EPO decisions

This month’s contributor from Bristows is Selina Badiani.

Legal Board of Appeal (LBA) and Technical Board of Appeal (TBA) decisions are available on the EPO website at www.epo.org/law-practice/case-law-appeals/recent.html and similarly decisions of the Enlarged Board of Appeal (EBA) can be downloaded from www.epo.org/law-practice/case-law-appeals/eba/number.html. A list of the matters pending before the Enlarged Board is included at www.epo.org/law-practice/case-law-appeals/eba/pending.html.

Recent notices and press releases of the EPO are published at www.epo.org/service-support/updates.html and www.epo.org/news-issues/press/releases.html respectively, and recent issues of the Official Journal can be downloaded from www.epo.org/law-practice/legal-texts/official-journal.html.

Interventions – article 105 EPC, rule 89 EPC

T 0304/17: IL-17 A/F heterologous polypeptides and therapeutic uses thereof/Genentech Inc TBA decision of 10 January 2020 Chairman: M. Blasi Members: R. Morawetz and A. Schmitt

This was an appeal by the patentee following the decision of the Opposition Division to revoke the patent under article 123 EPC. However, the most significant point arising from this decision concerns interventions under article 105 EPC.

A third party may intervene in ongoing opposition proceedings, if “proceedings for infringement of the same patent have been instituted against him” (article 105(1)(a) EPC), 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” – article 105(1)(b) EPC. Rule 89 EPC stipulates that any such intervention must be filed within three months of the date of the event referred to in article 105. The grounds are mutually exclusive such that once the opportunity has arisen for a third party to intervene under one ground then subsequent fulfilment of the requirements under the other ground does not give a second opportunity to intervene.

In this case, there were parallel UK proceedings relating to the same patent. Eli Lilly had issued a revocation action and sought a declaration of non-infringement on 3 July 2017. On 6 December 2017, the patentee gave a binding undertaking to the UK Court that it would bring a counterclaim for infringement, but this was not filed until 5 January 2018. Eli Lilly filed a notice of intervention in the EPO opposition proceedings on 4 April 2018.

It was not disputed that the intervention was filed within three months of the filing of the counterclaim and so within time under rule 89 based on article 105(1)(a). However, the patentee argued that the opportunity to intervene had arisen at an earlier stage under article 105(1)(b) and the intervention had not been filed within three months of this event. The patentee argued that article 105(1)(b) did not specify a chronology of events and the three-month time limit was triggered once the two conditions in this article were fulfilled; whichever order those took place.

The TBA disagreed. Firstly, in both article 105(1)(a) and (b) it is the formal institution of legal proceedings that triggers the opportunity to intervene. To allow other triggers would result in legal uncertainty. Secondly, article 105(1)(b) clearly sets out a particular chronology of events and the travaux preparatoires showed that this sequence of events had been specifically chosen by the legislator. The alleged infringer therefore had no grounds to intervene under article 105(1)(b). The TBA therefore found that the intervention had been validly filed under article 105(1)(a).

The TBA rejected the patentee’s further argument that its counterclaim for infringement could not act as a trigger under article 105(1)(a) as a counterclaim did not result in the commencement of new and separate proceedings. The TBA held that this was irrelevant as it was a “consequence of the relevant national law” and that under UK law a counterclaim is treated in the same way as a free-standing claim.