CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1809/22 – Admissibility of an intervention in appeal – Reordering AR in appeal

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The patent which is based on a divisional application EP 2 212 067 and relates to a conveyor drive for food slicing machine.

Brief outline of the case

The patent was maintained according to AR 0. Both proprietor and opponent appealed.

A notice of intervention was filed during appeal and considered admissible.

The board found the MR, as granted, not allowable and confirmed the maintenance according to AR 0.

The request of the proprietor to submit some questions to the EBA in relation with G 4/91 was refused. An objection under R 106 was dismissed.

The case is interesting as it deals with, inter alia,  

  • the admissibility of the intervention  
  • a change of the order of requests by the when entering appeal. With the reordering of the AR the proprietor wanted to have broader AR to be examined first by the board.

The proprietor’s point of view

Admissibility of the intervention

The withdrawal of the infringement action referred to in the notice of intervention had retroactive effect in German law (ex tunc) so that the infringement action never existed and was, in any case, no longer pending when the notice of intervention was filed.

The proprietor further argued at the OP that it was purely a question of law whether the infringement action, once withdrawn, was considered to have never existed

For the proprietor, according to the EBA’s interpretation of the EPC, given in decision G 4/91, Reasons 2, both the opposition, or appeal proceedings, and the infringement proceedings must be contemporaneous.

The proprietor interpreted the reasoning given by the EBA in G 4/91 as meaning that intervention is only provided for when both opposition proceedings and infringement proceedings are in existence at the same time.

The proprietor also claimed that when intervening in appeal, an appeal fee was due by the intervener.

Order of the AR

In appeal, the proprietor requested that AR 1 and 2 be considered before AR 0.

AR 1 and 2 were filed with the proprietor’s response to the notice of opposition.

The proprietor argued that special circumstances justifying the reordering of the claims were present

  1. due to the filing of an intervention and
  2. because the OD admitted a new novelty attack based on D10 at the OP.

The board’s decision

Admissibility of the intervention

For the board, it is not decisive for the admissibility of the intervention that the infringement action had been withdrawn when the notice of intervention was filed.

The condition under Art 105(1,a) is a factual one which was fulfilled when the infringement action was instituted.

Art 105 requires only that infringement proceedings have been instituted against a third party, but makes no mention that such proceedings must still be pending. It therefore has to be considered whether infringement proceedings had, in fact, been instituted, regardless of any later course such infringement proceedings might take.

The institution of infringement proceedings created a substantial legitimate interest for the assumed infringer to enter the opposition proceedings. This interest pertains even after the withdrawal of the infringement action as there is no bar on the proprietor instigating another such action at a later date.

The board, did not agree with the proprietor’s interpretation of the EBA’s decision in this respect and instead concured with the interpretation in decision T 1713/11, Reasons 2.7, that there is no requirement that infringement proceedings are still pending when an intervention is filed. All that is required under Art 105(1,a) is that proceedings for infringement, covering as well injunctions, have been instituted against the intervening party.

For the board, there is no indication in G 4/91, that the parallel existence of national and opposition proceedings at the date of filing an intervention is a precondition for the admissibility of the intervention. It is only the pendency of opposition proceedings which is required.

It was established in G 3/04, Reasons 11, final paragraph, that there is no legal basis for the payment of an appeal fee by an intervener in appeal proceedings.

Order of the AR

By placing the set of claims according to AR 0 above AR 1 and 2 during opposition proceedings, the proprietor effectively replaced AR1 with AR 0. Although AR 1 and 2 were, as such, not withdrawn, they were never procedurally active as there was no need for the OD to decide on them once a higher ranking request had been found allowable. They became effectively the AR2 and 4 according to the order of requests given by the proprietor during the OP before the OD.

With this course of action, the proprietor prevented the OD from taking a decision on AR 1 and 2, and it consequently prevented the board from reviewing that decision on appeal under Art 12(2) RPBA.

Although the status of AR 1 and 2 below AR 0 is not in question, they cannot be made higher ranking than AR 0 unless the circumstances of the appeal case justify this. The board referred to T 1404/20, Reasons 1.1 to 1.5.

The board noted that the proprietor re-ordered its AR 1 and 2 with its statement of grounds of appeal, i.e. prior to the notice of intervention.

The board could not see why the intervention in the present case would require previously lower ranking AR with broader claims to be filed above the version found to meet the requirements of the EPC by the OD. The MR was not allowable for the reasons given in the appealed decision, i.e. irrespective of any arguments or evidence brought forward by the intervener.

According to the minutes of the OP before the OD, at the beginning of the OP and before the opponent had raised the novelty attack based on D10, the proprietor stated that the AR were to be considered in the following order: “0, 1, 1.1, 2, 2.1.

The board could not see any connection between the re-ordering of the AR and the new objection.


Admissibility of an intervention

Although in the present case, the intervention occurred in appeal after opposition, the conclusions drawn by the board appear to apply mutatis mutandis to an intervention filed in opposition.

The key message is that the admissibility of an intervention is not dependent on the existence, at the fling of the intervention, that an action for infringement, or for a PI, is still running. Once an action has been started by the proprietor against a potential infringer, the conditions for an intervention under Art 105(1,a) are given.  The board correctly observed that the proprietor can restart an action later.

Order of the AR

The order of the AR given by the proprietor is binding for him when he enters appeal, even as apellant. He cannot in appeal change the order if he put in opposition an AR with a more limited scope as first AR. If the OD grants an AR with a more limited scope, the proprietor cannot try to bring in appeal a first AR with a broader scope. He should have done so in opposition, cf. Art 12(6) RPBA.

It appears also possible to consider that a change in the order of the AR filed in opposition when entering appeal represents an amendment in the meaning of Art 12(4) RPBA. The net result would be the same, the new order will not be admitted. Then, it is not even necessary to compare whether the new AR put first is broader n scope.


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