What is the status of an Intervener?
A new referral has been made to the Enlarged Board of Appeal relating to the question of whether an appeal can continue with an intervener only, if the appellant has withdrawn.
This issue was previously considered by the Enlarged Board in G3/04, who concluded that the Appeal could not be continued.
The G3/04 decision notes that the status of an intervener is defined in Article 105 EPC which states:-
- Any third party may, in accordance with the Implementing Regulations, intervene in opposition proceedings after the opposition period has expired, if the third party proves that
- proceedings for infringement of the same patent have been instituted against him, or
- following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for a ruling that he is not infringing the patent.
- An admissible intervention shall be treated as an opposition.
Thus, an intervener can gain the status of an opponent if the intervention is filed during an opposition. Once the intervener has acquired the status of an opponent, it can file an appeal, if desired, following Article 107 EPC, which states:-
Any party to proceedings adversely affected by a decision may appeal. Any other parties to the proceedings shall be parties to the appeal proceedings as of right.
However, as noted in G4/91, an intervention filed during the two-month period following issuance of a decision during which an appeal may be filed, has no legal effect if no other party has filed an appeal. Nevertheless, in accordance with G1/94, an intervention may be filed during appeal proceedings.
Nevertheless, the Enlarged Board in G3/04 concluded that an intervener may only acquire the status of an opponent, irrespective of whether the intervention is filed during an opposition or an appeal. Thus, an intervener may be a true appellant if the intervention was filed during the opposition stage, but not if it was filed during the appeal. Consequently, while an opposition may be continued by an intervener/opponent if other opponents withdraw, and can file an appeal, an appeal may not be continued by an intervener alone, if the intervention was filed during the appeal and if all other appellants withdraw.
This became relevant in recent decision T1296/23, where following grant of a patent to Foreo AB an opposition was filed by Beurer GmbH, based on lack of novelty and inventive step, and on added matter.
During the pendency of the opposition, Foreo sent a letter to Geske accusing them of infringment and threatening action. Geske filed an intervention based on this letter. While it had been accused of infringment, no proceedings had been initiated, and thus the intervention was rejected by the Opposition Division, in accordance with Article 105 EPC.
Geske filed a suit before the Dusseldorf District Court requesting a judgement of non-infringement and filed a second request for an intervention on the basis of this suit. Due to delays by the Dusseldorf Court, while there was no doubt that the suit had been filed, as it had not communicated to Foreo, the suit was not considered to be “instituted” or “pending” and thus this second request for an intervention was also rejected by the OD.
Meanwhile, the Decision on the opposition was issued, and Beurer file a Notice of Appeal, and subsequently Grounds of Appeal.
Finally, following formal acknowledgement of the proceedings for non-infringment, Geske filed a third intervention, requesting revocation of the patent and payment the opposition and appeal fees.
The Appeal Board issued its Summons to Oral Proceedings on 3 February 2024, setting a date of the proceedings of 27 June 2024. However, on 11 April 2024, Beurer withdrew its appeal.
In their review of whether to continue with the proceedings, the Board referred to G3/04, noting that this Decision indicated that an appeal may not continue with an intervener only. Nevertheless, the oral proceedings went ahead with the only topic being discussed that of Geske’s intervention.
It appears that the Board considered that Geske were in a very unfortunate position, in that they had tried to react to a letter accusing them of infringment and threatening proceeding using the intervention proceedings of the EPC, including by filing a request for a declaration of non-infringement, but that timings beyond their control had meant that, according to G3/04, they may be unable to proceed.
Firstly, the Board considered that the intervention and appeal related to the Decision of the OD to maintain the patent but also to the Decision of the OD regarding the second intervention. As the appeal was filed after the two-month decision following rejection of the second intervention, the Board considered it inadmissible in this regard.
Here, the Board considered that the first intervention was clearly not admissible as no action was “pending”. With regards to the second intervention, the Board considered that while the OD was correct to suggest that it, too, was inadmissible due to the action not being “pending”, the OD could equally correctly have reached the opposite conclusion, as there is no clear definition of “pending”. Nevertheless, as the OD was not incorrect, the Board could not have overturned the Decision regarding the admissibility of the second intervention, even if the appeal thereon had been timely filed. The third intervention was admissible, and despite an argument from Foreo, the repeated applications for an intervention were considered to be three attempts at a single bite at a cherry and not three bites of the same cherry.
Regarding the admissibility of the appeal as such, the Board indicated that its status was dependent on the admissibility of the third intervention and whether an intervener entering at the appeal stage may or may not acquire the status of an appellant.
The Board reviewed the Decision of G3/04 and noted that there the Enlarged Board considered that an intervener during an appeal acquires the status of a non-appealing opponent. The Appeal Board suggested that this was very hard on an intervener who was not able to file an intervention at an earlier stage. The Board also opined that the Enlarged Board’s Decision does not explain why an intervener at the appeal stage cannot obtain the status of an appellant, which would suggest that the status of the intervener would be dependent on the relationship between its request and the Decision appealed, and also on the action of the other opponents/appellants, which it considered not entirely reasonable.
As a result of their analysis, the Appeal Board concluded that:-
First, Article 105(2) EPC should be interpreted as follows:
An admissible intervention shall be treated as an opposition, and the intervener enters the proceedings with full rights as if it had been a party to the proceedings from the very beginning. This follows from the fiction established by Article 105(1)(a) or (b) EPC that the intervener is an opponent in spite of filing its opposition after the 9-months’ time limit stipulated by Article 99(1) EPC.
Second, if the intervener is permitted to enter at the appeal stage, and the intervener is to be considered an opponent with full rights (consistent with the abovementioned case law), then it is inequitable to demand from the intervener the impossible, namely to retroactively establish themselves as parties who have also been parties to the earlier proceedings, in order to satisfy the requirements of Article 107 EPC, either first or second sentence.
However, in order to continue with the appeal, the Appeal Board referred the following question to the Enlarged Board:-
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?
The referral has been accorded no G2/24 and we therefore await the decision by the Enlarged Board.