CASELAW-EPO - reviews of EPO Boards of Appeal decisions

The present blogpost is a new version of the post of 27.01.2025 after publication of the corresponding decision. When the post was originally drafted, only the minutes of the OP before the board were known.

EP 2 387 844 B1 relates to managing associated sessions in a network.

Its proprietor is KPN.

Brief outline of the procedure before the EPO

An opposition was filed by Xiaomi and the OD decided maintenance in amended form. The opponent appealed the decision.

The UPC informed the board that EP 2 387 844 B1 was subjected to infringement proceedings before it.

On 24.09.2024, the board decided ex-officio acceleration of the proceedings ex-officio, cf. Art 10(5) RPBA.

On 21.10.2024, in a communication under Art 15(1) RPBA, the board provisionally announced that the patent was likely to be revoked for added matter.

OP were scheduled for 11.12.2024.

On 18.11.2024, OPPO filed a notice of intervention.

On 21.11.2024, the proprietor, requested postponement of the OP in view of the intervention.

On 26.11.2024, the board considered the intervention admissible and was not convinced by the proprietor’s reasons for postponement. The non-availability of the proprietor’s expert was not a “serious reason” under Art 15(2) RPBA. The board further indicated that it still adheres to its previous provisional opinion, i.e. that the patent is likely to be revoked for added matter.

On 09.12.2024, the board, by stating that it was not inclined to change the date for OP, actually refused the request for postponement and maintained the OP on the set date.

On 11.12.2024, at 12:35, during the OP, the proprietor filed an objection under R 106 per e-mail.

The objection under R 106 was dismissed and the patent was revoked for added subject-matter.

Brief outline of the procedure before the UPC

KPN had previously opted out EP 2 387 844 B1. Date of publication and mention of the grant of the patent: 25.08.2021 Bulletin 2021/34. KPN withdrew the opt-out in March 2024.

On 04.09.2024 the proprietor, KPN, sued OPPO at the LD The Hague, see Case Number: ACT_49150/2024.

Following the infringement action before the UPC, OPPO filed a notice of intervention before the BA.

Request for postponement of the OP before the BA

The proprietor requested postponement in view of the fact, that besides taking over the objections of the actual opponent, the intervener filed an objection of lack of N based on a US document not yet in the procedure. The proprietor argued that it had to consult an expert which was not available in the upcoming few weeks.

The proprietor invoked the right to be heard, and considered that two weeks was an insufficient period to fully respond to the notice of intervention. The proprietor referred to T 1961/09.

The proprietor was further of the opinion that a procedural decision, such as on postponement of oral proceedings, assuming the outcome of OP, such as the revocation of the patent, would prejudge the final decision and thus violate its right to be heard.

The board’s decision on the postponement of the OP

The board reminded that matter of postponement of the arranged OP is at the board’s discretion, cf. Art 15(2) RPBA. A postponement can only be envisaged for “serious reasons”.

Art 15(2,b) RPBA gives a non-exhaustive list of circumstances which might justify postponement. Art 15(2,c) gives a non-exhaustive list of circumstances which might not justify postponement, whereby Art 15[2,c(i)] RPBA expressly mentions filing of new requests, facts, objections, arguments or evidence.

For this reason alone, a postponement was not necessary.

The right to be heard has no bearing on the question of the date for OP as governed by Art 15(2) RPBA. The same applies to the proprietor’s comment that new arguments were put forward in the notice of intervention, and that the discussion had developed into an intertwined tripartite debate.

The proprietor’s suggestion, invoking decision T 1961/09, that continuing the OP before the board could only be fair to the proprietor if the intervener did not make any submissions was deemed not convincing.

In the present case, unlike the one underlying T 1961/09, the notice of intervention did, in the now relevant parts, not raise any further objections or new issues, but only argued on old topics. At the OP before the board, the intervener was also free to put forward and develop such arguments, which it also did to some extent, as had the proprietor. Further, to ensure fairness between the parties, the present board had taken pains, in the run-up to the OP before it, to concentrate the debate on a few old, limited and highly relevant issues.

