News
The EPO accelerates to get there first in parallel proceedings with the UPC
3 February 2025
In December 2024, the European Patent Office (EPO) Technical Board of Appeal issued a decision in a compelling case (T 1841/23) that involved a late intervention into accelerated appeal proceedings, with the added drama of parallel infringement proceedings at the Unified Patent Court (UPC).
The parallel proceedings
The appeal was filed against a decision by the EPO Opposition Division to maintain opposed European Patent 2387844 B1 in amended form.
The appeal proceedings were accelerated by the EPO following information that parallel infringement proceedings were underway at the UPC.
The patent Proprietor had sued a competitor for infringement at the UPC. However, this led the competitor to file a notice of intervention at the EPO so that they could become a party to the now accelerated appeal proceedings.
The Proprietor reacted by requesting a postponement of the EPO appeal stating that they did not have sufficient time to respond to the intervention, but the EPO saw “no serious reason” to delay the appeal process.
Ultimately, at the oral proceedings, the Board of Appeal revoked the patent for added subject-matter which rendered the UPC infringement action moot. Essentially, the EPO were quicker off the mark and eager to accelerate proceedings ahead of the UPC.
Lessons from the case
The EPO’s quick response in this case may come as a surprise to UPC supporters who have criticised the Board of Appeal for being slow to make decisions.
The Court of Appeal of the UPC has previously decided that proceedings before the UPC will not to be stayed in case of parallel proceedings before the EPO (UPC_CoA_22/2024). The EPO have now demonstrated that they too may be unwilling to stay proceedings when there are parallel UPC proceedings, and indeed are prepared to accelerate the EPO proceedings to get ahead of the UPC. In this case, the EPO Board of Appeal made it clear that appeal proceedings cannot be used “as a placeholder for tactical considerations in parallel proceedings for infringement”.
This case also provides useful guidance for EPO intervention practice, which could impact litigation strategy as we start to see more parallel proceedings at the EPO and the UPC.
The EPO have shown that they are working to balance procedural efficiency with proportionality and fairness. In this case the Board of Appeal confirmed that an intervention does not act as a “voucher for more time” in proceedings for the Proprietor (or other parties). It will be interesting to see how this decision factors into the Enlarged Board of Appeal’s anticipated verdict on the G 2/24 referral questions relating to the status of an intervener in appeal proceedings.
At least for now it seems that parties will need to think carefully before trying to use intervention as a tool to delay parallel proceedings involving the EPO.
If you have any questions about patent or litigation strategy or would like to discuss the UPC in more detail, please do get in touch with your usual Withers & Rogers contact.
Ailis Shuttleworth
Life Sciences & Chemistry group
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP February 2025
