Wednesday, 24 February 2010

T 426/06 – Insufficient Proof For Opponent Status Transfer

The opposition against the contested patent had been filed by « BP Chemicals Ltd ». On March 2, 2006, a transfer of the opposition to the company named “Innovene Europe Ltd” was requested. The appeal was filed on March 10, 2006 in the name of Innovene Europe Ltd. The question arises as to whether this company was a party to the proceedings when it filed the appeal and was, therefore, entitled to file the appeal. [1]

The status as an opponent cannot be freely transferred (G 2/04). It is, however, transferred in case of a complete legal succession (universal succession) to the legal successor, e.g. in the case of an incorporation (Eingliederung) or a merger of legal persons (T 475/88 [1]). It can also be transferred together with the domain of the business or the part of a company to which the opposition belongs (G 4/88, T 659/92, T 563/89 [1.1], T 870/02 [2 and 3.1]). [2]

A new appellant can only obtain the status of an opponent and a party to the proceedings if it provides proof for a legal transfer justifying the transfer of the opponent status. The mere filing of an agreement between the company that is presented as legal successor and the original opponent is not sufficient for justifying the transfer of the opponent status and the status as party in the appeal proceedings without a substantiated presentation and proof of facts that could justify a legal succession in the above mentioned sense. [3]

In its written submission dated March 2, 2006, Innovene Europe Ltd has filed a general agreement between the opponent “BP Chemicals Ltd” and the appellant “Innovene Europe Ltd” as evidence for the transmission of the opposition.

According to the information submitted, the filed agreement states that “BP Chemicals Ltd” has transferred the Olefines and Derivatives operation of its petrochemical business and the associated business assets into a new group of companies referred to as Innovene Europe Ltd […] is a member.

However, it does not follow clearly and unambiguously from this agreement which domain of the business is encompassed by the term “Olefins and Derivatives operation”. Therefore, it cannot be determined to which extent the process for the preparation of alkanolamines with improved colour quality, which is claimed in the contested patent and which does not a priori concern olefins or their derivatives, is connected with the business domain “Olefins and Derivatives operation” cited in the agreement. As a consequence, there is no proof that the opposition concerns a domain of the business of the opponent “BP Chemicals Ltd” which was transferred to “Innovene Europe Ltd”. [4]

For the reasons referred to above, the filed agreement does not satisfy the requirements for a legally effective transfer of the opponent status, which means that the requested transfer of the opponent status cannot be allowed. Under these circumstances it is not necessary to decide the question at issue whether the filed agreement as such, without the submission of other documents, such as a contract of sale, is appropriate proof for the transfer of a domain of the business. [5]

Hence “Innovene Europe Ltd” did not have party status when it filed the appeal. However the appeal against the decision to maintain the patent in amended form was filed in the name of “Innovene Europe Ltd”. Pursuant to A 107, first sentence, only parties to the first instance proceedings adversely affected by the decision may appeal.

As “Innovene Europe Ltd”, in the absence of sufficient evidence, did not have party status when it filed the appeal it was not entitled to appeal. The appeal is inadmissible under R 101(1) (see also T 229/03 [4]). [6] 

I find the EPO’s decision tough on the appellant because the agreement also contained the following provisions: “The oppositions filed by BP at the EPO and listed in the attached schedule all relate directly to the business assets that were transferred. […] BP and Innoven warrant that the oppositions constitute an inseparable part of the assets. The oppositions are assigned from BP to Innoven.” Unfortunately, the decision remains completely silent on that fact.

In such situations, one should definitely follow the advice given in G 2/04: “If, when filing an appeal, there is a justifiable legal uncertainty as to how the law is to be interpreted in respect of the question of who the correct party to the proceedings is, it is legitimate that the appeal is filed in the name of the person whom the person acting considers, according to his interpretation, to be the correct party, and at the same time, as an auxiliary request, in the name of a different person who might, according to another possible interpretation, also be considered the correct party to the proceedings.”

To read the whole decision (in German), click here.