EP 2 628 464 B1 relates to a prosthetic valve
Brief outline of the case
The opposition was rejected and the opponent appealed.
The patent was eventually maintained according to AR 6’’.
The case is interesting as it deals with the admissibility of an intervention.
The board held the intervention not admissible.
The intervener’s point of view
The intervener referred to infringement proceedings relating to the opposed patent instituted against them on 16.06.2023 before the Paris Court of First instance
The intervener did not dispute that there were earlier infringement proceedings instituted. However, it was of the opinion that neither Art 105(1)(a) nor R 89(1) stipulated that the three months’ time limit according to R 89(1) could be triggered only once with first proceedings or that it was always triggered by the date on which the first proceedings were instituted.
With just two very old decisions. T 1143/00and T 296/93, there was no established Case Law on this topic. Furthermore, the cited case law was of no relevance for the present case.
The intervener further argued that interpreting the 3-month time limit in R 89(1) as always being triggered by the date of the first proceedings would violate the principle of equality of arms and would open the door to potential procedural abuses.
The proprietor’s point of view
The proprietor demonstrated that previous infringement proceedings by the patent proprietor based on the opposed patent were initiated against the intervener Meril Life Sciences Pvt Ltd. more than three months prior to the notice of intervention.
Infringement proceedings before the High Court of Justice of England and Wales, commenced on 26.02.2020 (TP-1), and infringement proceedings before the Paris Court of First Instance (TP-2) were filed on 5.06.2020, with the infringement claims based on the opposed patent.
The board’s decision
The intervention filed on 15.09.2023 was rejected as inadmissible because it does not comply with the time limit specified in R 89(1).
According to T 1143/00 and T 296/93, the three-month time limit for filing an intervention is always triggered by the date on which the first proceedings were instituted. As there were at least in 2020 already relevant infringement proceedings, the intervention filed on 15.09.2023 has to be rejected as inadmissible.
For the board, the cited case law dealt with very similar situations. In both cases the attempted intervention was rejected as inadmissible because it was not filed within the three month limit specified in R 89(1).
In T 296/93, an intervention was filed on 29.12.1992 with reference to proceedings instituted according to Art 105(1) EPC 1973, corresponding to Art 105(1,b), on 30.09.1992.
However, proceedings for infringement were instituted on 01.07 1992. In T 296/93, Reasons 2.5, The board held that the principle behind Art 105 is that, as soon as any court action has been brought, the sole available period for intervention starts running.
Any other interpretation would open the possibility of abuse of the intervention opportunity by the filing of national invalidity actions in order simply to trigger a new time limit under Art 105, regardless of earlier circumstances.
Even though in T 296/93, there were not two infringement proceedings according to the same paragraph of Art 105, the general principle that the first proceedings, independent of whether there are instituted under Article 105(1,a or b), triggers the time limit of R 89(1) also applies to the present case.
In T 1143/00, an intervention was filed on 03.07.2001 with reference to infringement proceedings instituted on 25.05.2001 in Austria. However, earlier infringement proceedings were instituted on 23.06.2000 in Germany. In T 1143/00, Reasons 2.2, the board held that from the purpose of the possibility of intervention to have the validity of a European patent reviewed within the framework of the centralised European opposition proceedings, it follows that an intervention can only be filed on the basis of the first infringement action.
These general considerations also applied to the present case.
The Board also disagreed with the intervener’s argument of procedural abuses.
The provisions of Art 105 are intended to allow the alleged patent infringer to defend themselves by challenging the validity of the patent within the centralised procedure before the EPO rather than through separate national proceedings, see G 4/91, Reason 4 and G 1/94, Reason 7.
This purpose is achieved by enabling the alleged infringer to intervene in opposition proceedings, even at the appeal stage, as soon as it is informed of infringement case against them. This implies that the intervention can only be initiated based on the first infringement proceedings, even if there are separate national infringement proceedings underway in different EPC contracting states.
If the alleged infringer was able to choose at will the infringement procedure allowing it to intervene in the opposition proceedings, it would be theoretically possible for it to deliberately delay the opposition proceedings by intervening at a later stage on the basis of a subsequent infringement procedure, which would run counter to the objective pursued by Art 105 and R 89(1).
The different interests of the alleged infringer in one or other of the national proceedings or its subjective assessment of the economic importance of a territory cannot play a role in this context.
Furthermore, in the case at hand, the board underlined that some of the multiple infringement proceedings against the intervener were instituted while the opposition period was still running, see TP1, particulars of infringement before the UK High Court of Justice deemed served on 24.02.2020. The intervener would have been free to file an opposition against the patent themselves during that time to become a party to the proceedings.
Comments
It is not uncommon that the opponent is a holding and the intervener a subsidiary. Here opponent and intervener seem to be two different subsidiaries.
The decision of the present board, whose logic is irrefutable, straightens the picture.
During a pending opposition, even in appeal, the intervener does not have the choice of the infringement action starting the time limit under R 89(1). The first infringement action in an EPC contracting states starts the time limit under R 89(1).
Otherwise, the alleged infringer could institute proceedings for a ruling that he is not infringing the patent at any moment he sees fit. This could represent an abuse of procedure, not from the proprietor, but from the intervener.
An opposition is one of the exceptions which gives post-grant competence to the EPO, the other one being a request for limitation or revocation. Those procedures are exceptional and submitted to strict time limits.
On the other hand, if the proprietor waits tolerates infringement for too long, the admissibility of the infringement action might be denied, at least in certain EPC contracting states So why should be a potential infringer be free to decide when to intervene?
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