T 0027/92 (Intervention) of 8.7.1993

Summary of Facts and Submissions

I. In its decision of 22 October 1991 the opposition division rejected the oppositions filed by Sika Robotics AG, 8627 Grüningen, Switzerland (Opponent I) and Rocas Rohr- und Kanal- Service GmbH, 73730 Esslingen, Federal Republic of Germany (Opponent II) against patent EP-B-0 211 825 held by KA-TE System AG (formerly Kunststoff-Technik AG Himmler), 8041 Zurich, Switzerland. The two opponents (represented by the same patent attorneys) each filed against this decision an appeal dated 19 December 1991 which was received by the EPO on 20 December 1991, at the same time paying the appeal fee. Each also filed grounds for their appeal dated 21 February 1992, which were received by the EPO on the same day.

II. During the appeal proceedings, Teerbau GmbH, 45257 Essen, Federal Republic of Germany, filed (through the same patent attorneys) a statement dated 13 November 1992 (received by the EPO on the same day) to the effect that they were intervening in "the opposition proceedings currently under appeal", at the same time paying an opposition fee and an appeal fee. This was in response to the institution of infringement proceedings against them by the patent proprietors before the Düsseldorf Regional Court on 19 August 1992. They stated that under the relevant German law these proceedings were to be regarded as having been instituted on 27 August.

III. In essence, the two appellants and the intervening party are requesting revocation of the contested patent.

Reasons for the Decision

1. The appeals filed by Appellants I and II comply with Articles 106 to 108 and Rules 1(1) and 64 EPC and are therefore admissible.

2. The intervention complies with the formal requirements of Article 105 EPC. However, the question arises as to whether intervention is still admissible while appeal proceedings are pending.

3. This problem can be traced to the statements made by the Enlarged Board of Appeal in points 6 and 7 of its decision G 4/91 (OJ EPO 1993, 339), in which it addresses this question but without answering it, and also to the recently delivered decision T 390/90, point 2 (OJ EPO 1994, 808, published in this issue), in which intervention during appeal proceedings was ruled to be inadmissible.

4. An earlier decision of a board of appeal had accepted in principle the admissibility of intervention during appeal proceedings (see T 338/89 of 10 December 1990, point 4).

5. Intervention is provided for in Article 105 and Rule 57(4) EPC in view of the situation - a typical one in patent law - where an action for infringement runs parallel to opposition proceedings.

Article 105(1), first sentence, EPC reads as follows:

"In the event of an opposition to a European patent being filed, any third party who proves that proceedings for infringement of the same patent have been instituted against him may, after the opposition period has expired, intervene in the opposition proceedings ..."

Article 105(2), third sentence, EPC says the following:

"Thereafter the intervention shall, subject to any exceptions laid down in the Implementing Regulations, be treated as an opposition."

Rule 57(4) EPC states with regard to preparation of the examination of the opposition:

"In the case of a notice of intervention in opposition proceedings the Opposition Division may dispense with the application of paragraphs 1 to 3." The said paragraphs 1 to 3 relate to the communication of oppositions and to observations thereon.

6. Article 105(1), first sentence, EPC - quoted above - indicates clearly that the EPC (in contrast to the expedient known as joinder of parties which is used in the German law of civil procedure and elsewhere) makes provision not merely for intercession in support of an existing party to proceedings but for intervention in opposition proceedings generally.

6.1 The board takes the view that, in the light of Article 105(2), third sentence, EPC the intervener thus acquires independent status as a (main) party to the proceedings since his intervention - subject only to any exceptions laid down in the subordinate implementing regulations - is treated explicitly as an opposition (see also van Empel, The Granting of European Patents, p. 227, point 491, para. 1).

6.2 Given the admissibility of an intervention whose object goes beyond merely supporting the position of a party already involved in the proceedings, the purpose of Rule 57(4) EPC can be said to call for some elucidation. In the board's view, however, that purpose cannot consist in not involving the intervener in the proceedings or not informing him of the submissions of the other parties, but merely in ensuring that this does not take place within the periods provided for in Rule 57(1) to (3) EPC (see also van Empel, op. cit., p. 227, point 491, para. 2).

