J 2/14 Stay of proceedings – Fighting about beer dispensers
In two
related cases a third party had requested suspension of proceeding under
Art.61(1) [after entitlement proceedings had been started in Belgium]. Three years
later the Belgian proceedings had not progressed. The Legal Division refused
applicant’s request for resumption of the proceedings, which was already requested at the start of the suspension. The Board of Appeal
summarizes that proceedings may be resumed at any moment. In this case the
Board concludes that the third party had lost interest in the Belgian court
proceedings and decided to resume grant proceedings before the EPO.
I. The
appeal lies from the decision by the Legal Division of 14 June 2013 refusing
the applicant's main request that "the suspension of the grant proceedings
be undone" and the auxiliary request that "a date for the resumption
of the proceedings be set pursuant to Rule 14(3) EPC". The decision under
appeal concerns both European patent applications Nos. 08 749 615.4 and 08 736
405.5. The present decision deals only with the second application.
II. The
appeal was filed by the applicant by letter dated 26 August 2013 and the
prescribed fee was paid on the same day.
III. The
facts underlying the present case, as far as they are relevant to the present
decision, are as follows.
IV.
European patent application No. 08 736 405.5 was filed as a PCT application on
18 April 2008 in the name of InBev S.A, now Anheuser-Bush InBev S.A (change
recorded in the European Patent Register with effect from 17 November 2011).
The decision to grant a patent was issued on 23 February 2012. The publication
of the mention of the grant in the European Patent Bulletin was scheduled for
21 March 2012.
V. By
letter dated 20 March 2012, received at the European Patent Office (EPO) on the
same day, Dispensing Technologies B.V. requested, as a third party within the
meaning of Rule 14(1) EPC, a stay of the proceedings in respect of the
application under consideration. It submitted that entitlement proceedings
within the meaning of Article 61(1) EPC had been instituted against the
applicant before the Brussels Commercial Court (hereinafter BCC). In support of
that request, a copy of the writ of summons - together with a translation into
English - was filed.
VI. By a
communication dated 28 March 2012, the Legal Division informed the applicant
and the third party that the grant proceedings were stayed as from 20 March
2012. The Legal Division also indicated that the published mention of the grant
concerning EP 08 736 405.5 would be corrected accordingly.
VII. By
letter dated 28 May 2012, the applicant requested an appealable decision. The
applicant requested that the suspension of the grant proceedings be undone
(main request) or that a date for resumption be set pursuant to Rule 14(3) EPC
(auxiliary request).
VIII. In
its decision the Legal Division held that the third party was indeed seeking
before the BCC a decision within the meaning of Article 61 EPC, i.e. that it
was entitled to the grant of a patent in respect of the application in suit. It
also found that this action had been instituted on 20 March 2012, at a point in
time when the grant proceedings were still pending, so that the Legal Division
was competent to order a correction of the mention of the grant. As regards the
auxiliary request, the Legal Division held that it was premature to set a date
for resumption of the grant proceedings, considering in essence that no
delaying tactics had been demonstrated, and that the third party's request for
withdrawal of its action before the BCC, not accepted by the applicant, could
not be interpreted as consent to the continuation of the grant proceedings. It
noted that a date for a hearing before the BCC had been scheduled for 18
September 2013.
IX. In the
statement of grounds of appeal filed on 24 October 2013, the appellant
requested that:
- the first
point of the contested decision be cancelled and that "suspension of the
application Nos. EP 08 749 615.4 and EP 08 736 405.5 be deemed undone as from
the date on which the original request for suspension was received" by the
EPO, i.e. 20 March 2012 (main request);
- the
second point of the decision i.e. not to set a date for resumption of the
proceedings, be cancelled and that such a date be set (auxiliary request);
- the
appeal fee be reimbursed "on the basis that the refusal of suspension was
a substantial procedural violation".
X. The
Board issued a communication on 23 February 2015 and summoned the parties to
oral proceedings, which were held on 6 May 2015.
XI. On 3
April 2015 the appellant filed new submissions containing new requests. The
respondent's last submissions made before the oral proceedings are dated 2
April 2015.
