Part 1 - EPO: T 1800/20 - The Board's discretion not to admit claim requests under Art. 12(4) RPBA 2020
Relevance of the Decision
According to the current practice of the Boards of Appeal (BoA) of the EPO, it is very difficult to get new claim requests admitted during appeal proceedings. As a consequence, Patentees are filing multiple claim requests during the first instance proceedings before the Opposition Divisions (OD) to have them already on file for when appeal proceedings start. Nonetheless, the decision T 1800/20 now makes clear that this practice does not guarantee that the BoA will review all requests, even if they were on file before the appeal proceedings started.
Decision
In T 1800/20 (decision of September 28, 2023), the BoA ruled that an auxiliary request (AR) comprising a set of claims, which was filed in the first instance opposition proceedings but not decided upon, was not automatically admissible in the appeal proceedings. Rather, it is necessary to evaluate whether the AR was admissibly filed and maintained in the first instance in order to be admissible on appeal. The criteria of convergence with higher ranking requests has to be considered in undertaking this evaluation. And if the AR was not admissibly filed and maintained, the BoA has the discretion not to admit it on appeal.
Reasons
In the case underlying the decision, an opposition was filed against Patent No. 2032967, which relates to a spectroscopic detector and a method for determining blood and biological marker substances in liquids (see the title). The patent was maintained on the basis of an AR. The proprietor lodged an appeal against this decision.
The appellant filed an AR (AR 2') before the BoA, which had been filed during the Oral Proceedings before the OD as AR4. The BoA made use of their discretion and decided not to admit this AR into the appeal proceedings.
The BoA considered the following factors in using their discretion to consider the admissibility of AR2':
a) point in time when AR had been submitted;
b) suitability of the claim request to overcome objections against higher-ranking requests;
c) whether the AR raised new issues; and
d) suitability of the AR to be part of a convergent development of the first-instance proceedings.
With regard to a), the decision states that the request in dispute had not been timely filed, although it had already been filed at first instance. However, because the OD had already decided that the patent be maintained on the basis of higher ranking AR2, the OD neither had to decide on the admittance of AR2', nor was patentability of the claimed subject-matter of AR2' discussed. Hence, admitting AR2' into the appeal proceedings would not constitute a case of judicial review of the first instance decision under appeal according to Art. 12 (2) RPBA 2020, but rather a first time assessment of a new set of claims, contravening Art. 12 (2) RPBA 2020.
The BoA also decided that the request constituted an amendment to the appeal case because it did not comply with the requirements of Art. 12 (4) RPBA 2020. According to Art. 12(4) in connection with Art. 12 (2) RPBA 2020, an amendment can be seen in any part of an appeal case which is not directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based, unless the party demonstrates that this part was admissibly raised and maintained in first-instance. Any such amendment may be admitted only at the discretion of the BoA.
With regard to b), c), and d), the BoA also decided that none of those criteria were fulfilled, either. Claim 1 of AR2' differed from claim 1 of AR1' in one deleted feature concerning a light detector and one added feature concerning a secondary blood circuit. In the BoA's view, these amendments constituted a case of divergence, because the deleted feature was the only feature that was not known from prior art document D9, and the added feature did not have functional relationship with the light detector.
Already due to this convergence, and with reference to procedural economy (item 4.5. of the reasons in T 1456/20), the BoA decided not to admit AR2'. The BoA was not convinced by the arguments brought forth by the appellant, namely that AR2' did in fact converge with AR1', and that it had been timely filed.
Take Home Message
In view of this decision, it is absolutely essential to establish a clear and concise defence strategy during first instance proceedings before the OD. Patentees should, in addition to submitting filing multiple ARs, try to get them all explicitly admitted into the first instance proceedings to help mitigate any risk of them being held inadmissible in appeal proceedings. The current practice of the OD is not uniform in this regard and so diligence is required to ensure this is recorded in either the OD minutes and/or the OD's written grounds for their decision.
Part 2 - UPC: MedTech UPC litigation - Meril v Edwards - Paris Central Division rules on the admissibility of proceedings commenced by related group entities
Relevance of the Decision
Since the UPC opened 6 months ago, there has been a question about the ability of group companies (or 'straw man' companies) to commence proceedings relating to the same patent in different divisions of the new court. This has been a much anticipated issue which raises key issues, such as: (i) the ability to 'forum shop' across the various divisions; and (ii) the likelihood of proceedings relating to validity and infringement being bifurcated. This first instance decision, by broadly defining the concept of "same parties", turned the tide in favour of multiple proceedings being admissible, thereby shifting the focus from the admissibility of parallel proceedings and on to how such proceedings might be case managed.
