G 2/24 Enlarged Board of Appeal reaffirms that an Intervener at appeal cannot continue proceedings when all appeals are withdrawn

In G 2/24 the Enlarged Board of Appeal (EBA) re-examined whether a third party who intervenes at the appeal stage of opposition-appeal proceedings may continue the proceedings after withdrawal of all appeals. The EBA maintained the position established in G 3/04 that after withdrawal of all appeals, appeal proceedings cannot be continued with a third party Intervener at appeal. The EBA also confirmed that the Intervener at appeal does not acquire Appellant status.

Background: Interventions at the EPO

A third party having a European patent enforced against them may intervene in pending opposition proceedings at the European Patent Office (EPO) after the expiry of the nine month opposition period. The intervention is treated as an opposition. Article 105 EPC governing interventions provides two avenues for the third party to prove the right to intervene:

‘(a)        proceedings for infringement of the same patent have been instituted against him, or

(b)         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.’

G 1/94 confirmed that a third party can intervene when an appeal is pending from opposition proceedings. In addition, G 1/94 gives the Intervener at appeal the opportunity to file new grounds for opposition in their intervention. Normally, Opponent-appellants can only base their appeal on grounds raised in the opposition proceedings. However, the existence of an appeal relies on at least one party to the opposition having filed an appeal. The scope of the appeal is defined by all appeals filed. The appeal proceedings are terminated if all appeals are withdrawn. G 3/04 established that appeal proceedings cannot be continued with an Intervener during the appeal proceedings after all appeals have been withdrawn.

Background: The referral

In T 1286/23 an intervention was filed at appeal. In their intervention, the Intervener stated that they filed an appeal against the Opposition Division’s decision to uphold the opposed patent in amended form. The sole appeal was then withdrawn. The Board of Appeal decided to refer the following questions 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?’

The EBA’s decision in G 2/24

The EBA considered the merits of deviating from G 3/04. The EBA found G 3/04 to be in line with current law because the legal situation regarding Interveners at appeal has not changed in substance since G 3/04 was decided, despite amendment to the articles at issue.

The EBA reviewed the legal framework governing appeals and interventions. An appeal, which is governed by Article 107 EPC, is a judicial procedure the extent of which is determined by the Appellant and cannot leave a sole Appellant in a worse position than they started. From this starting point the EBA established that the party of Article 107 EPC, first sentence, namely “Any party to proceedings adversely affected by a decision may appeal”, is only a party that participated in the first instance proceedings, e.g., opposition proceedings. The required adverse effect “only exists if a decision of an administrative department falls short of the request of a party to the proceedings or deviates from it without their consent” (reasons 45). An Intervener at appeal did not participate in the first instance proceedings and so cannot become an Appellant. Instead, the Intervener at appeal becomes a party to the appeal proceedings as of right, in accordance with Article 107 EPC, second sentence. If all appeals are withdrawn, appeal proceedings cannot be continued with a third party Intervener at appeal because they are not an Appellant.

The EBA analysed interventions in national courts in member states and at the Unified Patent Court (UPC) to ensure a harmonized application of the European Patent Convention (EPC) with these jurisdictions. It found that an Intervener obtains independent party status only if there is an explicit legal provision stating such. Therefore, it concluded that granting an Intervener at appeal party status independent of the Appellant’s case would require a legal provision in the EPC.

These considerations led the EBA to rule:

‘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.’

Implications of G 2/24

Following this decision, the options available to an Intervener continue to depend strongly on the timing of the intervention. A third party’s intervention during the opposition proceedings is treated as an opposition. This comes with all rights and obligations of a party to the proceedings, including the right to file an appeal if they are adversely affected by the decision of the Opposition Division (G 3/04, reasons 10 and G 2/24, reasons 54).

A third party that intervenes at the appeal stage of opposition proceedings still becomes party to the appeal proceedings as of right. The Intervener can participate in the appeal proceedings, making submissions and arguments. However, the Intervener cannot continue the appeal if all Appellants withdraw their appeal.

We have observed a general trend of withdrawing appeals, potentially due to the available partial refunds of the appeal fee. An Intervener at appeal may therefore expect the appeal(s) to be withdrawn and so to be left without an opposition-appeal in which to intervene. Nonetheless, an intervention at appeal is still a useful tool available to potential infringers seeking to invalidate or limit the patent centrally for all member states. This can avoid individual legal proceedings in multiple member states and/or the UPC.

It is the patent proprietor’s decision to institute infringement proceedings against a third party or to request a third party cease alleged infringement. This gives the third party little control over when or if they can intervene in opposition proceedings. Conversely, patent proprietors should be mindful of pending oppositions when seeking to assert the patent against a potential infringer.

In G 2/24 the EPA has maintained the existing legal situation. The matter now having been considered twice (in G 3/04 and G 2/24) with the same result, it is unlikely that there will be any changes to the status of Interveners at appeal without changes to the EPC.

As an interesting point to note:

The referring Board indicated it wished to depart from G 3/04 and proceed with the appeal with the Intervener.  The EBA expressed dissatisfaction with the idea that a Board of Appeal might refer questions to the EBA because it disagrees with a previous EBA decision.