1.3.1 Proceedings for infringement instituted by patent proprietor – Article 105(1)(a) EPC

In T 223/11 the board held that it was internationally a widely accepted principle that the submission of a request on the national level for a marketing authorisation for a pharmaceutical product by a generic company did not constitute patent infringement (the so-called Bolar exemption). The proceedings instituted by the patent proprietor before the national administrative court, no matter how obstructive these may have been to a future market entry of the intervener's product, could not be considered as equivalent to infringement proceedings, irrespective of whether the Bolar exemption had been codified in the relevant national law or not.

In T 1713/11 the board stated that the EPC gives no specific definition of what constitutes proceedings for infringement. Furthermore, intervention was conceived as a procedurally exceptional situation, which is justified only by a substantial legitimate interest of the assumed infringer to enter the opposition proceedings. Therefore, it did not appear likely that there was a legislative intent to create an elaborate and intricate system of procedural provisions for the admissibility of interventions, and the boards too should refrain from creating such a system through their case law, and focus instead on whether the substantive conditions for admitting an intervention were fulfilled. Nullity proceedings concerning the patent at issue would not qualify and neither would saisie-contrefaçon proceedings (see also T 305/08). However, the definition of "proceedings for infringement" was not limited to civil proceedings, to proceedings that allow for certain remedies to be claimed, or two party proceedings. The board therefore concluded that as long as a patent proprietor or any other party entitled to do so initiated proceedings which aimed to establish whether a third party was commercially active in an area that fell within the patent proprietor's right to exclude, such proceedings were "proceedings for infringement" within the meaning of Art. 105 EPC.

In T 1746/15 the board followed T 1713/11, according to which "proceedings for infringement" pursuant to Art. 105(1)(a) EPC were "proceedings meant to establish whether a third party is commercially active in an area that falls within the patentee's right to exclude". The board held that the independent evidentiary proceedings under German law ("selbständiges Beweisverfahren" or "Beweissicherungsverfahren, § 485 DE-ZPO) initiated against the respondent by decision of the Landgericht Düsseldorf do not constitute the "establishment" of an infringement within the above meaning. The independent evidentiary proceedings under German law is comparable to "saisie" proceedings, e.g. "saisie-contrefaçon" in France, which are not regarded as "infringement proceedings" in terms of Art. 105(1)(a) EPC (T 1713/11 and T 305/08).

The appellant (opponent) in T 439/17 had filed notice of intervention in the opposition proceedings, invoking evidence preservation proceedings in Germany ("Beweissicherungsverfahren", § 485 DE-ZPO) that the patent proprietor had instigated. The patent proprietor had then, based on those proceedings' outcome, duly initiated infringement proceedings against the opponent while the appeal proceedings were pending. The appellant had argued that the two sets of proceedings had to be seen as one within the meaning of Art. 105 EPC, alleging support for its view in Section 493 DE-ZPO. The board disagreed, finding that it could not be derived from the latter provision that they had to be considered consolidated or otherwise procedurally linked. Furthermore, an intervention had to be admissible at the time of the intervention and could not be made admissible retroactively. In short, the board held that evidence preservation according to Section 493 DE-ZPO and subsequent infringement proceedings had to be seen as separate when applying Art. 105(1)(a) EPC; consequently the intervention before the opposition division had been inadmissible.