No benefit of hindsight: BA rejects ex tunc assessment of an intervention in opposition (T 0439/17)

In T 0439/17 (published online 1 July 2019), the Board of Appeal of the EPO considered the circumstances under which a third party may intervene in an opposition. In general, a third party may intervene in opposition proceedings, after the opposition period has expired, if infringement proceedings relating to the patent have been started against the third party (Article 105(1)(a) EPC). The meaning of "infringement proceedings" under this provision has presented some difficulties, given the diversity of potential "patent infringement" related court proceedings (civil and criminal) throughout EPC member states.

Third party intervenes

The meaning of "infringement proceedings" in Article 105(1)(a) EPC has been considered by the Boards of Appeal (BA) a number of times. In T 1713/11 (2012) the BA recognised that Article required the EPC to "accommodate for different national proceedings in its Member States, current and future". Consequently, the BA could "give no specific definition of what constitutes proceedings for infringement but can only refer to infringement in the broadest of terms" (T 1713/11, r. 2.2). The definition the Board then provided of "infringement proceedings" was: "proceedings meant to establish whether a third party is commercially active in an area that falls within the patentee's right to exclude" (r. 2.6).

Is an inspection claim equivalent to an infringement action? 

Before a claimant launches an infringement action in Germany, the court may order the inspection or seizure of relevant evidence from the premises of the suspected infringer (Section 485 (2) ZPO (German Code of Civil Procedure, English translation) and Section 140c (1) PatG (German Patent Law, English translation). This independent proof procedure or Beweissicherungsverfahren (BSV) is granted where there is a "reasonable likelihood of infringement". If granted, a court appointed expert provides an opinion on infringement based on the evidence. If the expert finds the patent to be infringed, the evidence is released to the patentee.

The case before the Board in T 0439/17 was whether a BSV could be considered "an infringement action" for the purposes of Article 105 EPC.

What if an infringement action is launched after the inspection claim?


T 0439/17 related to Rogers Corporation's patent for a ceramic metal substrate (EP1061783). Rogers is a large German electronics manufacturer. Heraeus filed an opposition against Rogers' patent within the 9 month opposition period (in 2014). In 2016, well after the expiry of the opposition period, the Korean chemical company KCC Corporation filed an intervention under Article 105(1)(a) EPC. KCC argued that a German inspection claim (BSV) initiated by Rogers against KCC was "an action for infringement" as required by Article 105(1)(a) EPC.

The Opposition Board (OB) was of the opinion that the BSV was not an action for infringement. KCC appealed the OB decision. In their appeal KCC did not dispute that the inspection claim was not an infringement action in and of itself. Instead, KCC pointed out that the evidence seized in the inspection was used in a subsequent infringement action (after KCC's intervention was filed). KCC argued that the inspection procedure could thus be regarded as part of the infringement action. The case, KCC argued, was therefore not comparable to that of the previous BA decision that had found that a BSV could not be considered an action for infringement (T 1746/15 (2017), r. 1.2).

The BA in T 0439/17 (3.4.03) was not convinced by KCC's arguments. Particularly, the BA could find no automatic or procedural link between the BSV and the subsequent infringement proceedings (r. 11). On the contrary, the Board agreed with the patentee that following a BSV, a patentee is free to decide whether to file an infringement claim or not, regardless of the nature of the evidence seized. The BA thus found that the BSV and infringement action could not therefore be said to be linked.

Can the admissibility of an intervention be assessed after the fact?

KCC also argued that the admissibility of the accession need not necessarily be assessed at the precise time of the submission. Other subsequent events (e.g. the bringing of an infringement action), should also be taken into account. KCC pointed to Rule 89 EPC as providing the possibility for ex tunc assessment, in particular the wording "the [statement to initiate proceedings] is only deemed to have been made when the [fee] prescribed has been paid". The Board also dismissed this argument (r. 13). The Board commented that the wording used in Rule 89 EPC was used throughout the EPC and was not considered to have a retroactive legal effect. The appeal was dismissed.

T 0439/17 therefore confirms that pre-infringement evidence procurement procedures in national courts are not considered sufficient to allow a third party to intervene in opposition proceedings. The Boards of Appeal maintain that the intervention under Article 105(1)(a) EPC is to be considered "a procedurally exceptional situation, which is justified only by a substantial legitimate interest of the assumed infringer to enter the opposition proceedings" (T 1713/11, r.2.2). The BA thus seeks to prevent the definition of "infringement proceedings" in Article 105(1)(a) EPC from being elaborated to encompass national procedures beyond an infringement action per se.

The onus is thus on potential infringers wishing to avoid lengthy and expensive national revocation proceedings to pay close attention to newly granted European patents, such that they can file timely oppositions of their own. The BA stresses that there can be no benefit of hindsight.