Belgian saisie-threat accelerates EPO appeal
Published on: 18 April 2014
by Dr. Christian Köster, Patent Attorney at Dennemeyer & Associates, Munich
Upon request by a party, proceedings before the European Patent Office (EPO) may be accelerated. Possible scenarios for accelerating proceedings before a Board of Appeal are given in the Notice from the EPO’s Vice-President Directorate-General 3 dated 17 March 2008 (recently published in OJ EPO 1/2014, 63). According to this Notice, acceleration is always a matter for the exercise of the Board’s discretion.
The procedure underlying interlocutory decision T 895/13 of 28 March 2014 concerned an opposition in which in the first instance before the Opposition Division, the patent was entirely revoked. The patent proprietor appealed the revocation, and at the appeal stage the opponent requested an accelerated appeal procedure. Two major arguments were advanced in order to substantiate the request for acceleration:
As a first argument, the opponent argued that the concerned patent was so blatantly invalid that acceleration was warranted for that reason alone. The patent proprietor naturally disagreed. The Board of Appeal held that no assessment of the patent’s strength or weakness could be made at the early stages of the appeal procedure and therefore dismissed the opponent’s first argument.
For the second argument, it was significant that the opponent’s worldwide vaccine R&D and production center is based in Belgium. The opponent explained to the Board that on application (possibly ex parte) by patentees for preliminary measures, the Belgian courts do not consider the validity of patents even in cases where a revocation decision is suspended pending appeal. And also, supported by "similar facts" evidence relating to the proprietor's past conduct, the proprietor has made such applications in the past. The mentioned preliminary measures include a so-called saisie contrefaçon which is very effective, but also very far reaching in terms of attainability to preserve evidence prior to commencing an infringement action.
Taking the arguments from both sides and in particular the Belgian courts’ approach in such cases into account, the Board of Appeal came to the conclusion that the appeal procedure shall indeed be accelerated as justified by the second argument from the opponent. In other words, due to a threat of facing a saisie contrefaçon procedure in Belgium on the basis of a European patent revoked in the first instance, the opponent was entitled to accelerated proceedings in the appeal against the revocation.
However, the Board also expressly stated that “… its views relate only to the particular facts of these present cases and are not intended to set any precedent for application beyond those facts.” Hence, whether or not appeal procedures before the EPO are accelerated upon request remains to be decided on a case-by-case basis.
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