CASELAW-EPO - reviews of EPO Boards of Appeal decisions

The referring decision T 1286/23

In this decision the board referred the following question to the EBA:

After withdrawal of all appeals, may the proceedings be continued with a third party who intervened during the appeal proceedings? In particular, may the third party acquire an appellant status corresponding to the status of a person entitled to appeal within the meaning of Article 107, first sentence, EPC?

Decision in writing without OP

The EBA held that it can decide on the referred questions in writing, without issuing a communication or holding OP, in accordance with Art 13 and 14 RPEBA and with Art 113 and 116.

No party has requested OP, and the EBA did not consider this to be expedient.

Admissibility of the referral

Although the EBA has considered the appeal admissible, it made clear that the it did not find the prospect of a board referring a question of law solely because it disagrees with an earlier G-decision or opinion to be particularly appealing in terms of safeguarding consistent case law.

The EBA went as far as to say that, in view of the legislative intent of Art 112 to ensure a uniform application of the law, a board of appeal is expected to substantiate why it considers the earlier ruling on the interpretation of the law to have been superseded by a subsequent change in the law or for potential gaps in its reasoning.

Another motivation for referring a question that had previously been answered by the Enlarged Board could be that a board of appeal is confronted with a new factual or procedural situation that distinguishes it substantially from the situation underlying the earlier referral.

The referring board’s position

The referring board expressed its awareness that the legislator did foresee differences between “normal” opposition proceedings and an opposition arising out of an intervention. However, apart from Art 105(2) EPC 1973 and R 57(4) and 79(4) EPC 1973, the EPC did not contain any provision directly limiting the procedural options of the intervener in a similar manner when it comes to the substantive examination of its opposition grounds.

The referring board considered the “logic” of decision G 3/04 “unconvincing” because it saw a contradiction between Art 105, that did not mention party position or party status, and Art 107, that left no room for a party status of the intervener. The EPC legislator did not provide any guidance in this regard.

The referring board regarded the “result” of decision G 3/04 as “questionable” in view of the overall legal framework and the general purpose of an intervention. This called for interpreting Art 105 in such a way that, with regard to Art 99 and 107, the legal requirement of having been a party to the proceedings prior to the appeal in order to acquire an independent party status in appeal, was replaced by a legal interest extraneous to the proceedings conducted before the EPO.

The referring board saw decision G 3/04 in contradiction to decision G 1/94 in that the latter had found that interveners had more rights than appellants, in particular more substantive rights, which decision G 3/04 appeared to weaken.

The EBA’s decision

No substantive changes to the legal situation since G 3/04

After analysing Art 99(1) EPC 1973/2000, Art 105 EPC 1973/2000 and Art 107 EPC 1973/2000, the EBA concluded that none of the EPC provisions relevant to the present referral have been amended in a substantive manner after the decision G 3/04 was issued, prompting a reconsideration of the EBA’s findings in that decision regarding the status of an intervener who submitted a notice of intervention at the appeal stage, after which all pending appeals were withdrawn.

Considerations on the legal concept of appeals

The purpose of appeals is to provide the parties to proceedings before the administrative departments of the EPO with legal protection against a possible infringement of their rights under the EPC in a particular case.

Appeals are not, and were never intended to be, a mere continuation of the proceedings before the administrative department of the EPO.

The EBA referred inter alia to G 1/86, G 1/99, G 7/91, G 8/91, G 9/92, to support its point of view, as well as to the “Travaux Préparatoires”.

 One conclusion appears highly relevant:

The appeal procedure is not an ex officio procedure of the EPO for internal self-control and self-correction. Rather, it depends on the appellant to initiate, determine the scope of, and conclude the procedure within that party’s power of disposal, in accordance with the principle of party disposition. This is subject to the prohibitions of a ruling ultra petita and reformatio in peius.

Considerations on the qualification as a party

The parties to the proceedings are first of all the parties for whom the deciding body intended to issue the decision. These are the parties that are named in the rubrum of the decision and may include an intervener at the administrative opposition stage.

This is not, in general, the case of third parties under Art 115.

A party is adversely affected if the decision, or rather the wording of the order of the decision, deviates to their detriment from a request made by that party.

