T 1713/11 – Back To Basics

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In this case the opposition had been withdrawn on July 16, 2010, about two years of the beginning of the proceedings (August 6, 2008) but about a year before (on October 7, 2009) the withdrawal a third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 [2] 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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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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T 1196/08 – Romanian Rhapsody

The present decision deals with an interesting case of third party intervention.

The patent proprietor had extended its European patent to Romania. The patent was opposed, but the Opposition Division rejected the opposition (in 2008). The opponent filed an appeal against this decision. In February 2009, a Romanian company (SC Gedeon Richter Romania SA, hereinafter referred to as “SC”) filed a notice of intervention. The patent proprietor had indeed instituted infringement proceedings in Romania on November 26, 2008. The question to be answered by the Board was whether this intervention was admissible or not.

NB: The would-be intervener also requested the Board to refer questions to the Enlarged Board of appeal (EBA) and raised a R 106 objection because the Board had not heard the European Patent Organisation and the State of Romania on the topic to be decided.

*** Translation of the French original ***

[3.1.1] Subject to certain conditions, A 105(1)(a) and R 89 allow a third party to intervene in opposition proceedings after the opposition period has expired, if the party proves that proceedings for infringement of the same patent have been instituted against it.

[3.1.2] In the present case, the declaration of intervention has been filed during the opposition appeal proceedings, which is admissible according to decision G 1/94 of the EBA.

[3.1.3] Moreover, in order for an intervention to be admissible, the infringement proceedings have to be based on the very patent which is the subject of the proceedings at which the intervention is directed (see T 338/89 [4.1.2] and T 446/95 [2.1]).

[3.1.4] Therefore, it is appropriate to first clarify what is the subject of the present European opposition proceedings in application of the European Patent Convention (hereinafter referred to as “Convention”).

A 99(1), first sentence, EPC, provides that within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the EPO of opposition to that patent. The Convention defines the notion of “European patent” in A 2(1) EPC 1973, which states that patents granted under the Convention shall be called European patents. According to A 3 EPC 1973, the grant of a European patent may be requested for one or more of the contracting states. Therefore, the opposition proceedings concern a European patent which has been granted for at least one contracting state. However, it is irrelevant for the opposition proceedings if the effects of this patent have been or will be extended. This clearly follows from R 84(1) according to which the opposition proceedings may be continued only at the request of the opponent if the European patent has been surrendered in all the designated contracting states or has lapsed in all those states.

This is why the Board concludes that “the same patent” [French version : ce brevet] within the meaning of A 105(1)(a) is a European patent within the meaning of A 2(1) EPC 1973, i.e. a patent granted under the Convention for one or more of the contracting states, which is, as underlined by the [patent proprietor] a system of law for the grant of patents for invention that is common to the contracting states, pursuant to A 1 EPC 1973. Consequently, the infringement proceedings before national jurisdictions have to be instituted based on a European patent which has been granted under the Convention for at least one contracting state if the conditions of A 105(1)(a) are to be fulfilled.

[3.1.5] In accordance with the evidence filed by the SC company, the infringement proceedings before the Romanian court are based on Romanian patent RO/EP 1108424 which has been obtained by extension of the European patent to Romania.

[3.1.6] The SC company is of the opinion that the Romanian patent resulting from an extension of a European patent has to be considered to be the same patent as a European patent granted under the Convention because the fact that Romania was not party to the EPC at the relevant date only constitutes a difference in view of the legal basis of the effects of the European patent, and not a difference in view of the fact that it is still (encore) a European patent. (NB: The whole sentence is unclear in the French original.)

The Board does not share this opinion, for the following reasons.

[3.1.7] The extension of the effects of European patents to Romania was possible as from October 15, 1996, i.e. the date on which the Agreement between the Government of Romania and the EPO on cooperation in the field of patents (“Cooperation Agreement”) entered into force (see OJ EPO 1994, 746 and 1996, 601).

The Cooperation Agreement is part of the international agreements which the President of the EPO is empowered to conclude subject to the approval of the Administrative Council (A 33(4) EPC 1973). As a bilateral ordinance, the Cooperation Agreement essentially deals – exhaustively and strictly separately from the EPC – with matters pertaining to the integration of extended European applications and protective rights into the national law of the state allowing (autorisant) the extension and their relationship to national applications and rights based on the national Law on industrial property (see, for example, J 14/00 [1.3.2]).

