G3/04 - Interveners during appeal cannot continue after withdrawal of appeal

According to the recent EPO Enlarged Board of Appeal Decision G3/04, after withdrawal of the sole appeal, the proceedings cannot be continued with a third party that intervened during the appeal proceedings.

An appeal was validly filed (by the opponent) against a decision of the opposition division. During the appeal proceedings, the intervener announced its intervention in the proceedings, paying the opposition fee and the appeal fee.

Days later, the sole appellant withdrew its appeal.

Although Article 105 EPC allows an assumed infringer to intervene in opposition proceedings, no provision existed in the EPC for the case where the assumed infringer intervened in appeal proceedings.

The question referred to the Enlarged Board was: After withdrawal of the sole appeal, may the proceedings be continued with a third party who intervened during the appeal proceedings?

The Board answered this question in the negative. The reasons for this were as follows:

An assumed infringer may intervene in opposition proceedings in accordance with Article 105 EPC and be treated as an opponent and consequently as a party to proceedings. If he does so, then he has the same right of appeal or to be a party to any appeal as all other parties to the opposition according to Article 107 EPC.

In decision G 1/94, reference was made to Article 105 EPC for the legitimacy of the assumed infringer's intervention during appeal proceedings, stating that the term "opposition proceedings" also includes subsequent appeal proceedings that are still pending. This means that a valid intervention during appeal proceedings requires the assumed infringer to have satisfied all of the provisions of Article 105 EPC and that the appeal fee has also consequently been paid. In accordance with Article 105 (2), sentence 3, EPC, intervening in the opposition proceedings causes the assumed infringer to acquire the status of an opponent.

However, sentence 1 of Article 107 EPC only grants the right of appeal to those parties that participated in the proceedings which led to a contested decision. This is not the case when an assumed infringer declares his intervention only during appeal proceedings (see also EBA Decision G 4/91). Sentence 1 of Article 107 EPC therefore does not give any right of appeal to the intervener in the appeal proceedings and therefore also does not grant him the status of an appellant.

The assumed infringer also cannot gain this status by intervening during the appeal proceedings. He only acquires the status of opponent in the appeal proceedings on the basis of this provision.

Therefore, the question to be determined is whether the assumed infringer, who can obtain the status of an opponent as a result of a valid intervention, is also authorised to continue with the proceedings on the basis of this status, if the sole appellant has withdrawn his appeal.

From the generally recognised procedural principle of party disposition, which causes the termination of proceedings if the procedural act that it induced was cancelled, the Enlarged Board of Appeal decided that if the appellant withdraws its appeal, the other parties to proceedings under Article 107, sentence 2, EPC who have not submitted an appeal themselves cannot continue with the proceedings (see G 2/91).

G 9/92 also explains that appeal proceedings end when the appeal(s) is/are withdrawn. This applies to all parties that are not appellants, therefore also to the first intervener during the appeal proceedings in accordance with Article 105 EPC.

As a result, the Enlarged Board of Appeal concluded that the effective intervener only acquires the status of an opponent, regardless of whether the intervention takes place during the proceedings before the Opposition Division or during the appeal proceedings. In both cases, he has the same rights and responsibilities as the other opponents.

In summary, the intervener in proceedings before the Opposition Division can continue with the proceedings alone and, where applicable, submit appeals, when all of the opponents have withdrawn their objections, as he has the same status as an opponent in accordance with Article 99 EPC. For the same reason, he is party to appeal proceedings under Article 107, sentence 2, EPC when an appeal is submitted by someone other than himself. Should the intervention take place during the appeal proceedings, the intervener enjoys, with the exception of the right to submit new grounds for opposition, the same rights and responsibilities as all opponents that have not submitted any appeal, once again due to the fact that he is only able to acquire the status of an opponent. If in this case the sole appeal or all appeals are withdrawn, the appeal proceedings terminate for all parties with regard to all issues, including the new grounds for opposition put forward by the intervener.