XII. The
arguments of the appellant, as far as they are relevant to the present decision,
can be summarised as follows:
Regarding
the main request, the resumption of the proceedings was justified due to the
length of the stay, over three years. This was the direct consequence of
actions by the respondent (third party) that could be considered as an abuse of
proceedings and delaying tactics in order to avoid hearings before the BCC on
the merits, even though three dates had been reserved for that purpose on 18
September 2013, 18 June 2014 and 28 January 2015 respectively. The appellant
presented in detail the sequence of events. The following are of particular
relevance:
- on 5 July
2012, the respondent started an action against the appellant before the Court
of St. Louis (Missouri) claiming that the appellant had misappropriated trade
secrets which formed the basis of the patentable invention;
- on 13
July 2012, the respondent withdrew ("waived") "without
prejudice" the Belgian action justifying the stay of the grant
proceedings. The appellant refused the waiver so that the proceedings continued;
- on 15
April 2014, a second set of proceedings was started by the respondent before
the BCC against the applicant with the same cause of action;
- on 10
October 2014, the respondent withdrew its case before the Court of St. Louis
(Missouri);
- on 27 January
2015, the respondent filed a second request for a stay of the proceedings for
grant in respect of the European patent application in suit, based on the
second action started in Belgium;
- on 28
January 2015, the hearing scheduled in the first set of proceedings before the
BCC was postponed sine die.
As regards
the appellant's refusal to accept the third party's withdrawal of the first
action in Belgium, the appellant argued that its intention was to plead and
obtain a decision on the merits as soon as possible in order that the grant
proceedings could continue, given that the waiver by the respondent was
undisputedly triggered by a lack of (accessible) evidence. Even if the
appellant had accepted the withdrawal, this would not have prevented the respondent
from initiating the second action by serving a second writ of summons and
obtaining the postponement of the planned hearings based on the argument that a
discovery procedure in the USA would yield decisive evidence as regards the
entitlement case.
The appellant
declared that it was ready to commit neither to withdrawing the application in
suit nor to abandoning it as long as the first proceedings in Belgium were
still pending. Regarding the first auxiliary request it argued that the
conditions for a stay of the grant proceedings pursuant to Rule 14(1) EPC were
not fulfilled at the date of filing of the pertinent request, i.e. 20 March
2012. As a consequence it requested that a date be set for resumption of the
grant proceedings.
The
appellant considered that the proceedings before the BCC were about entitlement
in name but not in nature. Referring to decision J 15/13, it
submitted
that the proceedings before the BCC were not directed to a transfer of the
application as a result of being the true inventor, in view of the fact that
nine months before the meeting at which the respondent had informed the
appellant about "the coating, i.e. the release agent, used in the form of
a silicone for the inner preform (of the bag-in-container) avoiding this inner
preform to stick to the outer preform while being heated at the time of
blowing", the appellant had already filed a US patent application
claiming: "an integrally blow-moulded bag-in-container comprising the same
polymer in contact on either side of the interface between the inner and the
outer layers". This was exactly what was claimed in the application in
suit. It was not related to the release agent alleged to be the know-how of the
respondent, for which it did not file a patent application. The sole relation
between the invention claimed by the respondent and the invention claimed in
the application in suit was an integrally blow-moulded bag-in-container. This
relationship would not be sufficient to satisfy the test for unity of invention
and therefore it could not be regarded as the same invention within the meaning
of Rule 14(1) EPC.
The
respondent's argument that the use of a release agent was mandatory in order to
use the same polymer on either side of the interface, such that the application
lacked an essential feature, concerned the validity of the patent rather than
its ownership. Thus the proceedings, by their nature, were not entitlement
proceedings.
The
appellant also disputed that the respondent had truly instituted proceedings in
Belgium at the date of the request for a stay, i.e. on 20 March 2012, because
at that point in time it had still not registered its writ of summons with the
Court as required by the Belgian Judicial Code. It presented an interpretation
of Article 717 of said Code, supplemented by an expert legal opinion.
The
appellant finally explained how the second auxiliary request could preserve the
interests of both parties and relied on decision J 33/03 in this respect.
XIII. The
respondent argued in essence as follows:
As regards
the request based on Rule 14(3) EPC, the basic principle was that the grant
proceedings should be stayed until a final decision had been reached by the
competent national court. This principle could only be ignored when the third
party consented in writing to the continuation of the proceedings. This was not
the case so that the contested decision was correct in its assessment.
Resumption of the proceedings at the present stage (application ready for
grant) would jeopardise the fundamental right of the third party when becoming
the new lawful applicant under Article 61(1) EPC, namely the right to prosecute
a new application. This should be taken into consideration when balancing the
interests of the parties. The appellant (applicant) would lose no substantive
rights due to a prolongation of the suspension.
The risk
was particularly serious for the third party in the present case where, after
resumption, the patent would be published, with the consequence that it would
then split up into several national patents. This could lead to the rejection
of the claim for entitlement relating to a European patent which no longer
existed, forcing the third party to institute several new sets of proceedings
in different states. In addition, the third party ran the risk of withdrawal of
the application. Rule 14(3) EPC provided the EPO with discretionary means only
in the event that the third party agreed to the stay being lifted or no longer
pursued the request for stay. The recent case law taking into account the long
duration of the proceedings or delaying tactics or even a first-instance
decision in favour of the applicant was unbalanced. The EPO was not in a
position to assess the length of proceedings before national courts and the
respondent was not in any way delaying the proceedings.