[3.1.8] The extension system provides European patent applicants with a simple and economical means of obtaining patent protection in the states for which a Cooperation Agreement with the EPO has entered into force (states allowing the extension) (see, for instance, “Extension of European patents to Romania”, OJ EPO 1994, 746, (EEPR1), second paragraph, “Extension of European patents to Slovenia”, OJ EPO 1993, 574, (EEPS1) third paragraph, and OJ EPO 1994, 75, (EEPS2), I. Basic principles, second paragraph). Upon request of the applicant and subject to the payment of the prescribed fee, the effects of European patent applications (direct and Euro-PCT applications) and European patents extend to the state allowing the extension, which, however, is not party to the EPC. These effects are the same as those of national applications and national patents (see, for instance, “Extension of European patents to Romania”, OJ EPO 1996, 601, (EEPR2), points 8 and 9, and articles 4 and 5(1) of the Romanian extension ordinance (EO); EEPS2, I. Basic principles, second paragraph, and article 1 of the EO of the Slovenian government, OJ EPO 1994, 80).

As underlined by the [patent proprietor], the extension system may be considered to be an intermediate step for a state before it becomes a party to the Convention. This also follows from the preamble of the Romanian Cooperation Agreement, which stipulates that Romania, whishing to become a party to the EPC, wishes, as an intermediate step, to have a system allowing to extend the effects of a European patent to its territory (extension system).

[3.1.9] Although the extension proceedings essentially correspond to the system provided by the EPC, which is applicable to the states that are party to the Convention, the validity of the extension system is not based on the direct application of the EPC but exclusively on national law inspired by the EPC (see, for instance, EEPR2, point 15; EEPS2, I. Basic principles, second paragraph; J 14/00 [1.2.2]; J 9/04 [1.2.2]; J 2/05 [1.2.2], Singer/Stauder, EPÜ, fifth edition in German, 2010, article 2, point 9). As a consequence, the national law of the state allowing the extension governs the extension proceedings and the legal effects of the extension. As a matter of fact, the legal provisions governing the extension system in Romania, including all the conditions and all the legal effects of the extension, appear in the Romanian EO “Monitorul Oficial al Rômanei, Anul VIII, n° 195, August 21, 1996, 2, 4”, i.e. in an ordinance of the government of the state allowing the extension (see EEPR2, second paragraph).

[3.1.10] As far as the applicability of the EPC is concerned, the provisions of the Convention, of its implementing regulations and of the rules relating to fees of the EPO apply only to the extent to which the national provisions refer to them (see, for instance, article 10 of the Romanian EO and article 10 of the Slovenian EO; EEPR2, point 15; Singer/Stauder, op.cit., article 79, point 40). The wording of the Romanian EO makes it very clear that its references to the provisions of the Convention are exhaustive (see also J 14/00 [1.3.1]) on the subject of the Slovenian EO). According to the Romanian provisions, the only references to the EPC concern the time limits and the means of payment of the extension fee (see article 3 of the Romanian EO and EEPR2, point 15).

[3.1.11] It follows from what has been said that the European patent under consideration extends to the Romanian territory exclusively on the basis of Romanian national law and that, according to article 5(1) of the EO, it has the same effects as a national patent (see also EEPR2, point 9).

However, as explained by the SC company, the European patent under consideration the effects of which extend to Romania is not a national patent granted by the Romanian national office. This legal evaluation is based on the wording of certain provisions of the EO, such as for example articles 5(1), 8, and 9, according to which a distinction is made between a European patent the effect of which extends to Romania and a national patent (see also EEPR2, points 9, 12, and 14). In the present case, the facts, therefore, differ from the facts on which decision T 446/95 was based, so that the latter is not relevant for the present case.

[3.1.12] As for the European patent within the meaning of article 2(1) EPC 1973, it is granted under the Convention by the EPO, for each of the contracting states that are designated pursuant to A 79 EPC 1973. Once it is granted, a European patent has, in each of the contracting states for which it is granted, the effect of a national patent granted by that state (A 2(2) and A 64(1) EPC 1973). It follows that the European patent system, including the effects of a European patent in the contracting states, is based exclusively on the direct application of the EPC.

