility of intervention was not only limited by the three-months period as stipulated by the provision itself, but by an additional condition, namely the pendency of such proceedings. The Board sees no cogent reasons why this should be so, quite apart from the fact that the wording of A 105(1) or R 89(1) also does not suggest this in any way.
[2.8] Finally, the patentee argues that in order to intervene, the infringement proceedings must have been officially communicated to the intervener, which was not the case here. In fact, the patentee’s arguments seem to be two-fold: First, as long as there was no communication of the proceedings to the accused, proceedings have not been “instituted”, and second, absence of such communication does not entitle a party to intervene in the first place.
[2.9] In support of its first argument, the patentee mentions two points. First, that the terminology used for an Austrian “Privatanklage” does not correspond to the term “erhoben” in the German language version of the EPC. Given the fact that A 105 must be applied to the national legal systems of all Member States (with a corresponding multitude of languages and legal terminology), and must read on civil, criminal and administrative proceedings, and on interim and ordinary proceedings alike, the Board does not find this argument convincing. Second, that proceedings have only been “instituted” once they have been communicated to the intervening party. Here again, one must refrain from determining rules that may be suitable for some countries or for some kinds of proceedings, but not for others. Rather, the Board should be satisfied that the person bringing these proceedings has done everything for the proceedings to take their course.
For example, while in some countries it may be necessary in civil proceedings that the plaintiff serves the writ to the defendant, in other countries, the court will do so. In criminal and administrative proceedings, the authorities may act ex officio upon a complaint. Equalling the instituting of proceedings with a service of the writ to the defendant (or accused) is therefore not a necessary given. Neither is it a necessary consequence of the intervener’s obligation to provide proof of the infringement proceedings, see below [2.10].
[2.10] In support of its second argument, the patentee relies upon decision T 452/05 (“Senseo”, by the present Board in a different composition). The relevant passage of this decision reads as follows:
“[1.2] A 105 requires an intervention to be made within “three months of the date on which the infringement proceedings were instituted”.In this case, three dates could possibly have triggered the three months period: 29 November 2004, when the request for an interim injunction was made, 29 December 2004, when the request was granted, or 17 January 2005, when the injunctive order was served upon the opponent 6.In the board’s view, only the date when the order was served upon the opponent 6, i.e. 17 January 2005, should be the decisive point in time, as only from that date onwards could the opponent provide evidence of the proceedings that entitled it to intervene.”
Thus, the Board in “Senseo” was concerned with how the three-months period should be calculated, not the question of whether an intervention was possible despite the lack of an official communication to the intervener. To the extent that A 105 requires proof of infringement proceedings having been instituted, such proof must be available to the intervener. In the absence of an official notification, the EPO cannot assume that the intervener has obtained knowledge of the proceedings, let alone require proof of such proceedings. But should the intervener have obtained knowledge of such proceedings despite a lack of communication, the Board sees no reason why the intervener should then not be entitled to intervene. Clearly, a party entering proceedings later is undesirable from a procedural point of view.
Thus there is an overriding general interest that once an intervention becomes possible, it should then also be filed as soon as possible, in order to prevent any further delays of the opposition proceedings. This is exactly the purpose of the time limit of R 89(1) (see also T 296/93 [2.3], also referring to the “travaux preparatoires”). It is another matter that the time limit can only start to run once the alleged infringer has actually become aware of the institution of the infringement proceedings. An interpretation, according to which the intervener must under all circumstances wait for the time limit of R 89(1) to start, would squarely contradict the very purpose of this rule. That the actual starting of a time limit for performing a procedural act is in itself no procedural prerequisite of the given procedural act is not unknown to the EPC. Decision T 389/86 allowed the filing of an appeal even before the appellant had officially received the decision of the OD. Official notification that infringement proceedings have been instituted is thus no requirement for an admissible intervention.
[2.10.1] In the case at issue, the criminal complaint was dated 7 July 2009. The intervention was notified to the EPO on 7 October 2009, and the opposition fee paid on the same day. Regardless of when the three-months period for the intervention should start - possibly influenced by the fact that the criminal complaint was not notified to the intervener - R 89(1) has been complied with, because the intervention was filed within, i.e. before the expiry of three months of the date on which the infringement proceedings were instituted. The fact that this three-months time limit may not yet have started to run at the time when the intervention was filed, because the intervener had not been officially notified, is immaterial to this finding.
[2.11] Allegations that the criminal proceedings were instituted by the patentee’s licensee entitled to enforce the patent in Austria as an abuse of process and due to some sort of collusion between the licensee and the intervener were no longer upheld during oral proceedings. Already in the annex to the summons, the Board had given its preliminary view that it thought these allegations were insufficiently proven.
[2.12] The Board therefore comes to the conclusion that the intervention by JDC is admissible and that the decision of the OD was correct in this respect.
The appeal was finally dismissed.
NB: The Board also provided take-away headnotes:
1. Intervention is conceived as a procedurally exceptional situation which is justified only by a substantial legitimate interest of the presumed infringer to enter the opposition proceedings. On deciding admissibility of an intervention it is preferable to concentrate on whether the action of the proprietor reaches the level sufficient to establish a substantive legitimate interest to intervene (reasons [2.2] and [2.6]).
2. As long as a patent proprietor or any other party entitled to do so initiates proceedings meant to establish whether a third party is commercially active in an area that falls within the patent proprietors right to exclude, such proceedings are "proceedings for infringement" in the sense of A 105.
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