7. The question arises, however, as to whether the words "intervene in the opposition proceedings" in Article 105(1) EPC also encompass intervention in opposition appeal proceedings. The answer to be found in the historical documentation is unequivocally in the affirmative.

7.1 The issue was discussed at the 10th meeting of Working Party I in Luxembourg from 22 to 26 November 1971. The following passage appears on p. 45 of the relevant minutes (BR/144/e71):

"Should the defendant in infringement proceedings also be allowed to intervene if the opposition proceedings are before the Board of Appeal? The answer to this question was in the affirmative all round, as the appeals proceedings form part of the opposition proceedings."

At the 5th meeting of the Luxembourg Inter-Governmental Conference from 24 to 25 January and 2 to 4 February 1972 and from 26 January to 1 February 1972, it was again suggested that this question be re-examined (see the relevant minutes: BR/168/e72, p. 47, and BR/169/e72, pp. 45, 46). But according to the minutes of the meeting of Working Party I in Luxembourg from 28 February to 3 March 1972 (BR/177/e72), this suggestion was not followed up.

The preparatory work on the Convention also included a discussion of whether the board of appeal was obliged to refer the matter to the department of first instance if intervention took place at the appeal stage. But as a majority of the delegations opposed it, no provision was made for compulsory referral (see BR/144/e71, p. 46).

A further proposal which was rejected would have enabled the opposition division or the board of appeal to refuse an intervention which might delay the proceedings unduly (2nd meeting of the Co-ordinating Committee from 15 to 19 May 1972, BR/209/e72, p. 33). The argument that intervention ought not to be allowed because it might delay the proceedings was not accepted by the Munich Diplomatic Conference (M/PR/I, p. 51, point 421).

7.2 Intervention during appeal proceedings is also approved without reservation in the literature (see van Empel, op. cit., p. 228, point 492; Singer, Kommentar, p. 428, point 4 re Article 105 EPC).

7.3 The object and purpose of Article 105 EPC are clear from the historical documentation and more precisely from the minutes of the 10th meeting of Working Party I and the documents on which it worked (see BR/144/e71, p. 43). The latter contains the following passage:

"The object of this [ie of the proposed provision concerning the intervention of the assumed infringer (board of appeal's note)] is to ensure that the presumed patent infringer is not compelled to bring an action for revocation before the courts in the named Contracting States as long as central opposition proceedings are still pending. This would ensure a saving of time and also minimise as far as possible the danger of counter-rulings being made."

Point 7.1 above clarifies what is meant by pending "opposition proceedings".

Account was no doubt also taken of the fact that the boards of appeal had been endowed with competence to rule on the facts of a case.

8. Given the unequivocal purpose of Article 105 there appears to be no need to apply Article 107, whose purpose is different. It concerns the entitlement to appeal and to be a party to appeal proceedings in the light of the current status of those proceedings; it does not relate to what is in fact a different matter, namely a first involvement in the proceedings under special conditions, ie infringement proceedings instituted in the meantime on the basis of the contested patent.

9. In its decisions G 7/91 and G 8/91 (OJ EPO 1993, 356 and 346) the Enlarged Board of Appeal stated under point 7 that, for the purposes of procedural law, a clear distinction was to be drawn between proceedings before an opposition division and those before a board of appeal. This means that in those special circumstances the appeal proceedings are not to be regarded as part of the opposition proceedings. In the board's view, that statement nonetheless does not conflict with the legal opinion cited above, on which Article 105 is based.

The Enlarged Board of Appeal made the said statement in reference to the question of competence to continue the proceedings following withdrawal of the sole appellant's appeal. In doing so it saw a need to distinguish between opposition proceedings in the narrower sense and appeal proceedings. The former were considered to constitute that stage in the proceedings at which the opposition division is competent to arrive at a ruling on the basis of and relating to the requests submitted by the parties through an opposition under procedural law. However, the term "opposition proceedings" as used in Article 105 EPC is a form of words commonly adopted in procedural law to denote opposition proceedings in the broader, more general sense of proceedings before the opposition division including the subsequent legal expedient of going to appeal. The form of words chosen in Article 105 EPC is comparable to that relating for example to so-called "revocation proceedings", meaning the procedural steps before a first revocation department and also the subsequent procedural step (department). In both cases, there is no a priori assumption that the rules governing the procedures for the different departments, ie for the different procedural steps, have to be identical in every respect.