[3.1.13] Although there are some parallels between the extension system and the European patent system, there are some fundamental differences between those two systems. The extension system, including all the conditions for and all the legal effects of the extension, is exclusively based on the application of national law, unless there are explicit references to the EPC. Moreover, the European patent system and the effects of a European patent in the contracting states are exclusively based on the direct application of the EPC, it being understood that some provisions of the EPC refer to national law. Therefore, it follows from the extension of the effects of a European patent under the national law of the state allowing the extension that the European patent has the effects of a national patent, whereas the designation made pursuant to A 79 EPC 1973 has the consequence that the European patent is granted by the EPO based on the Convention, with effect for the designated contracting states (see Singer/Stauder, op.cit., article 79, point 40). In view of this different legal situation, the Board concludes that a patent extended to the territory of a state allowing the extension is not a European patent within the meaning of A 2(1) EPC 1973. It may well be that the Romanian patent resulting from the extension has its origin in a European patent application and, subsequently, in the European patent granted on the basis of this application in accordance with the Convention, but, even if this were admitted, it follows from the legal situation explained above that the extension and the legal consequences resulting from it are exclusively based on national law. As a consequence, the patent resulting from the extension does not have the legal nature of a European patent within the meaning of A 2(1) EPC 1973.

[3.1.14] According to the Board, as far as the present case is concerned, it follows that Romanian patent RO/EP 1108424, which has been obtained by extension to Romania of the European patent under consideration and which is the subject of the infringement proceedings before the Romanian court, is not a national patent granted in Romania. The Board also concludes that the Romanian patent is exclusively based on national law, i.e. on Romanian law, and not on the Convention. In other words, the Romanian patent is not a patent that has been granted by the EPO for Romania, in application of the Convention. This is why the Board is of the opinion that the Romanian patent is not a European patent within the meaning of A 2(1) EPC 1973. As a consequence, Romanian patent RO/EP 1108424 does not correspond to European patent EP 1108424, which is the subject of the present opposition appeal proceedings. Consequently, the intervention does not satisfy one of the requirements of admissibility enshrined in A 105(1)(a). (see point [3.1.3] above).

[3.1.15] Moreover, the provisions of the Romanian EO do not refer to the provisions of A 105. The references of the Romanian EO to the provisions of the EPC being exhaustive (see point [3.1.10] above), the question of whether A 105 can be applied by analogy does not even arise.

[3.1.16] The SC company invokes the Treaty on European Union (TEU) and the TRIPS (Trade-Related aspects of Intellectual Property rights) Agreement and requests that articles 23 and 49 TEU and articles 41(2) and 49 of the TRIPS Agreement be taken into consideration when the applicability of A 105 is interpreted.

The Convention is a system of law, common to the contracting states, for the grant of patents for invention (A 1 EPC 1973). It constitutes a special agreement within the meaning of article 19 of the Paris Convention for the Protection of Industrial Property and a regional patent treaty within the meaning of article 45 PCT (see the third paragraph of the preamble of the Convention). The Convention does not come under Community law (see EPÜ, Münchner Gemeinschaftskommentar, 1998, article 1, III, 1.a))

The European Patent Organisation is not party to the TRIPS Agreement (see G 1/97 [5a]). However, the provisions of this agreement, very much like decisions of the European and international Court of justice and national decisions, are to be taken into account by the Boards of appeal, which nevertheless are not bound by them (G 2/02 and G 3/02 [8.6]; T 1173/97 [2.2]) However, the EBA has also declared:

“Whereas it is legitimate for the boards of appeal to use the TRIPS Agreement as a means to interpret provisions of the EPC which admit of different interpretations, specific provisions of TRIPS cannot justify ignoring express and unambiguous provisions of the EPC. To do so would usurp the role of the legislator.” (G 2/02 and G 3/02 [8.6])

The Board is of the opinion that these considerations also apply for the TEU.

The Board has explained (see points [3.11-15] above) that the provisions of the Convention as it stands and in particular A 105, as well as the national provisions of the Romanian EO clearly exclude the possibility of intervening in the proceedings based on infringement proceedings concerning a Romanian patent resulting from the extension of a European patent to Romania. Therefore, it is not possible to come to a different conclusion based on the provisions of the TEU or the TRIPS Agreement. On the contrary, it is up to the competent lawmaker to provide the possibility of intervening in such a situation.

