T 0202/89 (Entitlement of intervener to appeal) of 7.2.1991

Summary of Facts and Submissions

I. European patent No. 0 110 342 was granted on 29 October 1986 in respect of the subject-matter contained in European patent application No. 83 111 805.4 filed on 25 November 1983 claiming the priority of an earlier German application dated 6 December 1982.

II. On 26 March 1987 Arova-Mammut AG (opponent) filed notice of opposition to the patent as granted and requested that the patent be revoked.

III. In a decision dated 4 January 1989, the Opposition Division rejected the opposition on the basis of Article 102(2) EPC. The decision was despatched the same day by registered post with advice of delivery.

IV. In a letter dated 17 February 1989 received on 18 February 1989, Westdeutscher Drahtseil-Verkauf Dolezych GmbH & Co. KG (the intervener) gave notice under Article 105 EPC of intervention in the opposition proceedings and at the same time filed an appeal. On 18 February 1989 the intervener paid the opposition fee and fee for appeal. The statement of grounds for appeal was filed on 31 March 1989.

The opponent did not file an appeal.

V. In support of its intervention, the intervener stated that the proprietor of the contested patent (SPANSET INTER AG) had instituted infringement proceedings against it on 25 January 1989. A copy of the document instituting proceedings accompanied its letter of 17 February 1989.

VI. In a communication under Article 110(2) EPC dated 17 November 1989, the Board informed the parties that its preliminary view was that the intervener had not become a party to the proceedings and the Opposition Division's decision had become final on expiry of the appeal period. It gave inter alia the following reasons:

The notice of intervention was only filed pursuant to Article 105(2) EPC during the appeal period after the issue of the decision of the Opposition Division. In such circumstances the intervener did not fulfil the requirements of Article 107, first sentence, EPC, and it is not entitled to appeal. On the other hand, the opponent which - in contrast to the intervener - was a party to the proceedings in which the decision was given within the meaning of Article 107, first sentence, EPC, did not file an appeal within the time limit laid down in Article 108 EPC. On expiry of that time limit, the Opposition Division's decision became final because the intervener had no right of appeal.

VII. In a letter dated 29 November 1989 received on 2 December 1989, the intervener commented on the Board's communication, inter alia as follows:

- The Board's view that an intervener is not entitled to appeal if notice of intervention is filed during the appeal period after issue of a decision of the Opposition Division, and furthermore if no other party to the proceedings has filed an admissible appeal is not supported by Article 107, first sentence, EPC. Opposition proceedings end only when an Opposition Division's decision has become final.

Thus, in the present case, notice of intervention was filed while proceedings were still pending. The intervener was therefore a party to the opposition proceedings and was also adversely affected by the Opposition Division's decision.

- Neither Article 105 nor Article 107 EPC expressly requires notice of intervention to be filed before the Opposition Division gives its decision. Nor can this be inferred from the wording of Article 107 EPC. Had the legislator really intended notice of intervention under Article 105 EPC to be filed prior to an Opposition Division decision, this would almost certainly have been indicated in the text.

- Under German law (Section 81(2) of the Patent Law), revocation proceedings in respect of a patent cannot be instituted whilst ... opposition proceedings are pending. If, therefore, notice of intervention under Article 105 EPC must have been filed, according to the Board's preliminary view, before 4 January 1989 (which was quite impossible as infringement proceedings were not instituted until later), the assumed infringer would be prevented from taking any action until the appeal period expired. It would have been unable to contest the patent in suit either under the EPC or under the German Patent Law. On that basis, in an extreme case, the proprietor of a European patent would have at his disposal a patent which could not be contested by an assumed infringer for the duration of the two-month appeal period - at any rate insofar as its effect extends to the Federal Republic of Germany and the assumed infringer is not an opponent. This cannot have been intended by the European legislator. For this reason also it must still be possible for a party to intervene under Article 105 EPC by filing an appeal after an Opposition Division has taken its decision.

VIII. The intervener has requested in the alternative that the point of law - i.e. whether an intervener is entitled to appeal if he only intervenes in opposition proceedings during the appeal period - be referred to the Enlarged Board of Appeal, should the Board not follow the intervener's argument. The patent proprietor and the opponent abstained from making comments as to the merits.

Reasons for the Decision

1. The intervention complies with Article 105 EPC; it is deemed to have been filed on 18 February 1989 (Article 105(2), second sentence, EPC).

Although the appeal filed by the intervener complies with Articles 106 to 108 and Rules 1(1) and 64 EPC, the question arises as to whether it is in fact entitled to appeal in the present case.

2. It can hardly be disputed that an intervener who files notice of intervention before the Opposition Division gives its decision is entitled to appeal (see 5 below). It is also generally agreed that on the basis of Article 105 in conjunction with Rule 66(1) EPC notice of intervention may still be filed during appeal proceedings (cf. Singer, Kommentar zum europäischen Patentübereinkommen, Carl Heymanns Verlag KG, Cologne, Berlin, Bonn, Munich, 1989, Art. 105, point 4; Schulte, Patentgesetz, 4th edition, Carl Heymanns Verlag KG, Cologne, Berlin, Bonn, Munich, 1987, Section 59, point 83; decision T 338/89 dated 10 December 1990, point 4). Rather more controversial is the question whether the intervener also has a right of appeal if he intervenes during the appeal period (see 6 below).