If the proprietor were to argue that a refusal to grant a request for postponement of OP, such as the current (or the first postponement request, or the reconsideration request, is a “decision” within the meaning of Art 113(1), there would be no doubt that the proprietor has been heard.

The board added that it is only towards the end of OP before it that a board assesses whether the case is ready for decision, not at their beginning. If the case is not ready, for example because the right to be heard could not be respected, the proceedings are typically continued in writing.

There was thus no reason to postpone OP.

The dismissal of the objection under R 106

The board held that, while an admissible intervention is to be treated as an opposition, cf. Art 105(2), its filing shortly prior to the OP before a board does not generally excuse the proprietor, or the other parties, and in particular it does not hand them a voucher for more time.

Its concrete implications for opposition appeal proceedings are rather to be determined on a case-by-case basis, under the provisions of the EPC and the RPBA.

Nor are opposition appeal proceedings designed to serve as a placeholder for tactical considerations in parallel proceedings for infringement. They are rather an existential challenge to the title, on the basis of which enforcement is pursued in the infringement proceedings, and parameters such as legal certainty and procedural economy are also involved.

Any difficulties for the proprietor in drafting AR that also provide the best scope of protection, considering the ongoing infringement proceedings, are not a reason to delay the opposition appeal proceedings

Conclusions to be drawn from both procedures

The patent having been revoked, in principle, any infringement action before the UPC has become moot since the board’s decision applies in all contracting states in which it was validated, i.e. also in UPCA contracting states.

It is clear that KPN has still the possibility of filing a petition for review under Art 112a before the EBA of the EPO. The petition appears admissible, but whether it is well founded and allowable remains to be seen. The BA has decided ex-officio to accelerate proceedings and to keep a very tight schedule as announced in its communications.

As the patent has been revoked for added matter, it appears irrelevant that a new document, filed by the intervener/opponent, in order to support an alleged lack of N, would have justified the postponement of the OP before the BA. The question of added matter had been present all along the appeal procedure, so that the proprietor could not be surprised by the outcome of the OP.

It should also be reminded, firstly, that according to Art 112a(3) a petition for review has no suspensive effect.

Secondly, the patent having been revoked, Art 112a(6) applies. The intervener/opponent as well as the original opponent, could without payment continue the use of the invention in EP 2 387 844 B1 in the course of their businesses or for the needs thereof.

Comments

The refusal to postpone OP

The refusal to postpone the OP was fully justified. The main objection raised by the original opponent and the intervener was added subject-matter. Such an objection is a threat which normally makes any discussion on N or IS moot. The new objection of lack of N raised by the intervener could thus be left out until the decision on added matter was decided upon.

When the proprietor claimed that his expert was not available for a few weeks, it is also possible to rely on Art 15[2,c,(iv)], unavailability of an accompanying person, to dismiss this argument.

The dismissal of the objection under R 106

The board has made clear that it was not willing to play the proprietor’s game. An intervention in appeal is not a voucher for more time for the proprietor and the other parties.

By stating that opposition appeal proceedings are not designed to serve as a placeholder for tactical considerations in parallel proceedings for infringement, the board made clear that he was, rightly so, not willing to extend the proceedings before the EPO.

It was thus perfectly correct to come to a quick decision in opposition appeal proceedings as legal certainty and procedural economy are important points to keep in mind. Those are exactly the words used by the CoA when refusing a stay of proceedings before the UPC in case of parallel opposition at the EPO, see below.

Talking about tactical games, the present situation could have been quite different if the opponent, siding with the proprietor, would have withdrawn its appeal at the beginning of the OP. This would have been exactly the situation which led to the new referral G 2/24. A reply to the questions raised in this referral are thus necessary. See T 1286/23, commented in this blog.

The EPO can act diligently

The procedure before the EPO has been criticised by the supporters of the UPC as being to slow, the present board has shown that a quick decision can be taken by a BA should necessity arise.

In an article of 23.12.2024, JUVE, under the heading “EPO not playing along with KPN’s UPC strategy”, considers that it is unclear how the UPC case will proceed.

