The Enlarged Board of Appeal has recently confirmed in G 2/24 that, after all appeals are withdrawn, appeal proceedings are terminated – even if an intervention is filed during the appeal. A party who intervenes only on appeal does not have the right to continue proceedings after the appeal is withdrawn.
The referring Board of Appeal in T 1286/23 sought clarification with the following question:
“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?”
Background – Interventions at the EPO
Under Article 105 EPC, a third party that is sued for patent infringement may intervene in EPO opposition proceedings – even after the normal 9 month opposition window – provided that the intervention is filed whilst opposition proceedings are pending (or a subsequent appeal is pending). This allows the third party to bring new objections and evidence into the opposition.
The Decision – G 2/24
The Enlarged Board considered the situation where an intervention was filed during appeal proceedings following opposition and then all appeals are withdrawn.
G 2/24 confirms an earlier decision in G 3/04, deciding that such an intervener could not then continue with the proceedings. The Board that referred the question in G 2/24 questioned this approach and indicated an intention to deviate from G 3/04. However, in G 2/24, the Enlarged Board concludes that the legal situation has not changed substantively since G 3/04 in respect of the relevant provisions, and that the conclusion given in that decision still applies.
The Enlarged Board confirms that an appeal is a judicial review of the decision under appeal and is not a mere continuation of opposition proceedings. The principle of party disposition is also reiterated, in that the party has the right to withdraw an appeal (and the Board itself has no right to continue). Under Article 107 EPC, an appeal can only be filed by a party to the original proceedings that is adversely affected by the decision.
This reasoning led the Enlarged Board to decide that the intervener did not have the status of appellant and did not have further rights beyond a non-appealing party in respect of continuing proceedings.
As a result, if the sole appeal is withdrawn (or, should there be multiple appellants, then if all appeals are withdrawn), an intervener that only files an intervention on appeal does not have the right to continue with the proceedings.
Strategic Implications
G 2/24 gives patent proprietors more control over appeal outcomes when they are the sole appellant. For example, if an intervention on appeal raises new issues, the proprietor may opt to withdraw the appeal if they are the sole appellant. With the appeal terminating, this may allow the proprietor to fall back on an amended form of the patent maintained after opposition.
From the intervener’s perspective, it may be more beneficial to intervene in opposition proceedings rather than only on appeal. Whilst the ability to intervene will be determined by the proprietor bringing infringement proceedings, the third party may pre-emptively file an opposition in the first place (which may be filed anonymously).
In any case, intervening on appeal may still be a useful tool. For example, this may force the proprietor to withdraw the appeal and limit the patent to narrower claims.
G 2/24 therefore provides legal certainty confirming that interveners on appeal cannot continue with appeal proceedings once all appeals are withdrawn. This has implications for strategic decision-making in both opposing and defending patents at the EPO.
If you have any questions about your opposition strategy, please contact a member of our team.
