G 0004/91 (Intervention - DOLEZYCH II) of 3.11.1992

Summary of Facts and Submissions

I. On 7 February 1991 Technical Board of Appeal 3.2.1 issued an interlocutory decision in case T 202/89, setting out inter alia the following facts:

An opposition against the European patent in suit was filed on 26 March 1987 by an opponent. A decision was issued by the Opposition Division on 4 January 1989, in which the patent was maintained unamended. On 25 January 1989 the patent proprietor instituted proceedings for infringement of the patent against a third party in Germany. On 18 February 1989 this third party filed a notice of intervention pursuant to Article 105 EPC; he also filed a notice of appeal at the same time, and he paid opposition and appeal fees on the same day. The opponent did not file an appeal.

The third party subsequently filed a statement of grounds of appeal on 31 March 1989. The patent proprietor filed observations in reply to the statement of grounds of appeal on 26 July 1989.

In a communication issued on 17 November 1989, the Technical Board of Appeal indicated that since the third party - "the assumed infringer" - had not taken part in the proceedings before issue of the decision of the Opposition Division, he was not entitled to appeal having regard to Article 107 EPC. Observations in reply were invited from the assumed infringer, as well as from the patent proprietor and opponent.

The assumed infringer filed observations in reply by letter dated 29 November 1989, which are summarised in the decision dated 7 February 1991.

The patent proprietor and the opponent filed no observations on the contents of the communication.

II. The decision dated 7 February 1991 referred the following question to the Enlarged Board of Appeal:

"Does a party which gives valid notice of intervention in opposition proceedings (Article 105 EPC) during the period for appeal following the Opposition Division's decision have a right of appeal under Article 107 EPC?"

III. In a communication issued on 9 April 1992, the Enlarged Board of Appeal indicated its provisional view that a notice of intervention could only be validly filed at a point in time when opposition proceedings are in existence. In the case before the referring Board of Appeal, no appeal had been filed by the opponent, and in such a case the Enlarged Board might consider that the notice of intervention which was filed during the period for appeal was filed at a time when the opposition proceedings were not in existence, and consequently had no legal effect.

The assumed infringer filed observations in reply on 30 April 1992. He submitted in particular that opposition proceedings before an Opposition Division are terminated only when the decision of the Opposition Division takes legal effect, that such a decision does not take legal effect so long as an appeal may be filed, and that consequently a notice of intervention could be validly filed during the period of appeal, whether or not a party to the proceedings before the Opposition Division filed an appeal.

The assumed infringer supported these arguments by reference to German law, according to which it would not be possible to file a nullity action in a German court against a European patent having effect in Germany until a decision of the Opposition Division concerning the European patent has taken legal effect. He therefore relied upon the fact that if, with reference to the case before the referring Board of Appeal, the Enlarged Board held that a notice of intervention filed during the period for appeal had no legal effect, the result would be that, in the two-month period for appeal following issue of a decision of an Opposition Division, the assumed infringer would not be able to challenge the validity of the European patent either by intervening in the opposition proceedings under the EPC, or by commencing a nullity action under German law.

The patent proprietor and the opponent did not file any observations on the communication of the Enlarged Board of Appeal.

Reasons for the Decision

1. When a European patent is granted, it has the effect in each designated Contracting State of a national patent granted by that State (Articles 2 and 64(1) EPC). It thus becomes a bundle of national patents within the individual jurisdictions of the designated States. Any alleged infringement of a granted European patent is dealt with by national law (Article 64(3) EPC). Infringement proceedings may be commenced by the patent proprietor in any Contracting State for which the patent was granted, at any time after grant of the patent.

Part V of the EPC (Articles 99 to 105) sets out an "opposition procedure", under which any person may file an opposition to a granted European patent at the EPO within nine months of its grant, and may thereby contend in centralised opposition proceedings before an Opposition Division of the EPO that the patent should be revoked, on one or more stated grounds. The effect of revocation is set out in Article 68 EPC. Opposition proceedings therefore constitute an exception to the general rule set out in paragraph 1 above that a granted European patent is no longer within the competence of the EPO but is a bundle of national patents within the competence of separate national jurisdictions.

2. Article 105 EPC contains provisions which enable a third party (the "assumed infringer"), who has not himself filed an opposition against a European patent, but who is allegedly infringing such a patent, to intervene in opposition proceedings initiated by another party, after the nine-month opposition period has expired.

In order that he may so intervene in opposition proceedings, such a third party must prove either that proceedings before a national court for alleged infringement of a European patent which is the subject of an opposition have been instituted against him, or that the patentee of such a patent has requested that he cease alleged infringement of the patent and that he has instituted proceedings before a national court for a ruling that he is not infringing such patent (see Article 105(1) EPC).

Thus intervention is provided for when both opposition proceedings before the EPO and infringement proceedings before a national court are in existence at the same time, in respect of the same European patent. Intervention must be initiated by the assumed infringer by the filing of a notice of intervention at the EPO within three months of the date on which the infringement proceedings were instituted.

After filing of the notice of intervention, in accordance with Article 105(2) EPC the intervention is treated as an opposition, and the law and procedure laid down in Articles 99 to 104 and in Rules 55 to 63 EPC are therefore applicable, mutatis mutandis.

