The latest EPO referral to the Enlarged Board of Appeal, G2/24 concerns parties to proceedings and their rights in appeals.
The basic principle underlying appeals appears, on its face, to be straightforward. According to Article 107 EPC, only a party who is adversely affected by the decision may appeal. Other parties to the first-instance proceedings become parties to the appeal proceedings as of right. This makes sense since an unsuccessful opponent will want to challenge the first instance decision and, while the patentee is presumably happy with the end result, they must be allowed to defend their position, making them a party to proceedings despite not being in a position to appeal themselves. The same applies in reverse and, in situations where both parties were partially successful - patent upheld in amended form - both parties may appeal.
There are, however, circumstances in which extra parties may be involved in opposition proceedings; so-called "interveners". Interveners in this sense are parties that have been accused of infringement of the patent.
Article 105 EPC allows an "assumed infringer" to intervene in existing opposition proceedings within three months of either the patentee initiating an infringement action or the assumed infringer initiating a counterclaim for non-infringement. This three-month period is also a mini opposition deadline, whereby the assumed infringer can become an opponent in the opposition proceedings provided that they file a notice of opposition and pay the opposition fee.
Once this deadline has been met, the assumed infringer becomes an independent opponent, equal in status to any other opponent. They can therefore challenge the patent on any grounds they wish, with any arguments and/or supporting documents they deem appropriate. Like any other opponent, an intervener can also file an appeal, providing that they were adversely affected by the first instance decision.
However, what happens if the alleged infringement does not start until after the first-instance opposition proceedings are complete i.e., during pending appeal proceedings?
This is the subject of the latest referral to the Enlarged Board. In the referring case, T 1286/23, opposition proceedings were ongoing between Foreo AB (patentee) and Beurer GmbH (opponent) regarding EP2941163. Geske GmbH & Co. KG were threated with infringement by Foreo on 23 August 2023. Three months later, they attempted to file an opposition as an intervener under Article 105 EPC, but this request was rejected as the Opposition Division held the request inadmissible since the 23 August letter constituted a mere threat, and not instigation of infringement proceedings.
Geske subsequently filed suit at the Dusseldorf District Court requesting confirmation of non-infringement (February 2023). One month later, Geske filed a second attempt to intervene in the opposition proceedings under Article 105 EPC. This request was also rejected by the Opposition Division on the grounds that, while the suit had been filed, it had not been "instigated" in strict accordance with the wording of Article 105(1)(b) EPC. "Instigation" did not occur until 15 May 2023.
Meanwhile, opposition oral proceedings were held on 10 March 2023 and the patent upheld in amended form via a written decision dated 9 May 2023. Beurer filed an appeal and Geske tried – for the third time – to intervene under Article 105 EPC.
The Board of Appeal set a date for oral proceedings of 27 June 2024. In April, however, Beurer as sole appellant withdrew their appeal. Withdrawal of an appeal by the sole appellant should terminate the proceedings. However, the Board of Appeal in T 1286/23 nevertheless continued with the oral proceedings, considering only the legal questions of whether Geske's appeal and intervention were admissible, whether appeal proceedings should be continued, and whether a referral to the Enlarged Board in this respect was necessary and/or admissible.
These legal questions arise because the EPC contains no specific provision regarding intervention of the assumed infringer only in appeal proceedings. The final sentence of Art 107 EPC setting out who may file an appeal requires an appellant to have been a party to the first-instance proceedings. However, in G1/94, the Enlarged Board of Appeal held that:
Intervention of the assumed infringer under Article 105 EPC is admissible during pending appeal proceedings and may be based on any ground for opposition under Article 100 EPC.
In essence, the Board in G 1/94 took the view that an opposition included the subsequent appeal proceedings. Thus, intervention under Art. 105 could take place at any time in opposition or appeal.
More recently, in G3/04, the Board held that an assumed infringer intervening during appeal proceedings only has the status of opponent. This only makes them a party to the appeal as of right. The Board went on to say that, as there is no legal basis for payment of the appeal fee, an intervening party cannot obtain the status of appellant.
There is an obvious conflict here. G 1/94 arguably gives a party intervening at the appeal stage more rights than a "normal" appellant, since they must necessarily raise arguments not raised in first instance proceedings (contravening the Rules of Procedure of the Boards of Appeal). On the other hand, G 3/04 gives a party intervening at the appeal stage fewer rights than a "normal" appellant because they cannot continue an appeal of their own volition if the other appeals have been withdrawn.
For this reason, the following question has been referred 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?
It is difficult to predict what the outcome might be here. Having appellants with two different statuses depending on when they intervened in proceedings seems untenable. However, the Boards of Appeal are increasingly requiring appeals to be as convergent as possible, with little or no new matter added from the first instance proceedings. It is therefore equally difficult to imagine the Boards of Appeal welcoming a new intervening party to proceedings with new arguments, not least because this would almost certainly lead to Patentees filing new auxiliary requests on appeal. This would likely require more cases to be remitted to the opposition division to consider such requests, dragging out the legal uncertainty of EPO opposition and appeal proceedings for even longer.
Could the Enlarged Board ultimately decide that intervention in an Appeal is not admissible through a strict interpretation of Article 105 EPC? There are, after all, other ways to revoke a patent so failure to intervene in existing EPO proceedings is not the end of the alleged infringers path. This would, however, be a disappointing outcome for alleged infringers as national proceedings are significantly more expensive than EPO appeals.
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