Regarding
the request for withdrawal of the action before the BCC, the respondent argued
that before the commencement of the action, it had believed it possible to make
use of evidence obtained within the framework of arbitration proceedings in the
USA, although subject to a confidentiality agreement. Since the appellant had
raised an objection "it realised that, without the evidence available from
the arbitration proceedings, its position in the Belgian entitlement proceedings
was jeopardised...". It had therefore decided to withdraw without
prejudice the Belgian action and to introduce an action in the Circuit Court of
St. Louis (Missouri) on the ground of theft of trade secrets, and had requested
wide-ranging discovery. The appellant was using every means to prevent the
respondent from having access to evidence. Its opposition to the withdrawal
belonged to the same strategy. However, it could not be excluded that the BCC
would reject the withdrawal so that the entitlement proceedings, which were
still pending, could continue.
Concerning
the requirements of Rule 14(1) EPC, the respondent affirmed that it had adduced
evidence that entitlement proceedings had been opened before the BCC on 20
March 2012. The EPC did not require that all the procedural steps required by
national procedural law had been completed, which the EPO was not in a position
to assess. Yet, contrary to the allegation of the appellant, Article 717 of the
Belgian Judicial Code was to be construed in such a way that the action was
brought to the court at the date of the writ of summons, in so far as the case
was registered in the court's docket before the hearing indicated in the writ
of summons. This was the interpretation given by the Belgian Supreme Court.
The Belgian
proceedings were entitlement proceedings within the meaning of Article 61(1)
EPC in that the request was to declare the respondent solely entitled to the
patent application in suit. The EPO was not competent to compare the
subject-matter in national entitlement proceedings and the subject-matter of
the application for which stay had been ordered (cf. decision J 20/05). Nor
could the EPO define the scope of the national proceedings. The lack of
complete identity objected to by the appellant between the invention as claimed
in the application and the explanations given by the respondent in the course
of the Belgian proceedings only reflected the different views of both parties
as to what constituted the gist of the invention. This was exactly what the
national court had to decide upon (cf. decision J 9/06), as correctly assessed
by the Legal Division.
The
arguments put forward in respect of objections not maintained in the
respondent's last submissions do not need to be mentioned.
XIV. The
final requests of the appellant are as follows:
- Main
request: "Pursuant to Rule 14(3) EPC, the Board of Appeal is respectfully
requested to set a date on which it intends to resume the proceedings for grant
with immediate effect, regardless of the stage reached in the national
proceedings instituted under Rule 14(1) EPC" or", alternatively, that
the date should be as soon as possible.";
- Auxiliary
request 1: "In case the MR cannot be granted, the Board of Appeal is
respectfully requested to decide, contrary to the Legal Division's appealable
decision dated 14/06/2013, that the conditions for suspension of the grant
proceedings pursuant to Rule 14(1) EPC were not fulfilled when the Third Party
filed its request dd. 20/03/2012 and to declare unfounded the decision to stay
the grant proceedings of the EP-Application in suit. Consequentially, the Board
of Appeal is respectfully requested to end the suspension of the grant
proceedings pursuant to Rule 14(1) EPC with immediate effect and/or set a date
pursuant to Rule 14(3) EPC on which to resume the proceedings for grant with
immediate effect or as soon as possible.";
- Auxiliary
request 2: "In case the AR1 cannot be granted, the Board of Appeal is
respectfully requested to set a date pursuant to Rule 14(3) EPC on which it
intends to resume the proceedings for grant, regardless of the stage reached in
the national proceedings instituted under Rule 14(1) EPC, under condition that
the Applicant/Appellant files a divisional application before mention of grant
of the parent Patent in the Bulletin, said divisional application calling for
the subject-matter of the claims of the parent application with the additional
feature that a release agent is applied between the layers.".
XV. The
respondent requested that the appeal be dismissed.
XVI. The
decision of the Board was announced at the oral proceedings held for that sole
purpose on 15 June 2015.
Reasons for
the Decision
1. The
appeal fulfils the requirements of Articles 106 to 108 EPC and Rule 99 EPC and
is therefore admissible.