Decision
This cases relating to infringement proceedings originally commenced by Edwards to enforce 2 of its patents relating to heart valve technology in the UPC (in two different local/regional divisions). The proceedings in the Munich Local Division (MLD), Edwards sued two Meril group entities (a German company and the Indian parent company). Those parties have since filed a defence and counterclaim for revocation in the MLD (to which they are necessarily tied).
However, before the defence and counterclaim were filed in the MLD, a different Meril group company (in Italy), which had not been sued for infringement (and which does not seem to be connected to the allegedly infringing acts), took action - and commenced a revocation action of the same patent in the Paris Central Division (PCD). Edwards filed a preliminary objection and sought to strike out the claim for breach of Art 33(4) UPCA - which requires the "same parties" to bring their revocation action in the same division where they are sued (i.e. in this case, Munich).
In its decision, the PCD held that this restriction did not apply as Meril Italy and Meril India were not the "same party".
Reasons
Edwards' objection centred around Meril Italy being a 'straw man'; essentially a puppet of Meril India and so no different and with no independent interest of the parties in the MLD action. Indeed, Meril Italy is a wholly owned group company, with the same in directors and employees as Meril India and with no trading or business activity, a €10,000 share cap and an accountancy firm as its registered address.
However, the PCD considered four arguments, interpreting each in favour of the admissibility of Meril Italy's action:
(1) Literal - the PCD held that the national law of claimant applies (here, Italy) borrowing principles from the requirements of the standing requirements for being a party in the UPC - under which it considered Meril Italy to be, quite clearly, not the same party as Meril India.
(2) Brussels Regulation / lis pendens - the PCD held this was distinguishable and not applicable to UPC, considering that litigation between divisions of the UPC is not the same as litigation between different EU Member States and that the interests protected are different.
(3) Straw Man / abuse - the PCD held that there was insufficient evidence that this was fictitious/abusive. In this case, Edwards relied on how 'young' Meril Italy was having been incorporated in March 2023. However, the PCD held this factor was in Meril Italy's favour - it existed before the claim and so it was likely incorporated with a different purpose, which was not yet apparent. The company's short life even helped successfully defend Edwards' application for security for costs, which was swiftly rejected.
(4) Avoiding irreconcilable decisions - most interesting - the PCD emphasised that parallel/bifurcated proceedings are contemplated by the UPC's structure and that there are case management powers to manage them. So the central action was not abusive per se.
Take Home Messages
There are some similarities to another high profile UPC action between Amgen v Sanofi as these cases are examples of how the conduct of the parties and/or the pragmatism of the UPC might circumnavigate some of the more automatic prohibitions or obligations in the UPCA/RoP, resulting in the admissibility of parallel actions on the same patent in different divisions. This inevitably raises questions of whether bifurcation might become more common.
In our view, this decision suggests direction in favour of bifurcation and shifts the onus on to the local division (here, MLD) to decide whether to stay its earlier infringement action (and potentially defer the revocation counterclaim to the central division).
So these cases remain avid viewing for UPC litigation strategy, including as to whether excessive forum shopping will arise, and if a trend towards bifurcation might continue. Indeed, as the UPC gets busier, questions about availability of judges and speed are already starting to arise, just like they do in the current national framework of European patent litigation.
It is also noteworthy that Edwards used German and English lawyers before the Central Division whereas Meril used a French firm (which was not involved in the German infringement proceedings). Possibly Meril created a better connection with the judge.
Next steps
Looking ahead, all eyes will be on the MLD:
(1) Will the MLD keep both infringement and the revocation counterclaim - and hit the ball back to the PCD's court as to whether to stay?
(2) Or will the MLD bifurcate and send revocation to the PCD (and stay infringement)? By choosing a related Meril entity, this seems likely to be Meril's next step (just like Sanofi has now requested in its case).
(3) Can Edwards influence this outcome - e.g. could they try to add Meril Italy to the MLD infringement action, putting the emphasis back on the patentee's right to choose where to enforce its patent?
(4) Edwards will also very likely appeal this decision, which is mentioned at the end of this decision as a possibility, but is not decided.
