No delay following an intervention to an accelerated EPO appeal during parallel UPC proceedings (T 1841/23)

The Board of Appeal decision in T 1841/23 considered the correct approach to third party interventions running in parallel with UPC infringement proceedings. The decision particularly provides guidance on how interventions should be handled when they arrive shortly before oral proceedings, particularly in accelerated cases.

Legal background: Postponement of proceedings in view of an intervention

Third party intervention in opposition proceedings is governed by Article 105(1) EPC, which states that any third party may intervene in opposition proceedings after the opposition period has expired if proceedings for infringement of the opposed patent have been instituted against them. While such an intervention is to be treated as an opposition (Article 105(2) EPC), questions arise regarding procedural fairness and the right to be heard under Article 113(1) EPC when interventions occur late in appeal proceedings. Article 113(1) EPC stipulates that "[t]he decisions of the European Patent Office may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments."

A different issue related to interventions has also recently been referred to the Enlarged Board of Appeal (EBA) (G 2/24) (IPKat). The referral in G 2/24 asks whether, after withdrawal of all appeals, the proceedings should be continued with a third party who intervened during the appeal proceedings. 

Case background

The patent at issue in this case (EP2387844) related to managing associated sessions in a network. The patent was owned by Koninklijke KPN. The main request included claims specifying a multimedia client configured for sending requests to initiate composition sessions.

The patent was opposed by Beijing Xiaomi Software Co., Ltd (Opponent 1). During the opposition proceedings, the Opposition Division maintained the patent in amended form. Opponent 1 appealed this decision.

Following information from the UPC that parallel infringement proceedings were pending before the UPC, the Board of Appeal decided to accelerate the EPO appeal proceedings. Shortly before the scheduled oral proceedings, Orope Germany GmbH (Opponent 2), a defendant in the parallel UPC infringement case (ACT_49150/2024), filed a notice of intervention. 

The Patentee's arguments for postponement

The Patentee made multiple attempts to secure additional time to respond to the intervention. Their first request cited insufficient time to respond to new submissions, the right to be heard, and the unavailability of a technical expert.

Parallel proceedings

When their first request was refused, the Patentee filed a reconsideration request, arguing that two weeks to respond to what should be treated as a new opposition violated Article 113(1) EPC. The Patentee contended that time pressure created an inequality of arms between parties, noting that Opponent 2 had taken two months to prepare their intervention after being served with UPC proceedings.

At oral proceedings, the Patentee raised additional arguments about the practical difficulties of preparing an adequate response in such a compressed time frame. In particular, they highlighted the challenge of drafting auxiliary requests that would both satisfy the EPC and provide optimal protection in view of the parallel UPC proceedings. They also argued that Article 14 RPBA, referring to Article 12(1)(c) RPBA's four-month response period, should apply.

The Patentee further cited  T 1961/09, arguing that according to this decision, continuing oral proceedings could only be fair if the intervener made no submissions. 

The Board of Appeal's response

The Board of Appeal rejected all of the Patentee's arguments for a postponement of the oral proceedings.  Particularly, the Board of Appeal found that whilst an intervention is treated as an opposition, its timing does not automatically entitle parties to more time. As stated in the decision:

"While an admissible intervention is to be treated as an opposition (Article 105(2) EPC), its filing shortly prior to the oral proceedings before a board does not generally excuse the proprietor (or the other parties), and in particular it does not hand them a voucher for more time." (r.4.5)

The Board of Appeal took a particularly firm stance on attempts to delay proceedings due to parallel litigation:

"Nor are opposition appeal proceedings designed to serve as a placeholder for tactical considerations in parallel proceedings for infringement. They are rather an existential challenge to the title, on the basis of which enforcement is pursued in the infringement proceedings" (r.4.6)

Addressing the Patentee's procedural fairness arguments, the Board of Appeal noted that the accelerated status of the proceedings justified shorter time periods than those prescribed in Article 12(1)(c) RPBA. The Board of Appeal emphasised that it had given clear guidance on which aspects of the intervention were most relevant, helping parties focus their responses despite the compressed timeline.

The Board of Appeal also distinguished the present case from T 1961/09 on its facts. As the Board of Appeal explained "[i]n the present case, unlike the one underlying T 1961/09, the notice of intervention did, in the now relevant parts, not raise any further objections or new issues, but only argued on old topics" (r.1.5.3).  Thus, the Board of Appeal found no conflict between its approach and T 1961/09, noting that "[g]iven the reservations indicated in Catchword 2 of said decision ('normally'; 'may'), there seems to be no appreciable disagreement between the two boards in methodological terms" (r.1.5.3)

In addressing the Patentee's arguments about inequality of arms, the Board of Appeal cited T 392/97 for the principle that an intervener must take proceedings as they find them. The Board of Appeal noted it was "not the proprietor, but opponent 2, that entered the proceedings shortly before the oral proceedings before the board" (r.4.4.11).  By contrast, "Opponent 2 asked for nothing more than the continuation of the proceedings as scheduled [...] the proprietor participated in the opposition proceedings from the outset [and[ itself has been engaged for more than two years in the debate on the added-matter objection" (r.4.4.11).  

The Board of Appeal therefore rejected the Patentee's request for a postponement, and oral proceeding went ahead according to the original schedule. 

Board of Appeal's added matter analysis

On the substantive issues, the Board of Appeal found that the claims contained subject matter extending beyond the content of the application as filed (Article 123(2) EPC). Specifically, the feature of "a multimedia client configured for sending a request for initiating the composition session" was found to be not directly and unambiguously disclosed in the application as filed.

The Board of Appeal found that while the application disclosed that a multimedia client could be "configured for initiating a composition session", it did not specifically disclose that this initiation had to occur through "sending a request" (r.2.1.4)

The patent was thus ultimately revoked by the Board of Appeal. 

Final thoughts

The UPC case (ACT_49150/2024) is still running. However, it is unclear how the UPC will now respond to the Board of Appeal's decision. It is anticipated that, in parallel EPO-UPC cases, the faster procedural timelines of the UPC will mean that the UPC will issue decisions before the EPO Board of Appeal. However, the case in T 1841/23 demonstrates the EPO's willingness not only to accelerate appeals in view of parallel UPC proceedings, but also it's unwillingness to accept delays to these proceedings.  T 1841/23 suggests that the EPO Board of Appeal will not be willing to sacrifice procedural economy merely because of interventions from parties to parallel UPC proceedings. We now await to see if and how the UPC will take into count the outcomes of EPO appeals in parallel cases. 

Further reading

• UPC finds that it has jurisdiction to consider infringement in the UK (UPC_CFI_355/2023) (Jan 2025)
• The UPC's first decision on infringement by equivalence (Plant-e v Bioo, UPC_CFI_239/2023) (Jan 2025)
• EPO Referral (G2/24) on third-party interveners acquiring appellant status - a chance to depart from G 3/04? (Jan 2025)