3. If opposition proceedings (whether or not including intervention proceedings) before the EPO are in being at the same time as infringement proceedings (and any related proceedings concerning the validity of the patent) before a national court, the national court may be asked to consider whether to suspend its proceedings pending a decision in the opposition proceedings before the EPO. In this way an unnecessary duplication of proceedings can be avoided: in particular, if the decision in the opposition proceedings is to revoke the patent, this is clearly decisive for the national proceedings as well.

4. An object of the intervention procedure provided by Article 105 EPC is to enable the validity of a European patent to be determined within centralised opposition proceedings before the EPO, rather than one or more national proceedings.

Whether intervention can take place depends upon whether the requirements of Article 105 EPC are fulfilled, and depends in particular upon the timing of the filing of a notice of intervention, both in relation to the date upon which national infringement proceedings were instituted (as noted in paragraph 3 above), and also in relation to the opposition procedure.

5. In the present case, the notice of intervention was necessarily filed after the Opposition Division had been issued, because infringement proceedings before a national court were only instituted by the patent proprietor after such decision had been issued. The notice of intervention was filed within the two-month period for appeal from such decision provided by Article 108 EPC.

The referring Board of Appeal in its decision took the view that the notice of intervention had been validly filed during such period for appeal, but questioned whether the intervener had a right to appeal from the decision of the Opposition Division. The referring decision points out in paragraph 4 that under Article 107 EPC, in order to be entitled to appeal, a person must on the one hand have been a party to the proceedings which resulted in a decision, and must furthermore be adversely affected by the decision. In paragraph 6, the referring decision discusses both of these requirements, and in the light of such discussion the question set out in paragraph III was referred to the Enlarged Board of Appeal.

6. In the view of the Enlarged Board of Appeal, it is an open question whether a notice of intervention could in fact be validly filed at any time after the issue of the decision of the Opposition Division in a case such as the present one. Contrary arguments are clearly possible on this point.

On the one hand, it could be argued that appeal proceedings are a continuation of opposition proceedings, and that at least in a case where an appeal has been filed by one of the original parties to the opposition, the opposition proceedings are still in existence as long as the appeal proceedings have not been completed by the issue of a final decision, and therefore a notice of intervention can be filed at any time during such appeal proceedings (as well as during any further proceedings before the Opposition Division if the case is remitted back to the first instance under Article 111(1) EPC).

In support of that point of view, it could be said in particular that an object underlying Article 105 EPC is to enable the validity of a European patent which is the subject of infringement proceedings before a national court to be determined centrally within opposition proceedings before the EPO, so long as the EPO (either the Opposition Division or a Board of Appeal) has seisin of such opposition proceedings.

On the other hand, it could be argued that opposition proceedings are separate from appeal proceedings, and that the term "opposition proceedings" as used in Article 105 EPC is intended to refer only to proceedings before an Opposition Division. On that basis a notice of intervention could only be filed before the Opposition Division has issued a decision on the issues raised in the opposition. In support of that point of view, it could be said that an object underlying Article 105 EPC is to allow intervention by an assumed infringer only at a stage when the intervention can be easily assimilated procedurally into the already existing opposition proceedings, and that to allow intervention at a later stage would be likely to lead to procedural complications and delay in deciding upon the validity of the European patent in suit.

7. In the present case, in view of what is stated below, the Enlarged Board of Appeal does not need to decide upon such broader issues concerning the interpretation of Article 105 EPC.

As indicated in paragraph 2 above, a necessary prerequisite for intervention in opposition proceedings by an assumed infringer pursuant to Article 105 EPC is that there must be opposition proceedings in existence, in which the assumed infringer may intervene. By definition, the possibility that an infringer may "intervene in the opposition proceedings" which is provided by Article 105 EPC presupposes that there are opposition proceedings in which intervention is possible. The possibility that an assumed infringer may initiate proceedings by the filing of a notice of intervention is not envisaged by Article 105 EPC. Thus at a point in time when no opposition proceedings are in existence concerning the European patent which is the subject of national infringement proceedings, a notice of intervention cannot be filed.

In the circumstances of the case with which the referring Board is concerned, the decision issued by the Opposition Division decided upon the issues raised by the opposition, and was therefore a final decision of the Opposition Division, in the sense that thereafter the Opposition Division had no power to change its decision on such issues. Upon the issue of such decision, therefore, the proceedings in that case were terminated, and remained terminated in the absence of the filing of an appeal by a party to the opposition proceedings. This is so regardless of the date on which the decision of the Opposition Division takes legal effect.

Consequently, at the point in time when the assumed infringer filed the notice of intervention, there were no proceedings in existence in which to intervene.

It follows that in the judgment of the Enlarged Board of Appeal, in the circumstances of the case before the referring Board, the notice of intervention was not filed in the course of opposition proceedings, and is therefore deemed not to have been filed, and has no legal effect.

In view of this finding, the question which was referred to the Enlarged Board of Appeal does not arise in the case before the referring Board, and does not require an answer.

ORDER

For these reasons it is decided that:

In a case where, after issue of a final decision by an Opposition Division, no appeal is filed by a party to the proceedings before the Opposition Division, a notice of intervention which is filed during the two-month period for appeal provided by Article 108 EPC has no legal effect.