[3.1.17] The SC company has also pointed out that it had interest to act against the Romanian patent resulting from the extension because of the proceedings pending before the Romanian court, and in particular in having the nullity proceedings stayed until the outcome of the present appeal proceedings was known. The Board accepts that such an interest to act may exist. However, taking into account the legal situation described above concerning the intervention pursuant to A 105(1)(a), the SC company has to act before the Romanian national legal institutions.

[3.1.18] As a consequence, the intervention of company SC, based on the infringement proceedings before the Romanian court based on Romanian patent RO/EP 1108424 resulting from the extension to Romania of the European patent under consideration, is inadmissible because it does not comply with the requirements of A 105(1)(a).

[3.2] A 115, first sentence, provides that in proceedings before the EPO, following the publication of the European patent application, any third party may present observations concerning the patentability of the invention to which the application or patent relates. The documents filed by the SC company concerning the patentability of the invention that is the subject of the patent under consideration are considered to be third party observations pursuant to A 115, first sentence. However, the Board underlines that, pursuant to A 115, second sentence, the SC company is not a party to the proceedings. As to the substance of the case, the letters dated February 24, 2009, December 15, 2009 and October 27, 2010, which are considered to be third party observations pursuant to A 115, do not contain elements that had not been mentioned by the appellant yet.

Referral to the EBA

[4.1] The SC company has asked the Board to refer a question to the EBA in case it would decide that the EO would lead to issuing national patents. According to the SC company, the question of the legal nature of a European patent that has been extended to Romania and the related question of whether an intervention pursuant to A 105 was admissible constitute points of law of fundamental importance.

[4.2] According to A 112(1) EPC 1973, the Board of Appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required.

A question involves a “point of law of fundamental importance” within the meaning of A 112(1)(a) if it is relevant in a substantial number of similar cases and is therefore of great interest not only to the parties in the present appeal but to the public at large. (see, for instance, T 271/85). However, a question that involves a point of law of fundamental importance does not necessarily have to be referred to the EBA if the Board itself can answer it without doubt (see, for instance, J 5/81; T 198/88; J 22/95; Case Law, 6th edition 2010, VII.E.14.2). The Board has explained in detail (see points [3.1.7-14] above) why Romanian patent RO/EP 1108424, which has been obtained by extension to Romania of the European patent under consideration, is not a national parent granted in Romania, but a patent that is exclusively based on national law, i.e. on Romanian law, and not on the Convention. The Board has also explained why Romanian patent RO/EP 1108424 is not a European patent within the meaning of A 2(1) EPC 1973 and why the intervention pursuant A 105(1)(a) is, therefore, inadmissible.

[4.3] As mentioned above (see points [3.1.1-18] above), the present Board has no doubts that in the present case the intervention is inadmissible because Romanian patent RO/EP 1108424 does not correspond to European patent EP 11108424, which is the subject of the present opposition appeal proceedings. Consequently, one of the conditions of A 105(1)(a) is not fulfilled. Therefore, there is no point of law of fundamental importance which would have to be clarified by the EBA.

[4.4] These reasons have led the Board to decide that there is no need for referring the questions of the SC company to the EBA.

R 106 objection

[5] The objection raised under R 106 has to be rejected for the following reasons:

A 113(1) EPC 1973 provides that the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. The right to be heard within the meaning of A 113(1) EPC 1973 applies to all proceedings before the EPO and to all parties to the proceedings (Singer/Stauder, op.cit., article 113, 2). Third parties which, according to A 115, second sentence, are not parties to the proceedings, cannot invoke the right to be heard (G 4/88 [2]). Neither the European Patent Organisation nor the State of Romania are parties to the present proceedings under A 107 EPC 1973. Consequently, in the present case, the fact that the Board has not given the European Patent Organisation and the State of Romania the opportunity to file observations does not violate the right to be heard.

A hardly surprising outcome.

On a teleological level, one might add that the possibility of intervening in opposition proceedings is justified by the fact that the fate of the patent can be decisive for the outcome of the infringement proceedings: a revocation of the opposed patent will deprive the infringement proceedings of their very cause. There is no equivalent justification here because even if the European patent is revoked, the Romanian spin-off is not (at least not automatically). It may be found to be valid by a Romanian court. In other words, there is no direct effect of the revocation (or limitation) on the infringement proceedings before the Romanian court.

