These days I come across quite a lot of decisions on transfers of opponent status. Here is one of them, where the Board had to get into Delaware state law.
The patent was opposed by the Engelhard Corporation. [II]
During the oral proceedings before the Opposition Division (OD), the opponent informed that it had been renamed in BASF Catalyst LLC. [V]
When assessing the question whether the Engelhard Corporation in whose name the opposition was filed and the BASF Catalysts LLC represented in the proceedings before the OD correspond to the same legal personality, the document entitled “Certificate of Conversion to Limited Liability Company of Engelhard Corporation to BASF Catalysts LLC” has to be considered.
Under point 6 it is stipulated: “When the Corporation has been converted to a Delaware limited liability company pursuant to Section 18-214 of the Delaware Limited Liability Company Act and to Section 266 of the General Corporation Law of the State of Delaware, the limited liability company will, for all purposes of the laws of the State of Delaware, be the same entity as the converting Corporation. For all purposes of the laws of the State of Delaware, the rights, privileges, powers and interest in property of the converting Corporation, as well as the debts, liabilities and duties of the Corporation, will not as a consequence of the conversion, be transferred to the Delaware limited liability company; the converting Corporation will not wind up its affairs or pay its liabilities and distribute its assets, the conversion will not constitute a dissolution of the Corporation, and the conversion will constitute a continuation of the existence of the converting Corporation in the form of a Delaware limited liability company.”
[There are no doubts on the authenticity of the document,] all the more as the provision of section 18-214 (f) of the Delaware Limited Liability Company Act reads: “When any conversion shall have become effective under this section, for all purposes of the laws of the State of Delaware, all of the rights, privileges and powers of the other entity that has converted, and all property, real, personal and mixed, and all debts due to such other entity, as well as all other things and causes of action belonging to such other entity, shall remain vested in the domestic limited liability company to which such other entity has converted and shall be the property of such domestic limited liability company, and the title to any real property vested by deed or otherwise in such other entity shall not revert or be in any way impaired by reason of this chapter; but all rights of creditors and all liens upon any property of such other entity shall be preserved unimpaired, and all debts, liabilities and duties of the other entity that has converted shall remain attached to the domestic limited liability company to which such other entity has converted, and may be enforced against it to the same extent as if said debts, liabilities and duties had originally been incurred or contracted by it in its capacity as a domestic limited liability company. The rights, privileges, powers and interests in property of the other entity, as well as the debts, liabilities and duties of the other entity, shall not be deemed, as a consequence of the conversion, to have been transferred to the domestic limited liability company to which such other entity has converted for any purpose of the laws of the State of Delaware.”
Therefore one has to act on the assumption that the transformation from the corporate structure ‘corporation’ to a ‘limited liability company’ preserves the legal identity precisely because there is no transfer of assets (Vermögenswerte) (“shall not be deemed … to have been transferred”) and all assets and liabilities (Aktiva und Passiva) remain unchanged with the company (“shall remain vested in the domestic limited liability company”). [2.1.1]
[…] R 20 EPC 1973 is not applicable as there has not been any transfer of rights; the company acting as opponent has always remained the same. It has only changed its name. Therefore, there could not have been any transfer of the opponent status. […]
G 2/04 deals with the transfer of the opponent status; it cannot contribute to the assessment of the present case precisely because the opponent status has not been transferred.
In decision T 870/92 [2.1], the Board explains : “What is relevant for the admissibility of the opposition is that the real identity of the opponent is clear at the time of filing of the opposition. Considering the circumstances of the case, one cannot interpret the additional indication of the business division (Geschäftsbereich) to be an indication of the name of another company than the company of the opponent. The evidence submitted in the appeal proceedings show that even before the foundation of the Schiess Kopp Werkzeugmaschinen GmbH there was a Schiess Aktiengesellschaft (with a division “Schiess Kopp”) and that, therefore, the indication “Schiess Aktiengesellschaft, Bereich Schiess-Kopp” could only designate the Schiess Aktiengesellschaft. The latter was entitled to file an opposition against the contested patent (A 99(1), first sentence, EPC).”
This decision cannot support the view of the patentee as in the present case the identity of the opponent at the time of filing of the opposition is undisputed. [2.1.2]
To read the whole decision (in German), click here.
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