Here again, one conclusion appears highly relevant:

Any other “negative” or “disadvantageous” impact or effect of a ruling by an administrative department of the EPO on a third party that has not formally participated in the proceedings before the administrative department does not fulfil the legal threshold required by Art 107, first sentence.

Considerations on the legal concept of interventions

The legal concept of intervention, as set out in Art 105, establishes a special legal framework for the legal institution of an opposition. This takes place outside the period for filing an opposition provided for in Art 99, but still before the competent departments of the EPO, which includes the boards as the centralised judiciary in the proceedings under the EPC.

The EBA referred here to G 1/94 and again to the “Travaux Préparatoires”.

One conclusion appears highly relevant:

The legal remedy of an intervention is governed by a special legal framework which, due to its exceptional nature, inherently precludes an extensive interpretation and application.

Considerations on the interplay of appeal and intervention

If an intervention is declared in an admissible manner only at the appeal stage, the intervener cannot procedurally benefit from any status in the administrative proceedings but has to prove vis-à-vis the competent board of appeal that all requirements of Art 105 and R 76-86 and 89 are met.

The valid intervener, who had not been a party to the administrative proceedings leading to the decision under appeal, becomes a party as of right in accordance with Art 107, second sentence, and enters the appeal proceedings at the stage they are in at the time of effect of the intervention.

The parties in first instance proceedings have the right not only to initiate the appeal proceedings but also to dispose of them. From this it follows that a board of appeal, as a matter of principle, may neither initiate nor continue appeal proceedings ex officio without a request from a party if the procedural act which gave rise to the proceedings has been withdrawn, unless procedural law permits continuation.

While R 84(2) permits the EPO to continue opposition proceedings of its own motion in the event of withdrawal of the sole opposition or all oppositions, this discretion may only be exercised by the competent OD during the administrative stage of opposition proceedings.

However, at the judicial appeal stage before the boards, the principle of party disposition takes precedence because the public interest is primarily and sufficiently safeguarded by the fact that anyone may, within nine months of the publication of the mention of the grant of the European patent, file an opposition against the patent pursuant to Art 99(1).

Parties to appeal proceedings as of right do not have a legal status independent of the appeal, because Art 107, second sentence, merely guarantees that they have a right to participate in pending appeal proceedings. Whether or not they actively exercise this right to participate is entirely for them to decide.

In the absence of any specific legal provision to the contrary, these limits are equally applicable to third parties entering into pending appeal proceedings by virtue of an admissible intervention.

If the sole or all appeals are withdrawn in opposition appeal proceedings, the appeal proceedings end with regard to all substantive issues for all parties involved. This also applies to any new grounds for opposition raised by the intervener. Therefore, the proceedings cannot be continued with an intervener.

One conclusion appears highly relevant:

The legal status of the party as of right pursuant to Art 107, second sentence, is not the same as that of the appellant whereby only the latter has the right to dispose of the appeal they have lodged.

Case law of the boards of appeal

A search of the case or practices of the boards of appeal after decision G 3/04 has identified 159 decisions, of which two decisions appear to be particularly relevant to the referral: T 1108/02 and T 439/17.

In T 1108/02, the board considered diverging from decision G 3/04 but found no basis to do so and rejected the request for a referral to the EBA, finding no exceptional circumstances or new legal issues.

In T 439/17, the OD held that the intervention was not admissible. Both proprietor and opponent appealed, but withdrew their appeals. During appeal, the proprietor started infringement proceedings against the third party, who had become intervener. When the appeal was withdrawn, the intervener could not continue the proceedings.  

Interventions in proceedings before the courts of the EPC contracting states

The EBA reviewed intervention proceedings in Switzerland, Germany, France, The Netherlands and the UK. In most countries the proceedings cannot be continued by an intervening party after withdrawal of the main action.

Interventions in proceedings before the UPC

The EBA noted that RoP UPC provide that claimants need the court’s permission to withdraw their claim, ROP 265 UPC. Intervention in proceedings before the UPC is possible and must be made in support of a claim, order or remedy sought by one of the parties, RoP 313 UPC. An intervener is, as a rule, to be treated as a party, RoP 315 UPC. The RoP even provide for the court to invite a third party to intervene, RoP 316 UPC and for a party to request forced intervention, RoP 316A UPC.

