EP 2 476 607 B1 relates to a scooter for a small child.
Brief outline of the case
In a first decision, T 2538/16, the board decided to remit to the OD on the basis of the MR=former AR 2 in order to adapt the description.
In the meantime, an alleged intervener came into the procedure.
The OD decided that the intervention was limited to the adaptation of the description and maintained the patent with the adapted description. .
The intervener appealed the OD’s decision.
The board dismissed the appeal.
The intervener also requested a referral to the EBA, which was rejected by the board.
The referral to the EBA referral focused mainly on the following aspects:
- How is Art 84, respectively Art 83 to be applied in case of discrepancies between claims and description.
- Can the intervener’s position under Art 105 be curtailed by the tenor of a decision taken by a previous board to such an extent that the intervener subsequently intervening in the opposition proceedings cannot raise any objection under all grounds of opposition pursuant to Art 100?
- Whether and under what circumstances can a binding effect of Board of Appeal decisions beyond that specifically provided for in Article 111(2) EPC be derived from the ground of res judicata?
The intervener’s point of view
Contrary to the OD’s view, the order in T 2538/16 could not restrict the intervener’s rights as a party not involved in the T 2538/16 proceedings because a legally binding case could only be finally decided between parties involved in the proceedings.
Furthermore, Art 111(2) emphasised that the binding effect only applied if the facts were the same. Since the intervener had also submitted new prior art not considered in T 2538/16, the facts were not the same.
The intervener also contested the way the description had been adapted and its admissibility as well as the refusal of the OD to amend the minutes.
The intervener referred inter alia to T 167/93 and G 1/94.
The proprietor’s point of view
The OD had rightly decided that, due to the “res judicata” effect of T 2538/16, the intervention was to be limited to objections to the adaptation of the description.
The board’s decision
The board confirmed the decision of the OD that the scope of the intervention of the intervener=opponent was limited to objections to the adaptation of the description, considered as res judicata under Art 111(2).
An intervention is not a legal remedy with which a decision issued in opposition appeal proceedings can be contested. Nor does an intervention open up a new phase of proceedings that could override the binding results of the previous proceedings. An intervention in ongoing proceedings is only possible to the extent that the proceedings are still open for decision.
In this respect, a separate right of opposition has not been created for persons who are assigned for an alleged infringement even after the expiry of the 9-month opposition period under Art 99(1), but that only in the case of pending opposition or opposition appeal proceedings is it possible to intervene in these proceedings under Art 105. Although the intervener is given the status of an opponent under Art 105(2), this is only in the context of the opposition proceedings to which he intervenes under Art 105(1).
For this reason, the intervener must take over the proceedings as they stand. Any decision rendered is therefore binding on him because of a res judicata effect that has arisen.
The present board followed T 694/01, in which it was held that, where a board has decided the wording of the claims in which a patent ought to be maintained and only the description remains to be adapted, the intervener cannot challenge the res judicata effect of the previous decision, regardless whether a new ground of opposition has been introduced.
The board held that T 167/93 was not applicable as it only held that a decision of a board in appeal after examination has no res judicata effect in a following opposition proceedings.
The board further held that G 1/94 is not applicable in the present instance as it does not deal with an intervention when opposition appeal proceedings have already been concluded and in which a decision has already been issued, but with an intervention during pending opposition appeal proceedings, i.e. before a final decision has been issued.
The request for referral was thus rejected by the board. The questions raised are not questions of law on which there is no case law or contradictory case law.
As far as the res judicata effect is concerned, the difference between T 167/93 and the present case, lies in that the intervention did not take place in the second opposition proceedings but only in the second opposition appeal proceedings. T 694/01 is perfectly applicable. The board was not aware of any contradictory case law from other boards.
Comments
When looking at T 694/01, the board’s position is defendable.
T 167/93 is clearly not applicable. G 1/04 could be applicable if the notion of res judicata was not held so determining as in T 694/01.
However, the situation has drastically changed since T 694/01, as the UPC has come into force and drastically changed the infringement/nullity landscape in the contracting states of the UPCA.
The intervener is actually at the whim of the proprietor, and this is not satisfactory in the present days.
In T 1841/23, commented in this blog, the board found it necessary to refer to the EBA, now pending under G 2/24, as it took the view that the legal position of a party to appeal proceedings is normally one of fundamental importance, which concern the definition of the rights and obligations of a party to the proceedings – in this case, the intervener under Art 105 – and poses questions of procedural law of fundamental importance.
In T 1841/23, the board held that the fact that the intervener is only given the status of an opponent under Art 105 was not satisfactory.
When deciding to refer in T 1841/23, the board noted that there was not any diverging case law, as there was no case law at all in view of G 3/04, and yet the board found it necessary to refer questions to the EBA.
The questions raised by the intervener in the present procedure are nevertheless of fundamental importance in view of the creation of the UPC and the board should have used its discretion to at least refer the question of res judicata to the EBA. But then, the case would remain in the tablets as not finished…..
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