To read the whole decision (in French) or have a look at the file wrapper, click here.

NB: The decision is also commented on Le blog du droit européen des brevets. 

You can listen to the Romanian rhapsody here.

T 305/08 – When Third Parties Intervene

This case is interesting because there were two interventions the admissibility of which was contested by the patent proprietor. The case offers a good opportunity for getting more familiar with A 105 and its implementing rules: there were all sorts of lawsuits, but not all of them can trigger interventions.

Following the rejection of the opposition (on the grounds of A 100(a) and (b) only) on December 4, 2007, the opponent, Inventio AG, filed an appeal.

Then, on February 22, 2008, Schindler SA (hereafter “Opponent 2”) filed an intervention based on an infringement suit lodged by the patent proprietor against it in the Zaragoza Mercantile Court bearing a date of 23 November 2007. In support of its arguments, Opponent 2 filed an unsigned copy of said infringement suit, together with a translation thereof into English. Opponent 2 raised objections under Article 100(a), (b) and (c) EPC 1973.

On March 15, 2008, a further intervention under Article 105 EPC was filed by Schindler Aufzüge und Fahrtreppen GmbH (hereafter “opponent 3”), including objections under Article 100(a), (b) and (c) EPC 1973. The intervention was filed with respect to a request for an interlocutory injunction in respect of infringement lodged at the Landgericht Düsseldorf, against opponent 3, bearing a date of 10 January 2008. A copy of the request for an interlocutory injunction was filed.

The patent proprietor requested that the interventions also be dismissed as being inadmissible. In support of its arguments, it filed the following documents:

• OT1: Nullity lawsuit filed in Milan on 30 November 2006 by inter alia opponent 2 against the patent proprietor) + OT1a: translation of OT1;
• OT2: Order from Zaragoza Commercial Court dated 21 September 2007 in respect of “Preliminary Findings” regarding a complaint filed by the patent proprietor against opponent 2 + OT2a: Translation of OT2;
• OT3: Nullity lawsuit dated 13 November 2007 filed by opponent 2 against Otis Elevator Company + OT3a: Translation of OT3;
• OT4: “Financial Statements and Corporate Governance 2007”, Section 8, Schindler Holdings Ltd.;
• OT5: Letter dated 4 August 2008 to Landgericht Düsseldorf regarding a request for costs.

In a letter dated September 15, 2009, the Landgericht Düsseldorf requested the Board to accelerate proceedings in light of an ongoing patent infringement lawsuit concerning the German part of European patent number 1 140 689. The Board informed the parties that it would accede to the request of the Landgericht.

Here is the part of the decision dealing with the admissibility of the interventions:

[1.1] The intervention by opponent 2 was filed on 22 February 2008. This had annexed thereto an unsigned copy of the infringement suit dated 23 November 2007 together with an English translation thereof.

[1.2] The three-month time limit in R 89(1) for filing the notice of intervention is met, only if it is proven that proceedings had been instituted in accordance with A 105(1).

[1.2.1] The date of drafting of the infringement lawsuit in Zaragoza dated 23 November 2007 is at first sight the earliest date on which the lawsuit could possibly have been filed, unless the lawsuit had been post-dated. The subsequent filing of the intervention on 22 February 2008 and payment of the fee on the same day were thus within three months of, seemingly, the earliest possible date.

[1.2.2] Although an unsigned copy and translation alone provided insufficient evidence for proving the date of institution of proceedings, or indeed whether proceedings were instituted at all, opponent 2 later filed evidence to that effect on 18 April 2008, in the form of E1. The [patent proprietor] did not contest that the lawsuit had indeed been filed as later proven by E1, nor that this lawsuit was indeed the lawsuit dated 23 November 2007.

[1.2.3] Since, according to R 89(2), R 76 and R 77 are also applicable to interventions, and since it is stated in R 77(2) that any deficiency which is not a deficiency under A 99(1) or R 76(2) can be remedied within a period specified, it follows that opponent 2 indeed filed E1 in good time because no period under R 77(2) had yet been set by the EPO for doing so.