3. How this question is answered depends primarily on the interpretation given to Article 107 EPC.

4. Under Article 107 EPC, only such persons may appeal who on the one hand were a party to the proceedings which resulted in a decision, and on the other hand are adversely affected by the decision. Being a party to proceedings and being adversely affected are therefore the criteria determining entitlement to file an appeal. Sufficient attention, however, should also be paid to the object and intention of Article 105 EPC when these concepts are interpreted.

5. Article 105(1) EPC provides that the party against whom infringement proceedings have been instituted may intervene in the opposition proceedings even after the opposition period has expired. Under Article 105(2) EPC, the intervention is thereafter treated as an opposition, subject to any exceptions laid down in the Implementing Regulations. This means that the intervener is also entitled, in principle, to seek redress by filing an appeal. Rule 57(4) EPC, the only provision of the Implementing Regulations which refers to intervention, does not preclude this. The sense of Article 105 EPC (its object and intention) should moreover be interpreted as giving the party against whom infringement proceedings have been instituted the opportunity to intervene in opposition proceedings already pending, in order to preserve his legitimate interests vis-à-vis the party instituting infringement proceedings and the patent proprietor, as a means of avoiding the generally far more costly revocation proceedings at national level.

6. In connection with the questions which arise as to the requirements which have to be met if an intervener is to have a right of appeal under Article 107 EPC, both regarding the time of filing of intervention and as to when a person is adversely affected, the Board would comment as follows:

6.1. Singer (loc.cit., Art. 105, point 4, last paragraph) takes the view that the intervener does not have a right of appeal if he files notice of intervention during the appeal period (cf. also Part D, Chapter VII, point 7 of the Guidelines for Examination in the EPO, where the same opinion is expressed). Schulte (loc. cit., Section 59, point 83), on the other hand, holds that a right of appeal exists in this case. Neither commentator, however, appears to have gone into the reasons for his particular view.

6.2. The teaching makes a distinction between when a person is adversely affected formally and substantively. The former situation exists, for example, when the Opposition Division's contested decision departs from the request filed in opposition proceedings. In contrast, however, a person is adversely affected substantively if the Opposition Division's decision has an adverse effect on a party to opposition proceedings without taking into account his request filed during opposition proceedings.

6.3. As a general rule, it has to be assumed that the opponent is adversely affected within the meaning of Article 107 EPC and therefore entitled to appeal only if the Opposition Division's contested decision departs from the request made during opposition proceedings (adversely affected formally; see 6.2 above). In contrast to this, the patent proprietor may be adversely affected without having filed a request in the opposition proceedings from which the contested decision departs (adversely affected substantively; see paragraph 6.2 above). In actual fact, if the Opposition Division revokes a European patent, it may realistically be assumed that the patent proprietor has "implicitly" requested during the opposition proceedings that the patent be maintained as granted (action implying intention, in place of a declaration of intention in the form of a written request).

6.4. In the legal situation of an intervener who is only able to file notice of intervention during the appeal period (because infringement proceedings were not instituted earlier) such a person cannot be adversely affected formally because he was unable in such circumstances to file a request during the opposition proceedings. If, however, during opposition proceedings the European patent is maintained in a form which does not invalidate the infringement suit - or, more accurately, the claim made by the party, and patent proprietor, instituting infringement proceedings - it would, on the other hand, be wrong to maintain that the intervener and party accused of infringement was not adversely affected within the meaning of Article 107 EPC. Since the intervener is simultaneously defendant in the infringement suit brought by the patent proprietor, his situation legally is fully comparable to that of the patent proprietor whose European patent is revoked (see 6.3 above). It follows from the above that if a person is adversely affected substantively (see 6.2 above), an appeal should be possible in this case as well.

6.5. If it is assumed that the intervener also has a right of appeal where he is only adversely affected substantively, the question then arises how to interpret the wording in Article 107 EPC that reads "Any party to proceedings adversely affected by a decision ...". Nothing may be inferred in this respect from the literature on this Article. If, however, the object and purpose of Article 105 EPC (see 5 above) and also the fact that opposition proceedings end only when the appeal period expires are taken into consideration, it may very well be held that the intervener who is unable to file notice of intervention before the Opposition Division has given its decision but only during the appeal period, should likewise be entitled to appeal. On the other hand, it has to be conceded that the aforementioned wording of Article 107 EPC would appear to exclude an intervener who was not a party to the opposition proceedings before the Opposition Division issued its decision being entitled to appeal.

7. It is evident from these comments that the question as to whether the party who only files notice of intervention in opposition proceedings during the appeal period also has a right of appeal is an important point of law. The Board therefore considers it necessary for the Enlarged Board of Appeal to examine this point of law and take an authoritative decision.

ORDER

For these reasons it is decided that:

By virtue of Article 112(1)(a) EPC, the following point of law is referred 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?"