EP 3 289 627 B1 relates to a method for recycling used batteries, especially rechargeable batteries and battery processing plant.
Brief outline of the case
The OD decided maintenance according to AR2, with a decision dated 29.09.2022. No objection of lack of N has been raised in the procedure leading to the OD’s decision.
The proprietor appealed on 14.12.2022. The opponent appealed on 19.01.2023.
On 16.02.2023, i.e. before the end of the period of filing a statement of grounds of appeal, a presumed infringer filed an intervention. The intervener raised the ground of opposition of lack of N.
The board decided to remit to the OD and to reimburse all the appeal fees.
The proprietor’s point of view
The proprietor considers the intervention to be inadmissible, especially since the proceedings conducted before the Mannheim Regional Court were merely “proceedings for preliminary injunction, which were also terminated before a decision was reached by withdrawal of the request”.
The opponent’s point of view
After the intervention, the board was obliged to carry out at least a partial substantive examination of the appeals, and not remit the case directly to the OD; in the event of direct remittal, at least its appeal fee would have to be refunded.
At the same time, it is suggested or requested that two questions be referred to the EBA.
The questions related to the possibility to remit to the OD when the intervener introduces a new ground of opposition without substantive examination of the grounds of intervention and of the reimbursement of the appeal fee in such a situation.
The board’s decision
On the admissibility of the intervention
The intervention was filed in accordance with R 89 within three months of the request for an preliminary injunction at the Mannheim Regional Court.
In the given context, a request for a preliminary injunction is covered by the term “action for infringement” in Art 105 as a request initiating proceedings, see, for example, T 1459/06, Reasons 1.
Moreover, it is irrelevant whether the proceedings are still pending before the Mannheim Regional Court, see, for example, T 1809/22, Reasons 2.3, and T 1713/11, Reasons 2.7.
Under these circumstances, the intervention of the alleged patent infringer is admissible; this also gives it the status of further opponent.
Remittal to the OD
While N was not initially a ground for opposition and was therefore not dealt with in the contested decision, the statement of intervention contains such N objections in view of documents E2, E3, D2, D3, D9 and E4.
According to G 1/94, headnote, Reasons 13, an intervention by an alleged patent infringer may be based on any of the grounds for opposition listed in Art 100, even if such a ground was not the subject of the previous opposition proceedings.
In the case of a new ground for opposition, the case must in principle be remitted to the opposition division for further decision, unless there are special reasons in favour of a different approach.
In the present case, none of the parties put forward such special reasons, nor are any such reasons recognisable.
In particular, neither Art 111(1) nor any other provisions of the EPC or the RPBA require that individual objections be dealt with, in advance, as to their substance.
A new decision of the OD, which will not necessarily be based on identical facts and/or requests, cannot be precluded. Any binding instructions from the board to the OD could also restrict the intervener’s right to challenge the patent it has allegedly infringed by all available means, see G 1/94, Reasons 13.
In accordance with established case law of the BA, see for example T 16/95 or T 2951/18, a further substantive review would also be premature and also not expedient.
Under the given circumstances – in accordance with the principles developed in G 1/94 – a direct remittal to the opposition division is therefore required.
Reimbursement of the appeal fees
The intervener, who did not intervene as an appellant itself, did not have to pay an appeal fee after its intervention in the current appeal proceedings, as it did not acquire the status of an appellant itself through this intervention, cf. G 3/04, Reasons 10 and 11. The appeal fee thus paid by it without basis must be reimbursed.
The criteria for reimbursement of the appeal fee paid by an appellant are in principle set out in R 103, although according to case law – in exceptional cases – a reimbursement of the appeal fee for reasons of equity may also be considered over and above its wording, see for example T 308/05, Reasons 5.
The proprietor and opponent 1 have paid appeal fees for the purpose of initiating and in the expectation of “regular” appeal proceedings to review the decision of the OD issued on the basis of the opposition proceedings conducted only between them to date. However, due to the direct remittal to the OD without further substantive examination by the board, such “regular” appeal proceedings do not take place.
In this situation, reimbursement of the appeal fees also of the proprietor and opponent 1, beyond the limits of R 103, appears appropriate.
Comments
The present decision is interesting as it shows a great deal of pragmatism by the board. As the appeal procedure had not really started in substance, it was best for the board to remit and not preclude any decision of the OD.
Insofar as the intervener can raise any ground of opposition, on top of those raised by the original opponent, the fact that the intervener merely raised a N objection appears prima facie irrelevant. It could also have been an objection of lack of IS based on further evidence.
As long as the intervener raises a ground of opposition not previously raised, provided it is properly substantiated, it has to be admitted, be it in opposition or in appeal.
If the intervention occurs during appeal, a board is however not obliged to remit.
By remitting to the OD, the intervener will become a “full” opponent, with as well the possibility to appeal later.
That the appeal fees were reimbursed was quite normal as the board had not started with any examination to the substance.
Since the questions to be referred to the EBA were answered by the board, a referral became moot.
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