[1.2.4] Although E1 was in Spanish and was not filed with a translation into one of the official languages of the EPO, it is to be noted that the Board first invited the opponent to remedy the deficiency of filing E1 in Spanish only, when issuing its communication subsequent to the summons to oral proceedings (OPs). The translation of E1 was also filed in due time (i.e. at least 20 days prior to the oral proceedings as specified in the communication), by way of the letter of 15 January 2010.

[1.3] The infringement action in Zaragoza dated 23 November 2007 was the first proceedings falling within the terms of A 105(1).

[1.3.1] A 105(1) states:

“Any third party may, in accordance with 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

(b) following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for ruling that he is not infringing the patent.”

[1.3.2] Contrary to the [patent proprietor’s] submissions, none of the court actions according to OT1, OT2 and OT3 is an action under A 105(1) which would have caused the three-month time limit for filing an intervention to end earlier.

[1.3.3] OT1 was a lawsuit brought by opponent 2 against the [patent proprietor], requesting inter alia nullification of the European patent number 1 140 689 […] and a declaration that the products of opponent 2 […] did not infringe this patent. However, neither of these claims constitutes proceedings under A 105(1), because the law suit is not a proceedings for infringement instituted against opponent 2 as in A 105(1)(a), nor is the lawsuit a proceedings instituted by opponent 2 “following a request of the proprietor of the patent to cease alleged infringement” as in A 105(1)(b).

[1.3.4] On page 2 of OT1a under the heading “The competition”, it is stated that the f[patent proprietor] “began a campaign of systematic aggression towards” opponent 2, and that “The feeling of the plaintiff (opponent 2) is that Otis (the [patent proprietor]) wishes to intimidate the Schindler Group companies, so as to discourage it from continuing in the production, sale and installation of systems ...”. On page 3, it is stated that “It is likely...that (the [patent proprietor]) will undertake further judicial measures”. Further a “saisie-contrefaçon” of 11 September 2006 is also mentioned “on the basis of the assumption that such elevators systems would constitute infringement of ... EP 1140689 B1 ...”. Additionally, it is stated that “in consideration of the assumed behaviour by (the [patent proprietor]) in Germany and France, the grounds subsist also to fear the now (the [patent proprietor’s]) suits in Italy on the aforementioned patent titles against (opponent 2)”.

However, none of these statements concerns a proceedings for infringement instituted against opponent 2, nor does any of these statements imply a request of the proprietor of the patent to cease alleged infringement in Italy. Instead, the statements merely show that the lawsuit of opponent 2 was an attempt to pre-empt any action of the proprietor in which it might request the ceasing of alleged infringement.

[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 (see item 2a) 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 [patent proprietor] 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). The [patent proprietor] has provided no evidence to counter the submission supported by A1 in this regard.

[1.3.7] OT3 […] is an ordinary action for a declaration of nullity brought by opponent 2 against the [patent proprietor]. Reference is made […] to an alleged opinion of the [patent proprietor] that certain lifts infringe its patents. OT3 however gives no indication that the [patent proprietor] had started an infringement proceedings against opponent 2 according to A 105(1)(a), nor that proceedings had been opened for a ruling that opponent 2 was not infringing the patent or even that the nullity suit was made following a request of the proprietor to cease alleged infringement under A 105(1)(b). Again, the [patent proprietor] has provided no evidence to the contrary.

[1.3.8] Consequently, the first action from which an intervention could have been filed was the action in Zaragoza dated 23 November 2007 in which proceedings were instituted on 29 November 2007, and the intervention was validly filed within the three-month time limit from that date.

[1.4] The proceedings instituted by the [patent proprietor] against opponent 3 in the Landgericht Düsseldorf on 10 January 2008 were the first proceedings instituted between the [patent proprietor] and opponent 3 under A 105(1). The [patent proprietor] has not disputed the evidence put forward by opponent 3 in this regard, nor has evidence concerning an earlier instituted proceedings against opponent 3 been supplied. Thus the Board finds that the intervention was validly filed within the applicable three-month time limit under R 89.

[1.5] The [patent proprietor] however argued that both opponents 2 and 3 were not a “third party” in accordance with A 105(1). The Board however finds otherwise.

[1.5.1] OT4 and OT5 were supplied as evidence that opponents 2 and 3 belonged to the same group of companies as the appellant and that therefore these allegedly supported the [patent proprietor’s] contention that neither of these parties could be seen as independent, nor a “third party” in A 105(1) EPC.

