Cooperation or Competition Between the EPO Board of Appeal and UPC?

The EPO Board of Appeal recently issued a decision T 1841/23 rejecting a request for postponement of oral proceedings after filing of an intervention by a third party from parallel UPC proceedings. The Board was therefore able to decide on the validity of the patent within three months of notification from the UPC of the existence of parallel UPC infringement proceedings, despite late intervention by the third party from the parallel UPC proceedings.

EP2387844 (“the patent”) was maintained in amended form during first instance opposition proceedings, and the decision was appealed by opponent 1. The Board accelerated the appeal proceedings of its own motion when it was notified in October 2024 by the UPC that the patent was the subject of parallel infringement proceedings brought against a third party (different to opponent 1). Oral proceedings were scheduled for December 2024. A notice of intervention was filed in November 2024 by the third party against whom infringement proceedings were brought at the UPC.

The proprietor requested multiple times for the postponement of oral proceedings, both in writing in advance of the oral proceedings and orally at the outset of the hearing. The proprietor argued a delay was necessary to ensure their right to be heard and procedural fairness and that continuing proceedings would amount to a substantial procedural violation.

The Board noted that changing the date of oral proceedings is entirely within the Board’s discretion, and decided that there were no serious reasons that justified the postponement. When considering the reasons for justification, the Board was of the opinion that the filing of a notice of intervention most closely resembled the situation of “filing of new requests, facts, objections, arguments or evidence” which generally does not justify the postponement of proceedings.

In the context of legal fairness, the Board found it relevant that the notice of intervention did not raise any new issues of relevance and that the proprietor had already had multiple opportunities to respond to those issues.

Altogether, the Board considered that the proprietor’s right to be heard had been respected and revoked the patent.

The Court of Appeal of the UPC, in UPC_CoA_22/2024, has previously highlighted where there are parallel infringement proceedings at the UPC, and opposition proceedings at the EPO, generally a stay of proceedings at the UPC will not be necessary. In T 1841/23 we now see that the EPO can and will act quickly when there are parallel infringement proceedings at the UPC, and will not necessarily postpone proceedings. Whether this is as a result of the competition from the UPC or a desire to cooperate with the UPC to avoid diverging decisions, when initiating an infringement action at the UPC patentees must expect the likelihood of rapid acceleration of any pending EPO opposition and appeal proceedings.