As noted in the article, it is not even sure that KPN will file a petition for review.

Should this be the case and should the EBA admit the petition for review, it could also accelerate proceedings and could come rapidly to a conclusion whether the proceedings before the BA should be reopened or not.

As explained above here, there are reasonable doubts that the petition will succeed.

Retroactive application of the UPCA

As the patent has been opted-out first and opted in again, it is to be noticed that there is no trace of those actions in the register of EP 2 387 844 B1. One wonders why this is not the case here?

The opt-out followed by an opt-in gives raise to a certain number of problems.

In my opinion, it poses the question of retroactive application of the UPCA. The constitutionality of such a measure has never been clarified.

If an opt-out is decided by the proprietor, then the EP falls into a bundle of national patents which can only be subject to actions of infringement or nullity before separate national courts, in the EPC member states in which the patent has been validated.

When the opt-out is withdrawn, the situation changes drastically for any potential infringer as patent then falls under the exclusive competence of the UPC, and for all contracting states of the UPCA.

From only being able to be brought before a national jurisdiction with limited territorial competence, any potential infringer will then be able to brought before an international jurisdiction with a much more extended territorial competence and much higher costs.

If the EP has fallen into a bundle of national patents any action to obtain a declarative judgement of non-infringement can only be brought before a national jurisdiction.

Once the patent, after withdrawal of the opt-out, becomes a EP with unitary effect, then a declarative judgement of non-infringement can only be brought before a the UPC.

It is doubtful whether such a retroactive change of position to the detriment of third parties, but to the exclusive advantage, and only within the realm of the proprietor is at all admissible and tolerable. Besides possibly justified exceptions, legal rules cannot be applied retroactively. Why should the UPCA be allowed to be an exception during the transitional period.

This open issue is further exacerbated in view of the possibility of being invited to intervene, cf. RoP 316 UPC, and even forced to intervene under RoP 316A UPC.

Had the present patent not have been revoked, the opponent at the EPO, Xiaomi could be forced to intervene in the UPC proceedings. The constitutionality of such a forced intervention has also not been clarified.

No stay of proceedings at the UPC

In its order UPC_CoA_22/2024, commented in this blog, the Court of Appeal of the UPC has decided that proceedings before the UPC are not to be stayed in case of a parallel opposition proceedings before the EPO.

In this order, the CoA made it abundantly clear that, in the interests of harmonisation, it requires the EPO to follow the case law of the UPC. In view of the different time limits in the different procedures, the UPC will most probably decide first. This has nothing to do with harmonisation, it is simply requesting supremacy of the UPC over EPO.

Now its own medicine could be applied to the UPC, as the EPO has decided first.

Diverging decisions between the EPO and the UPC

Diverging decisions between the EPO and the UPC are perfectly possible. The prior art at stake and more important, the interpretation of the claims might diverge, irrespective of what the EBA will decide in G 1/24. It is to be expected that the EBA is not prepared to give up its very coherent set of decisions relating to what ought to be understood as being “directly and unambiguously derivable“, which applies when it comes to assess added subject-matter.

If the UPC revokes a patent maintained by the EPO, who will pay for the damages incurred by the proprietor?
Conversely, if the UPC decides infringement of a patent revoked by the EPO, who will pay for the damages incurred by the infringer?

Validity of granted European patents

When looking at 1108 final decisions of the BA, published in 2024 on the home page of the BA, after appeal in opposition, the following conclusions emerge:

• In 50% of the cases, the patent has been revoked.
• In 35% of the cases, the patent has been maintained in amended form, i.e. more limited.
• Only in 15% of the case the patent as granted has survived the opposition.

When looking at the rate of confirmation of decisions of the ODs by the boards, it turns out that 70% of decisions of ODs are set aside by the boards.

There is clearly food for thoughts.

Final comment

The UPC exists and might change the infringement/nullity landscape in the contracting states of the UPCA.

Due the absolute will to push the UPCA, its promoters have left too many issues open, for instance when it comes to parallel procedures before the UPC and the EPO. This could well backfire.

T 1841/23