2. Main
request
The stay of
the proceedings
2.1 Under
Rule 14(1) EPC the EPO must stay grant proceedings if a third party provides
evidence that it has instituted proceedings against the applicant for the
purpose of seeking a decision that the third party instead of the applicant is
entitled to the grant of the European patent. This issue is not disputed within
the scope of the new main request. Nevertheless, a request for resumption of
the proceedings for grant only makes sense from a logical point of view if the
stay of these proceedings is to be considered as legally justified. The Board
shares in this respect the reasoning of the contested decision.
2.2 Upon
reading the pertinent provisions of the Belgian Judicial Code and the decisions
of the Belgian Supreme Court and the legal study submitted by the parties, the
Board considers that the writ of summons served on the appellant on 20 March
2012 had the effect of initiating proceedings before the BCC, irrespective of
the fact that it was registered on 29 March 2012, thus the day before the first
hearing, which took place on 30 March 2012. The Board, in this respect, affirms
its provisional findings in the communication annexed to the summons for oral
proceedings (see point 5.1).
2.3 This
writ of summons filed by the third party (respondent) requests the court:
" - to declare that they are solely entitled to the European patent
application with number EP 2 148 770 (application number 08 736 405.5) and to
order the transfer of the application to them. - to declare that they are
co-inventor of the inventions described in European patent application (08 736
405.5) and in European patent application (08 749 615.4) and are therefore
co-owners of these inventions."
2.4 These
requests obviously aim at recognition of the rights of the claimant to European
patent applications which are clearly identified and correspond to those that
the appellant filed with the EPO. Contrary to the argument put forward by the
appellant, the EPO is not competent to determine whether the scope of the
inventions claimed before the national court is identical to that conferred by
the patent applications which are the subject of the request for a stay. This
lies within the exclusive competence of the court before which the action was
brought. Only where it is clear that no identity exists between the claimed
subject-matters could the EPO reject the request for stay due to non-compliance
with the requirements of Rule 14(1) EPC. However, this does not apply in the
present case.
2.5 The
competence of the Legal Division to order suspension after the publication of
the mention of the grant of the patent and to order correction of said
publication, provided that the requirements for a stay were met before the
publication, has been recognised by the Legal Board of Appeal in decisions J
15/06 of 30 November 2007, point 14 of the Reasons, and J 33/95 of 18 December
1995. This was no longer disputed in the last submissions of the appellant.
2.6 The
decision to stay the grant proceedings was thus justified.
The request
to resume the proceedings for grant
3. Under
Rule 14(3) EPC, upon staying the proceedings for grant, or thereafter, the EPO
can order that the grant proceedings be resumed regardless of the state reached
in the national entitlement proceedings. Contrary to the decision to stay, it
is within the discretion of the EPO to decide whether the proceedings for grant
are to be continued.
3.1 The
Board does not share the respondent's view that, in principle, patent grant
proceedings must be stayed until a final decision has been reached in the
national entitlement proceedings. Rule 14(3) EPC cannot be construed as an
exception to such a principle as this rule provides that a date for resumption
may be set upon staying the proceedings for grant as well as thereafter. This
view has already been expressed by the Legal Board of Appeal in decision J
33/03, point 2.1 of the Reasons, and in decision J 15/13 of 9 May 2014, point
2.1 of the Reasons. While it may be true that the practice has developed in
such a way that a stay has rarely been set in advance for a fixed time period
in order to allow the third party sufficient time to conduct the proceedings
before a national court until they are concluded, it is nevertheless clear that
Rule 14(3) EPC gives the EPO the power to set the time frame for resumption of the
grant proceedings right at the beginning of the stay.
3.2 It
follows that the mere fact that the proceedings before the BCC are still
pending is not a sufficient ground to refuse to set a date for the resumption
of the grant proceedings.
3.3 In
order to determine whether the grant proceedings are to be resumed, the Board
has to take into account all aspects relevant in balancing the interests of the
parties, however, without considering to which party the European patent might
belong. This lies within the sole competence of the national courts (see J
33/03 of 16 November 2004, point 2.1 of the Reasons).
3.4 In so
doing the Board has to bear in mind that the aim of Rule 14 EPC is to prevent a
non-entitled applicant from impairing the position of a potential true
proprietor by amending or even withdrawing the application without the latter's
consent (cf. J 7/96, OJ EPO 1999, 443, point 8 of the Reasons).
3.5 In the
present case, the stay of the grant proceedings was requested on the day before
the publication of the mention of the grant of the patent, which means that the
third party waited until the very last moment to introduce the case before the
BCC and to request a stay of the proceedings. Taken alone, this is not a
sufficient ground for resumption of the proceedings because it would run
counter to the right of the third party to request a stay as long as the grant
proceedings are still pending. However, such a circumstance might play a role
if there are other facts or evidence showing that the third party is not
actively seeking a decision by the national court. On the other hand, this also
means that the applicant (appellant) can no longer influence the scope of the
patent in so far as it has already approved the text in which it was intended
to grant the patent (cf. J 6/10 of 13 November 2012, point 4.6 of the Reasons).
