EP 2 164 428 B1 relates to a prosthetic element with a cellular structure, and the method to make it.
Brief outline of the case
Both proprietor and the original opponent, opponent 1, appealed against the decision of the OD, to maintain the European patent in amended form according to AR3.
The appeals were admissibly filed.
The Board summoned the parties to OP.
In the meantime an intervention was timely filed. The intervener paid an appeal fee simultaneously. The intervener stated that the grounds filed with their intervention constitute grounds for both opposition and appeal. The fee for opposition was timely filed.
The Board invited the proprietor to respond to the opposition and re-scheduled the earlier summoned OP.
Both the opponent 1 and the proprietor withdrew their appeals. Opponent 1 first, followed by the proprietor.
The proprietor’s point of view
In the withdrawal statement, the proprietor submitted that the proceedings should be closed and the OP cancelled, in view of the fact that the only other remaining appellant also had withdrawn their appeal so that the proprietor remained as the sole appellant.
The proprietor submitted further that the pending referral G 2/24 cannot change the still valid law, the party status of an intervener as held by G 3/04. The proprietor requested that the board refuse the various requests of the intervener, and instead adhere unconditionally to the decision G 3/04, treating it as binding, and that the board had to close the proceedings.
The intervener’s point of view
The intervener pointed to the pending referral G 2/24, the positive opinion of the EPO President on the appellant party status of an intervener, and the fact that it had also filed an appeal and was adversely affected by the decision of the OD.
The intervener also put forward various procedural requests, all of which were directed at continuing the proceedings with the intervener in the position of an appellant. The proceedings should continue unconditionally, or alternatively the proceedings should be stayed in view of the pending referral, or the case should be remitted to the OD. It also requested a separate OP on the issue of its party status.
The board’s decision
For the board, the arguments of the patent proprietor overlooked a decisive procedural detail. The intervener, in spite of the findings of G 3/04, decided to file an appeal against the decision of the OD, with all the necessary formalities, including the appeal fee in addition to the opposition fee. The Board notes that this was done similarly by the intervener in the case underlying the referring decision T 1286/23.
This means that there is a pending appeal that the board needs to decide on, even if the decision may only concern the admissibility of the appeal. This would be the case even if there were no pending referral, and even if the idea of a referral to the EBA, or the question of the validity of G 3/04, had not arisen at all, whether raised by a party or the board.
It follows from this that, even if the board were to grant the proprietor’s request and decide to follow the interpretation given by G 3/04, it could not close the proceedings without issuing a formal decision. Although the substantive proceedings would end with the withdrawal of the last admissible appeal, the board would still be required to terminate the proceedings with a reasoned decision.
For the board this differed procedurally from the procedure in cases where all appeals have been withdrawn, whereby the board does not formally end the substantive proceedings with a constitutive decision, but simply establishes that they have terminated by operation of law, i.e. with a declaratory decision, without providing particular reasoning according to standard practice.
In view of the necessity for the board to rule on the intervener’s appeal, the board also had the procedural possibility to review whether the principles set out in G 3/04 are valid or require revision.
The board considered the referral to have merit, in the sense that it is not deemed to be prima facie unsuccessful. This assessment is supported by the publicly available opinion of the EPO President and numerous amicus submissions. Therefore, the board agreed with the referring board of T 1286/23 that the guiding decision G 3/04 may require revision. At the very least, additional reasoning was needed to accept it as a convincing interpretation of the law.
This procedure, whereby the board is obliged to issue a formal, reasoned decision on the admissibility of the intervener’s appeal, means that it is procedurally straightforward for the board to make a referral to the EBA for the purpose of reviewing G 3/04, under Art 21 RPBA.
The board held that in view of the pending referral G 2/24, the board had an additional option. Rather than referring the case itself, the board could stay the proceedings until the outcome of the pending referral G 2/24 is known.
The questions put to the EBA in the referring decision go to the heart of the matter, and G 2/24 is expected to address the question of whether an intervener can admissibly appeal in such a situation, i.e. when joining opposition proceedings at the appeal stage.
Therefore, the Board had no doubt that the outcome of referral G 2/24 will be decisive for the present case.
The board concluded that, under the right circumstances, staying proceedings in view of an already pending referral is a legitimate alternative to the board’s own referral. As such, it is implicitly covered by Art 21 RPBA as a legally correct procedure where a board intends to deviate from an interpretation of the Convention given in an earlier decision or opinion of the EBA.
Thus even if the board were to accept, for the sake of argument, the proprietor’s position that already the staying of the proceedings would mean a deviation from the binding decision G 3/04, for the sole reason that the board does not apply it immediately and without hesitation, the board’s intended course of action is still possible without contradicting the law.
Comments
The proprietor raised an objection of partiality against the legal member of the board. This objection was rightly dismissed under Art 24(3). The proprietor’s attitude was nothing more than a nasty attack on the legal member.
Although it is standard practice that only the referring board has to stay proceedings, the present decision of the board is to be welcomed.
The future decision G 2/24 will apply in full to the present case, and hence the present board took the right decision in staying the proceedings.
T 1286/23 has been commented in the present blog. It is manifest that an intervener only intervening at the appeal stage is in the hands of the proprietor when he is an appellant or even respondent. In the present case, first, opponent 1 withdrew its appeal followed by the proprietor’s withdrawal. It is more than likely that the proprietor and opponent 1 settled.
The proprietor, although being aware of the intervention, as it launched the action leading to the intervention, wanted the procedure before the EPO to stop so that it could better get at the intervener.
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