[1.5.2] OT4 indeed appears to show that opponents 2 and 3 are within the same group of companies as the appellant, but provides no information which could lead to a finding that each is not a separate legal entity.

The Board finds that the terminology “Any third party” in A 105(1) cannot be given an interpretation other than that each party must be a separate legal entity. This was mentioned in the communication sent to the parties in preparation for OPs, and the [patent proprietor] did not then contest the fact that each party was a separate legal entity, nor did it provide evidence to the contrary as will be explained below.

[1.5.3] According to the [patent proprietor], OT5, which is a request for costs drafted on behalf of the appellant in a national proceedings, allegedly demonstrates that the appellant acts as the patent department of opponent 3 which itself has no patent department, and that opponent 3 is a licensee to the appellant which further indemnifies opponent 3 in respect of actions against it by third parties holding intellectual property rights. Its representative indeed also claimed costs for representing opponent 3. However, the Board finds that this does not alter the fact that the appellant and opponent 3 are separate legal entities. Indeed it is quite common that an employee of one company may be named as a legal representative of another company in the company statutes.

[1.5.4] OT7 to OT10 do not provide any evidence which would alter the conclusion that the appellant and opponents 2 and 3 are separate legal entities. These documents merely show that a particular employee of the appellant may represent not only the appellant but also opponent 3, and can receive costs for this representation. The allegation that the appellant has no presence on the market by which it can be held liable for infringement does not alter this conclusion either.

[1.5.5] The [patent proprietor’s] allegation that allowing the interventions would be the same as allowing the appellant effectively to late-file oppositions via opponents 2 and 3 under its control, and thus introduce new evidence, is not found convincing. The Board finds no reason which should prevent opponents 2 and 3 filing new evidence when filing their interventions (see G 1/94 [13], where the Enlarged Board stated that if an intervener were prevented “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 A 100 not relied upon by the proper opponent, (this) would run contrary to this purpose of intervention”), since they are a “third party” under A 105(1).

[1.5.6] Whilst the [patent proprietor] argued that the intention of A 105 was to allow parties who had not had a chance to file an opposition, to do so when court proceedings relating to infringement were started, the [patent proprietor] provided no evidence of this alleged intention underlying A 105. The wording of A 105 itself is quite clear in allowing “any third party” to file an intervention, and is not restricted to any third party who had not had a chance to file an opposition, it being noted that all third parties always have the possibility to file an opposition within the nine month time limit for filing an opposition.

Likewise, there is no evidence supporting the [patent proprietor’s] allegation that it would be contrary to the intention of A 105 to allow a party to arrange its company structure so that, in particular, the patent department being one company could file oppositions on behalf of the other companies.

Further, there is also no evidence that the opposition filed by opponent OI was filed on behalf of the other companies; it was filed solely in its own name. Whether the [first] opponent chooses to indemnify the other opponents for possible consequences of this is entirely outside the scope of A 105.

[1.5.7] The allegation that allowing the opponents 2 and 3 to intervene would be abusing the opposition procedure is not agreed. The fact that opponents 2 and 3 are allowed to intervene lies entirely within the sphere of responsibility of the [patent proprietor], by its choice to institute proceedings against the opponents.

[1.5.8] The argument of the [patent proprietor] that the interventions had the character of straw man oppositions in accordance with G 3/97 since they were a circumvention of the law by abuse of due process cannot be followed. In G 3/97 [4], an abuse of due process is assigned to the cases where the proprietor is represented by a straw man in order to file an opposition or where an unauthorised representative acts in the role of a professional representative before the EPO. Moreover, in as far as a straw man might be filing an opposition on behalf of a third party this was found anyway to be acceptable (see e.g. G 3/97 [3.3]).

In the present case, neither of these circumstances arises and there is no evidence showing a parallel circumstance to the use of a straw man to circumvent the law, since due process is indeed being adhered to by opponents 2 and 3 filing interventions, as this was only possible by the actions of the [patent proprietor] against them. Without such action by the [patent proprietor], the interveners would not have been able to file their oppositions at all.

Merely because the appellant was not a party which the [patent proprietor] was able to sue for infringement cannot alter this conclusion.

We shall see another aspect of this decision in a forthcoming post.

Should you wish to download the whole decision, just click here.