The party's over: EBA leaves late interveners stranded (G2/24)
Rose Hughes
The party's over: EBA leaves late interveners stranded (G2/24)
This Kat has often observed that arriving late to the party can have its drawbacks. The best treats are gone and you risk being left behind when everyone suddenly decides to leave. A similar fate can befall a party in patent proceedings at the EPO. The Enlarged Board of Appeal has just provided a clear, if perhaps unwelcome, answer for latecomers. In G 2/24, the EBA has confirmed the existing case law that an appeal is over when the original parties withdraw, and an intervening party cannot single-handedly keep it going.
Legal background: Gaining entry to the appeal proceedings
The European Patent Convention (EPC) provides a very specific mechanism for a third party, typically one accused of infringement, to join an opposition even after the nine-month opposition period has expired. This is the intervention under Article 105 EPC, whereby an alleged infringer may challenge the patent centrally at the EPO rather than fighting costly parallel revocation actions in national courts. Crucially, Article 105(2) EPC states that "An admissible intervention shall be treated as an opposition."
This all sounds straightforward, but there is a remaining question of what happens when the intervention occurs not at the first instance, but during an appeal? The rules for intervening once the challenge is at the appeal stage are covered by 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."
Herein lies the rub. To file an appeal yourself, you must have been a party to the original proceedings that led to the decision. An intervener who only joins at the appeal stage was, by definition, not there. They therefore join as a "party as of right". The key question for the Enlarged Board of Appeal in G 2/24, was whether being "treated as an opposition" gave the intervener the power to take over the appeal if the original appellant withdrew.
A clean break-up leaves the intervener stranded
The patent in question, EP 2941163, related to an oscillating handheld skin cleanser owned by Foreo Limited (the Patentee). An opposition was filed by Beurer GmbH (the Opponent). Meanwhile, another company, Geske GmbH & Co. KG (the Intervener), was accused of infringement and tried to intervene in the opposition proceedings. However, due to procedural issues, its first two attempts to intervene were deemed inadmissible by the Opposition Division.
Geske's first attempt to intervene was based on a warning letter it had received from the patent proprietor. However, the Opposition Division deemed this inadmissible. Under Article 105(1) EPC, a third party can only intervene if infringement proceedings have actually been instituted against them or if they have instituted proceedings for a ruling of non-infringement. A mere warning letter, which only threatens legal action, was not deemed to meet this legal threshold.
Therefore, to meet the requirement of Article 105(1) EPC, Geske then filed an action for a declaration of non-infringement in a German court followed by a second intervention at the EPO based on this court action. However, this attempt also failed due to a specific feature of German procedural law. Under German law, a court action is not considered legally "instituted" or "pending" until the formal claim has been served on and received by the defendant. At the time Geske filed its second intervention, the German court had not yet dispatched the claim to Foreo. Because the action had not been formally served, it was not considered instituted, and therefore the legal requirement for intervention under Article 105 EPC was, at that specific moment, still not met.
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| The party's over |
The Enlarged Board of Appeal had already considered the issue of interveners in its 2005 decision, G3/04. In G3/04, the facts were very similar to that of G2/24. In particular, an opponent filed an appeal, a third party intervened during the appeal proceedings, and then the opponent, who was the sole appellant, withdrew its appeal. The EBA ruled in In G3/04 that the proceedings could not be continued with the intervener. The EBA's logic was that an intervener at the appeal stage only acquires the status of a non-appealing opponent and has the same rights as any opponent who has not filed an appeal. When the sole appeal is withdrawn, the appeal proceedings are terminated for all parties, including the intervener.
However, for the referring Board of Appeal in the underlying case (T 1286/23) to G2/24, the established case law from G 3/04 needed revisiting. The referring Board of Appeal's position was that an intervener's right stems from an external legal interest (the national infringement proceedings) and that they should therefore be given full party status, including the right to continue the appeal alone.
The Board of Appeal therefore referred the following question to the EBA:
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?
No dynamic interpretation
The Enlarged Board of Appeal was not convinced by the argument that it should deviate from its previous decision and grant the intervener the right to continue the appeal alone. It began by noting that a Board of Appeal should only depart from an existing EBA decision if there is a compelling reason, such as a change in the law. The EBA noted that the relevant Articles of the EPC had not substantively changed since G 3/04 was decided (and there were presumably also no political pressures requiring a dynamic interpretation...(IPKat)).
Although this lack of legal change was seen by the EBA as good enough reason to uphold the existing case law, the EBA also took the opportunity to address the referring Board of Appeal's criticism of the fundamental reasoning and "unconvincing logic" of G3/04. Re-examining the issue from first principles, the EBA found that the original decision and reasoning in G3/04 was correct.
The EBA's reasoning rested on the fundamental nature of appeal proceedings under the EPC. The EBA emphasised that appeals are judicial in nature and not a mere continuation of the administrative opposition proceedings. They are governed by the principle of party disposition, which means "...the appellant [has the right] to initiate, determine the scope of, and conclude the procedure within that party's power of disposal...". Once the sole appellant withdraws, the very subject of the proceedings, the appeal itself, is gone.
An intervener at the appeal stage, the EBA confirmed, was not a party to the decision under appeal. As such, they cannot be an appellant in their own right. They are merely a "party as of right" under Article 107, second sentence, which grants them the right to participate in a pending appeal. This status is accessory and depends on the existence of the appeal itself. The EBA concluded that if the appeal is withdrawn, the rights of the non-appealing parties, including the intervener, are extinguished with it. As the decision concluded, "If the sole or all appeals are withdrawn in opposition appeal proceedings, the proceedings end with regard to all substantive issues for all parties involved and cannot be continued with an intervener at the appeal stage or any other non-appealing party".
The EBA thus ordered the following:
After withdrawal of all appeals, appeal proceedings may not be continued with a third party who intervened during the appeal proceedings in accordance with Article 105 EPC.
The intervening third party does not acquire an appellant status corresponding to the status of a person entitled to appeal within the meaning of Article 107, first sentence, EPC.
Final thoughts
This decision underlines that an intervener joins the proceedings as it finds them. The Board of Appeal's approach in this case confirms that the phrase "treated as an opposition" in Article 105 EPC has its limits. Article 105 grants an intervener the substantive rights of an opponent but not the procedural right to become an appellant if you were not a party to the decision being appealed.
What are the practical impacts? A third party facing an infringement suit cannot afford to be a passive passenger, relying on an existing opponent to see an appeal through to the end. The risk of the appellant withdrawing, perhaps as part of a settlement, is very real. This might prompt accused infringers to be more proactive in launching their own national invalidity actions.
G2/24 of course highlights the critical importance of filing an independent opposition within the nine-month period rather than waiting to intervene later. G2/24 particularly strengthens the patent owner's hand in settlement talks, as by settling with the main party to an appeal, the patentee may be able to strategically neutralise both the appeal and any dependent interventions. Does this create an injustice for parties like Geske, who were caught out by procedural technicalities? The Enlarged Board of Appeal's view in G2/24 is that its role is to interpret the law as it stands, not to create new rights. Any change, it noted, would require amending the legal text of the Convention itself. Unclear vico oral proceedings (IPKat) and plants produced by essentially biological processes (IPKat), there is clearly not desire for any legal fudge on this issue. However, at the very least, we can rejoice that we, for once, have a clear decision from the EBA that should not be subject to much variance in interpretation.