Interplay between EPO Oppositions and Proceedings in National Courts

1. Interplay between EPO Oppositions andProceedings in National Courts Korbinian Kopf Maiwald Patentanwalts GmbH, Elisenstr. 3, 80335 Munich, Germany, Kopf@maiwald.de AIPLA IP Practice in Europe Committee, Feb. 1, 2006 - La Quinta, California

2. The European Patent System Granted EP patent splits up into bundle of national patents … GB Patent French Patent German Patent EP patent

3. The Dual System in Germany BGH (Federal Court of Justice) Oberlandes-gericht (Higher Regional Court) Bundespatent-gericht (Federal Patent Court) 12 District Courts (Landgerichte) 9 months opposition period Publication of grant of EP patent opposition procedure Nullity Suit Infringement Suit Appeal Revision • Bound to validity of patent even if an opposition / nullity action is pending • Bound to outcome of opposition / nullity action • May suspend proceedings upon defendants request only (slide 6) • Nullity action cannot be filed: • during EP opposition period • during EP opposition procedure Appeal validity, no infringement infringement, no validity Intervention according to Art. 105 (1) EPC

4. Intervention according to Article 105 (1) EPC In an event of an opposition to a European patent being filed, any third party who proves that proceedings for infringement of the same patent have instituted against him may, after the opposition period expired, intervene in the proceedings, if he gives notice of intervention within three months of the date on which the infringement proceedings were instituted. The same shall apply in respect of any third party who proves both that the proprietor of the patent has requested that he cease alleged infringement of the patent and that he has instituted proceedings for a court ruling that he is not infringing the patent.

5. Suspension of opposition, Regel 13 (4) EPC If a third party provides proof to the European Patent Offices during opposition proceedings or during the opposition period that he has opened proceedings against the proprietor of the European patent for the purpose of seeking a judgment that he is entitled to the European patent, the European Patent Office shall stay the opposition proceedings unless the third party consents to the continuation of such proceedings. Such comment must be communicated in writing to the European Patent Office; it shall be irrevocable. However, the suspension of the proceedings may not be ordered until the Opposition Division has deemed the opposition admissible.

6. Suspension of infringement proceedings • Infringement courts’ decision governed by prospect of opposition or nullity action • General rule: Suspension only if novelty is seriously in question (preferably attack based on documents which have not been part of examination and/or opposition procedure) • Likelihood of success of request for suspension: e.g. < 50 % in Düsseldorf

7. Is there a File Wrapper Estoppel in Europe? • Germany: Statements in the file wrapper are only relevant for the assessment of the scope of the claims when these statements are restated in the granted patent (OLG Braunschweig 29.8.2001 2 U 18/01) • Germany: An interpretation of the patent on the basis of the original application documents is inadmissible (BGH GRUR 1982, 291 Polyesterimide) • UK: ‘…it is not legitimate to have regard to the arguments raised by or before the Board in opposition proceedings relating to the grant or amendment of the patent in question, even though those observations may h have led to the patent being amended.’ (High Court of Justice, CH 1993-K- No. 937, CH 1993-B-No. 4552) • UK: Referring to a submission by the patent attorney acting for the patentee Is not a legitimate approach to construction ([1999] RPC 47 at 73) • France: It is not an argument that during prosecution, the applicant argued the opposite (Cour d’appel de Paris, 24 avril 1998, Estee Lauder / L’Oreal)

8. Is there a File Wrapper Estoppel in Europe? (2) • Germany: Statements in the decision to grant are irrelevant (BGH GRUR 1985, 967 Zuckerzentrifuge) • Netherlands: The file history neednot be consulted by a third party if he has, based upon the description of the patent and the claims, no reasonable doubt as to the (limited) scope of the claims. (Dutch Supreme Court, 13 January 1995, NJ 1995, 391, re Ciba Geigy vs. Oté Optics) • Germany: The content of the file wrapper may not be used for clarification of the patent (BGH GRUR 1959, 317, 319 Schaumgummi) • Germany: The determination of the scope of the claims is to be based on the claims, the specification and the figures. Amendments are only relevant when they are appreciated in the patent (BGHZ 115, 204, 208: beheizbarer Atemluftschlauch) • Germany: There is no practical necessity for the consideration of statements during prosecution for the determination of the scope of the claims of the patent (BGH Kunststoffrohrteil) • Netherlands: It was decidedthat if it was clear from a claim how its contents should be explained, the Court of Appeal was not obliged to investigate the contents of the file history to determine the closest state of the art (although the parties had referred to the file history) to arrive at a possible broader scope of the claims. (Dutch Supreme Court, 5 September 1997, NJ 1999, 410, re Dow vs. Stamicarbon)

9. But…: • UK: ‘Had it been necessary for the judge to take account of the letter [in the file wrapper] in order to resolve the issue of construction, I consider that he would have been entitled to do so.’ (Royal Courts of Justice Strand, [2001] EWCA Civ 1589) • Germany: Statements during prosecution do not have a general relevancy for claim construction, however, such statements may be aides for interpretation (BGH Weichvorrichting I,II) • Germany: It cannot be deduced that statements in the file wrapper must always be disregarded; however, reluctance has to be applied (Rogge Mitt. 1998, 201, 203) • Germany: Statements or waivers during opposition, even if they are not generally binding, may be essential circumstantial evidence on how the patent is to be understood. It would be against the principles of trust and good faith, especially in view of a venire contra factum proprium (contradictory behavior), if the scope of protection would encompass a waiver made during opposition, in particular with respect to the opponent who was party in this opposition (BGH Weichvorrichtung I & II; BGH XZR 6/91) • Netherlands: If, after consideration ofthe description and the drawings, reasonable doubt exists as to theinterpretation of the claims, a notion similar to a "Filewrapper estoppel" only applies when it appears from the public record thatthe patentee had good cause to relinquish part of the scope of protection. (Dutch Supreme Court,Van Bentum vs. Kool; Ciba-Geigy AG v Ote Oprics BV)

10. AND DON’T FORGET Statements during opposition vis-á-vis the same party are binding for claim construction in Germany

11. Settlement during opposition – what happens? EPO will only continue opposition if there is enough evidence for limitation or revocation without further assistance by the (former) opponent First-Instance Second-Instance Assumption: Settlement includes withdrawal of opposition • If patent was maintained during first-instance and sole opponent withdraws opposition proceeding will be terminated • If patent was revoked or restricted and the sole opponent withdraws opposition Board will continue examination !!!

12. DISCUSSION