The Enlarged Board of Appeal will decide upon the status granted to intervening infringers in Appeal proceedings, which will have implications for all parties involved in proceedings.
To prevent parties that have had infringement proceedings brought against them by a patentee or who have applied for a declaration of non-infringement having to potentially invalidate a patent in all relevant EPC-contracting states, the EPC permits these “assumed/alleged infringers” to intervene in pending opposition proceedings or appeal proceedings stemming from an opposition.
Rights of intervening infringers
The rights of the intervenor depend on the proceedings that they are joined to.
If intervention occurs during opposition proceedings, an assumed infringer can participate in the opposition proceedings as an opponent and even raise new grounds of opposition. If the assumed infringer is adversely affected by the eventual decision of the Opposition Division, they can appeal said decision as they were a party to the opposition proceedings. The assumed infringer will be given “appellant” status in any appeal proceedings.
However, historically, an assumed infringer that was not a party to the opposition proceedings but successfully intervenes in subsequent appeal proceedings is not gifted “appellant” status, as they were not a party to the opposition proceedings and thus not adversely affected by the decision of the Opposition Division. In this instance, an assumed infringer intervening during opposition appeal proceedings will become a “party as of right” meaning that the assumed infringer cannot continue the appeal proceedings if all appeals are withdrawn. In this instance, the appeal proceedings will be terminated, and the decision of the Opposition Division will become final. This is in line with Enlarged Board of Appeal decision G 3/04.
However, a recent decision (T 1286/23) has questioned the teachings of G 3/04 and seeks further clarification from the Enlarged Board of Appeal regarding the status of an assumed infringer that intervenes during the appeal procedure only.
The specifics of the case, the referred question and the potential implications are outlined below.
Specifics of the case
The European patent in question (EP2941163) was granted to Foreo AB (Foreo) in December 2020. During the nine month opposition period, Beurer GmbH (Beurer) opposed Foreo’s patent.
After obtaining a granted patent, Foreo issued a letter to its competitor Geske GmbH & Co. KG (Geske) alleging patent infringement. In reply, and after expiry of the opposition period, Geske (the alleged infringer) sought to intervene in the EPO opposition proceedings citing Foreo’s letter as reasons for the intervention. The Opposition Division at the EPO deemed the intervention inadmissible alleging that Foreo’s letter did not constitute “formal infringement proceedings”, which are required for a successful intervention.
Geske subsequently applied to Germany’s Düsseldorf District Court (DDC) for a ruling of non-infringement. Geske then requested intervention of the opposition against EP2941163 at the EPO for a second time on the basis of this application of non-infringement at the DDC. Under German law, an infringement action is only pending (and thus deemed “formal infringement proceedings”) when the defendant has been served the non-infringement claim. This had not occurred when the second intervention request was filed by Geske allowing the Opposition Division to reject Geske’s second intervention request as inadmissible.
Due to the two interventions in the opposition proceedings being held inadmissible by the EPO, Beurer was the sole opponent in the opposition proceedings. The Opposition Division decided to maintain the patent in amended form. Beurer appealed the decision (T 1286/23).
Geske managed to establish formal infringement proceedings in Germany on the basis of their application for a declaration of non-infringement in June 2023 and successfully intervened in the appeal proceedings at the EPO in August 2023. In line with the teachings of G 3/04, Geske was deemed a “party as of right” and not as an “appellant”. However, Beurer (the sole appellant) subsequently withdrew their appeal.
Withdrawal of the appeal by Beurer, under G 3/04, should lead to termination of the appeal proceedings. However, the Board of Appeal felt that G 3/04 was contrary to other Enlarged Board of Appeal decisions and believed that there were questions surrounding whether Geske should be considered an “appellant” and whether appeal proceedings at the EPO should be continued between Geske and Foreo. As the referring Board felt that there was divergent case law on this matter, the Board referred the following question to the Enlarged Board of Appeal:
“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?”
The Enlarged Board has accepted the case as G 2/24.
Implications
While we await the decision of the Enlarged Board, the specifics of the case may aid third parties looking to intervene in opposition proceedings whilst also raising a number of questions.
For example, Geske would be in a more favourable position if they were able to intervene during the opposition proceedings. However, they did not meet the specific requirements of the German legal system concerning infringement proceedings and thus the EPO prevented them from intervening in the opposition proceedings. Thus, potential interveners should look at when proceedings are deemed “pending” in EPC-contracting states and apply to the relevant court on the basis of the respective national patent to ensure that “formal infringement proceedings” are pending in an EPC-contracting state at the time of intervention.
Should the Enlarged Board decide that Geske should be given “appellant” status, this raises important procedural questions. For example, will Geske be able to raise new arguments, grounds of opposition and/or evidence in the appeal proceedings that extend beyond the content of the decision of the Opposition Division (and arguably the purpose of the appeal procedure)? If so, will Boards have to remit the case back to Opposition Divisions for a further decision to be issued potentially granting the intervener a direct route of appeal? We are following the developments of G2/24 closely.
Forresters’ attorneys are experts in both opposition and appeal proceedings. Therefore, if you have any questions, please contact your usual Forresters attorney.