That aspect of intervention under consideration here, however, has to be distinguished from the question of a continuation of proceedings after the withdrawal of an appeal, which was the issue in G 7/91 and G 8/91. When the historical documentation, referring to interventions, includes appeal proceedings in the concept of "opposition proceedings", the latter term is clearly meant to be construed in the broader sense. That does not mean that the opposition proceedings (in the narrower sense) and the appeal proceedings are regarded as amalgamated or as being one and the same thing, but that the assault on a patent which was initiated through the opposition can be reviewed and continued before another department - the board of appeal - following a further request.

If the contracting states, when drafting the EPC, regarded the provisions set out in Rule 66(1) EPC as necessary and useful, this was simply because they presupposed that the concept of "opposition proceedings" encompassed these two aspects. Rule 66(1) EPC reads as follows:

"Unless otherwise provided, the provisions relating to proceedings before the department which has made the decision from which the appeal is brought shall be applicable to appeal proceedings mutatis mutandis."

Nothing else is said concerning intervention and the historical documentation cited above indicates unambiguously what the term "mutatis mutandis" means in this context.

10. Clearly, an appeal against a decision of the opposition division, ie opposition proceedings in the broader sense of Article 105 EPC, has to be pending to enable an intervention to take effect (see G 4/91, point 7).

In G 4/91 it was decided that proceedings as such cannot be regarded as pending merely because a period for appeal is running - i.e. because the opposition proceedings are to that extent still effectively continuing - if none of the parties to the opposition has appealed.

In the present case, two appeals were filed within the period for appeal. Appeal proceedings were thus pending.

11. Decision T 390/90 cited above, which rejected the intervention of an assumed infringer while appeal proceedings are pending, does not consider the dual meaning of the term "opposition proceedings" mentioned above and enshrined in the EPC. It only refers to the narrower of the two definitions.

It also takes the line that the judicial function and nature of the boards of appeal - by comparison with the work of an opposition division, which it regards as administrative - requires the term "mutatis mutandis" in Rule 66(1) EPC to be interpreted restrictively in any case. The board referring the point of law cannot assent to that view without reservation.

The boards of appeal do indeed conform to the concept of a court as used, for example, in Article 6 of the European Convention on Human Rights, whose application to litigation after the grant of a patent is not ruled out (no matter how much importance may attach to factors relating to civil procedure and/or judicial administration). The boards of appeal function independently, impartially, publicly and within reasonable time limits on the basis of statutory or internationally agreed norms, determine the facts themselves, apply the legal provisions of the EPC themselves and deliver decisions which are binding on the parties (see Karl/Miehsler, Internationaler Kommentar zur Europäischen Menschenrechtskonvention, 1st instalment, Cologne, 1986, points 143-148 and 282-289).

However, that alone does not necessarily point to a general conclusion regarding the application of Rule 66(1) EPC and the scope of the competence of the boards of appeal. While principles such as that of official investigation are generally applied (to a greater or lesser extent) in administrative proceedings, for example, there is no reason why they cannot also play a part in civil proceedings, depending on the type of lawsuit, the parties involved and the matter in dispute. The board therefore believes that the significance of Rule 66(1) EPC should always be scrutinised in the light of the specific procedural situation (see, for example, G 9/91 and G 10/91, points 17 and 18).

12. In view of these considerations and the previous practice referred to in point 4 above (see T 338/89) and given the legal opinion expressed in decision T 390/90 (see points 3 and 11 above), the board finds that the law has been applied in different ways. Furthermore, it considers the point of law thus raised to be an important one.

In accordance with Article 112(1)(a) EPC it has decided to refer the matter to the Enlarged Board of Appeal for a ruling.

ORDER

For these reasons it is decided that:

The following point of law is referred to the Enlarged Board of Appeal:

Is the intervention of an assumed infringer permissible under Article 105 EPC while opposition appeal proceedings are pending?