This is all the more true in the present case as the decision to grant the
European patent was already issued.
3.6
According to a consistent body of case law, the length of the proceedings
before the national court or national authority is also to be taken into
consideration in a decision whether to resume the grant proceedings (see for
instance J 6/10 of 13 November 2012, point 4.2 of the Reasons). This aspect is
of particular relevance in the case at issue where so far no hearing as to the
substance has taken place before the BCC, although the entitlement proceedings
were started three and a half years ago.
4. In the
present case, the sequence of events is the following:
- on 20
March 2012, the proceedings for entitlement were initiated by the third party
before the BCC. It requested a stay of the grant proceedings before the EPO on
the same day;
- on 13
July 2012, the third party attempted to withdraw the Belgian action
"without prejudice", meaning that the waiver needed the agreement of
the other party to the proceedings in order to be effective; the appellant did
not give its agreement;
- on 15 May
2014, the third party brought a second set of entitlement proceedings against
the appellant before the BCC with the same cause of action; this is not
disputed by the parties;
- on 27
January 2015, the third party requested a stay of the proceedings on the basis
of the second Belgian proceedings. This request was rejected by the Legal
Division on the ground that it was redundant due to the fact that the grant
proceedings had already been stayed;
- at the
date of the oral proceedings before the Board, no hearing had taken place
before the BCC as to the merits of the case. The two sets of Belgian proceedings
have not been consolidated so far.
4.1 This
shows that the first entitlement action instituted before the BCC, which serves
as the sole basis for the current stay, was withdrawn by the respondent about
four months after being instituted and, moreover, that the grant proceedings
have been stayed for more than three years although the respondent (third
party) does not wish to pursue these proceedings. Such a factual situation
appears to be entirely inconsistent with the aim of Rule 14(3) EPC.
4.2 It is
true that the first entitlement proceedings are still pending due to the fact
that the appellant did not accept the withdrawal. However, the reasons for this
refusal are clear, nor are they disputed by the third party, which recognised
in its written submissions and again at the oral proceedings before the Board
that it was not in a position to pursue the first entitlement action due to a
lack of evidence.
4.3 In such
circumstances, the third party cannot be regarded as truly seeking a national
court decision recognising its right to the patent. In drawing this conclusion
the Board is not considering the merits of the entitlement proceedings, as it
is not within its competence to do so, but accepts the conclusion drawn by the
respondent itself that its case before the Belgian Court was without prospect
of success in the case at issue.
4.4 The
respondent's argument that, by not accepting the withdrawal, the appellant
bears the sole responsibility for the proceedings still being pending before
the national court does not really reinforce the position of the appellant and
is therefore not convincing. Construed a contrario, this also means that had
the appellant accepted the waiver, no proceedings would have continued at
national level and consequently the grant proceedings would not have been
stayed further. Moreover, the Board considers that the appellant has a
legitimate interest in trying to defend its case as it considers most
appropriate, in particular by using the opportunity to have its right to the patent
affirmed where the third party failed in its attempt to have ownership
recognised. This is also true if this choice leads to a longer stay of the
proceedings. This ground, however, cannot justify that the stay be maintained.
4.5 The
Board is not in a position to assess whether the appellant used every means to
block the third party from having access to evidence. This question lies within
the exclusive competence of the national courts and is of no relevance in the
present proceedings.
4.6 The
second entitlement action instituted before the BCC does not serve as a basis
for the stay in dispute. Even if it might constitute a ground for a second stay
in the near future, these national proceedings are not under scrutiny in the
present case.
5.
Therefore, the decision under appeal must be set aside and a date for
resumption of the proceedings for grant must be set.
6. The
appellant's main request being granted, the appellant's auxiliary requests need
not be considered.
7. The
request for reimbursement of the appeal fee was not maintained at the oral
proceedings. Affirming its preliminary opinion expressed in the communication
annexed to the summons to oral proceedings, the Board does not see any reasons
for ordering reimbursement of the appeal fee of its own motion.
Order
For these
reasons it is decided that:
1. The
decision under appeal is set aside.
2. The case
is remitted to the department of first instance with the
order to resume the proceedings for grant on 15 October 2015.
This
decision J 2/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2015:J000214.20150615. The file wrapper can be found here. Photo
"DSC_0773_2" by Delaney Turner obtained via Flickr under CC BY 2.0 license (no changes made)
Comments
Post a Comment