For the EBA, no decision could be found that addresses the impact of the withdrawal on an intervener. Furthermore, the intervening party’s remedies must be non-contradictory to those of the party who has been supported, and an intervener may not file a revocation claim when the party it supports failed to file any such request before the relevant time limit.

Concluding remarks

In the absence of any substantive change to the relevant legal framework after the EBA issued decision G 3/04, and in view of the similar factual and procedural situation underlying the earlier and the present referral, the considerations and findings of decision G 3/04 continue to be in line with the legal concept of appeals, the qualification as a party, the legal concept of interventions and the principles guiding the interplay of appeal and intervention.

Comments

A problematic decision

The EBA has spoken, and we have to live with its decision.

The decision is however highly problematic as it carefully ignores the awkward position an intervener can be put in when he can only intervene in appeal. The intervener is totally at the whim of the appellants, be it the proprietor or the opponent. The intervener is especially at the whim of the proprietor, whether the later has appealed or not, as in general it is the proprietor which starts the litigation.

The EBA contented itself to stick with legal niceties, which can be understood, but fail to convince. The EBA completely ignored the well-argued considerations brought forward by the referring board.

At no moment did the EBA deal with the problem raised in the referring decision: “Due to the interplay between the rules of the EPC and those of national infringement proceedings, an intervener often finds itself between a rock and a hard place when trying to calculate the appropriate three months interval to intervene”.

Intervention at the UPC

With the advent of the UPC one could have expected a better decision from the EBA.

The EBA has manifestly not at all understood how an “intervention” works at the UPC.  An “intervention” at the UPC is totally different from “intervention” under Art 105 EPC at the EPO.

An intervention before the EPO is a voluntary action by a third party in reply to an action for alleged infringement while an opposition or an opposition appeal is running.

At the UPC and according RoP 316 UPC, an “intervention” occurs upon invitation of the court, ex-officio or upon request of a party, if it considers that a third party could be concerned by the outcome of the dispute before the UPC. This is fundamentally different from an intervention at the EPO. If a third party is invited to intervene, it can be forced to do so, and it will be bound by the decision of the UPC, event if it refused to intervene.

With an intervention at the UPC, whether forced or not, a third party is dragged in the proceedings and is not intervening on its own volition like for an intervention at the EPO.

A dynamic interpretation would have been possible

As the rapporteur in the present case is the inventor of the “dynamic interpretation” of the EPC, it could have been expected that it would not criticise the referring board as it did when discussing the admissibility of the referral. This is neither normal nor acceptable.

A “dynamic interpretation” and a change of case law of the EBA in matters of intervention was warranted in view of the arguments brought forward in the referring decision.

I am fully aware that the decision has been taken by a body of 5 LQM and 2 TQM, but the influence of the rapporteur, himself chairman of the LBA, can be held as determining.

The EBA once revised a previous decision. In G 1/84, OJ 1985, 299, the EBA ruled that the proprietor could oppose its own patent. This decision was set aside in G 9/93,  OJ 1994, 894, in which it was ruled that opposition proceedings are to be considered as contentious proceedings between parties.

It was thus perfectly possible to give a different ruling in the present case.

In my opinion, the referring board did well substantiate why G 3/04 needed to be revised, in spite of no apparent subsequent change in the law or potential gaps in its reasoning. The practical reasons given by the referring board were much more convincing than the very legalistic ones brought forward by the EBA in the present case.

A referring board is perfectly entitled to consider the “logic” of a previous decision  “unconvincing”, and its “result” to be “questionable”. Any other position would mean that decisions of the EBA are irrevocable. I doubt this was in the mind of the EPC legislator. Yet the EBA has changed its position when it came to revert its decision on the opposition by the proprietor.

Quo vadis EBA?

After G 2/19, G 3/19, and the present decision, all with the same rapporteur, one wonders about the way the EBA is thinking.

Note: G 1/23 has been deleted in the sentence immediately above here

G 2/24