G 2/24: Don't Be Late To The Party!

The EPO's Enlarged Board of Appeal (EBA) has been busy again, issuing a Decision in case G 2/24¹ in under a year, and without oral proceedings. This perhaps suggests that the legal question at issue was straightforward, but some might argue differently. Indeed, the Decision itself runs to 45 pages and cites case law from key European national courts, including the Unified Patent Court (UPC).

G 2/24 concerns the intervention of the alleged infringer and our blog post on the referral can be found here². In brief, 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 threatened with infringement by Foreo, and attempted to intervene in the subsequent opposition-appeal proceedings. When Beurer as sole appellant withdrew their appeal, the Board of Appeal called into question the status of Geske. Specifically, withdrawal of an appeal by the sole appellant should terminate the proceedings. However, the Board of Appeal in T 1286/23 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 arose 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:

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.

In what will be a disappointing decision for Geske, the EBA's decision in G 2/24 reaffirms G 3/04, finding that:

The EBA emphasized that appeal proceedings serve as a remedy for parties adversely affected by decisions of the EPO's administrative departments. Only those who formally participated in the original proceedings and experienced an adverse effect are entitled to appeal. The Board clarified that such parties enter the proceedings as they stand and are bound by the procedural limitations already in place. Therefore, once all appeals are withdrawn, the proceedings conclude for all parties.

Final Thoughts

It is perhaps not surprising that the EBA followed G 3/04, but it will be disappointing for alleged infringers. Even if they do intervene in appeal proceedings, their status will remain uncertain, since the appeal(s) could be withdrawn at any time. To put this another way, will it be cost-effective for alleged infringers to intervene if they believe that a withdrawal of the appeal is likely?

This Decision highlights the need for companies to be proactively monitoring competitor activity, enabling them to engage in opposition proceedings early if they suspect they could have freedom to operate concerns. EPO oppositions remain by far the most cost-effective way to remove a competitor patent in Europe, and even a partial success at opposition (i.e., forcing an amendment of the patent) may be enough to give freedom to operate.

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