Friday, 5 March 2010

T 428/08 – Transfers Are Effective When Evidence Is Filed

Another decision on transfer of the opponent status. I like it because the argumentation is solid and sound. The other side of the coin is that it is a bit lengthy.

Although the appellant does not designate itself as the appellant in the notice of appeal, it follows from the wording of its statement “The opposition was transferred to VDO Automotive AG” and the fact that the notepaper only contained indications concerning VDO Automotive AG and its postal address that the appeal was filed in the name and with the full powers of this company.

The appellant confirmed that this interpretation corresponded to its will and did not invoke an erroneous declaration.

Indications in the statement of grounds of appeal cannot be used for interpreting the notice of appeal. The statement made in the subject line of the statement of grounds of appeal, i.e. “VDO Automotive AG and subsidiarily Siemens AG” cannot be used for the interpretation of the notice of appeal, nor can it be considered to be an auxiliary request filed with the appeal because the statement of grounds was filed after expiration of the time limit for filing an appeal. The admissibility of the appeal is determined only on the basis of the legal facts that were presented at the expiration of the time limit for filing an appeal. [1]

[…] “VDO Automotive AG” was not a formal party to the proceedings before the Opposition Division and thus not entitled to file an appeal. [2]

The appellant relies on the fact that, according to G 4/08 [sic], the opponent status had been transferred from Siemens AG to it at the time of filing of the appeal, because the opposition of Siemens AG was attached to its “Siemens VDO Automotive” division and because this division was taken over by the appellant. [3]

[…] The legal succession (rechtsgeschäftliche Rechtsnachfolge) as a party to opposition proceedings becomes effective only when the transfer of the opponent status has been conclusively demonstrated and proven in the proceedings (see T 870/92 [3.1]). Therefore, the conclusive proof has only “ex nunc” effect for the change in the party status and has no retroactive effect in view of legal acts that have been performed beforehand. The mere allegation to be a legal successor is not sufficient for an effective transfer in the party status to take place (T 670/95 [2]). [4]

The notice of appeal did not fulfil the requirements, as it did not conclusively demonstrate the legal transfer, nor provide proof for the claimed legal transfer.

It does not conclusively follow from the statement in the notice of appeal according to which the business domain Siemens VDO Automotive has spun off from Siemens AG to become VDO Automotive AG, has been sold to Continental AG and momentarily did business under the name VDO Automotive AG, on the basis of which legal acts (Rechtsvorgänge) VDA Automotive AG could indeed have obtained the quality of opponent as legal successor. In particular, the mention that Continental AG has acquired the division suggests a temporary acquisition (?? Durchgangserwerb) by Continental AG, whatever the legal nature of this acquisition might have been. The decisive legal facts of a legal spin-off of the division Siemens VDO Automotive and its transfer to the legally pre-existing Siemens VDO Automotive AG by means of a post-formation acquisition (Nachgründung) cannot be construed from the notice of appeal but only from the written submission dated August 15, 2008, which also submitted, for the first time, two excerpts from the commercial register (Handelsregisterauszüge) as evidence for the legal succession.

Therefore, the claimed legal transfer, if at all, could only have become effective on filing of the written submission dated August 15, 2008. Beforehand, at the expiration of the time limit for filing an appeal (February 27, 2008), the appellant had not effectively obtained opponent status and was not entitled to file an appeal.

Therefore, the appeal filed on February 27, 2008 was inadmissible for lack of entitlement. [5]

However, the appellant relies on the argument that it ought to be admissible to file the evidence concerning the legal succession after expiration of the time limit for filing an appeal because it was also possible to file evidence for proving a prior use after expiration of this time limit, without there being the possibility that this ground for opposition be rejected.

First of all, the Board points out that an inconclusive presentation of a ground of opposition based on a prior use would also have the effect of making the opposition inadmissible (T 328/87 [headnote]).

Moreover, the requirements for an admissible opposition are determined pursuant to A 99, R 76(2)(c), and R 77(1), whereas the effectiveness of a transfer of the opponent status is governed by the criteria developed in the established case law. Insofar as the facts are different, the legal consequences are different, too.

The case law has expressly made the entry into effectiveness of the transfer of the opponent status depend on the point in time at which the evidence for the legal transfer is provided, which excludes any retroactive effect. This case law corresponds to the requirement of legal certainty that at any time it has to be known who is party to the proceedings and to whom the Board has to send notifications. The appellant wrongly maintained that decision T 670/95 does not answer the question whether the evidence may also be filed after expiration of the time limit for filing an appeal, because point 2 of the reasons expressly states that the proceedings have to be conducted with the original party until proof of the legal transfer is supplied. This wording excludes a possible retroactive change of the party status after presentation of the evidence. In decision T 870/92 [2] it is also stated that the legal succession as a party to opposition proceedings is only made effective by presentation of the evidence for a change in the party status. In decision T 19/97, it is pointed out that it is necessary to distinguish between the material requirements for a transfer of the opponent status, cited in G 4/88, and their procedural effectiveness. Point 5 of the reasons makes the following statement concerning the resulting legal consequence:

“From the point of view of substantive law, the transfer of the opponent (appellant) status which is a right that is accessory to the rights linked to a business division, has to be distinguished from its procedural effectiveness in the present proceedings. The latter being a formal procedural requirement, it has to be made dependent on the filing of a correspondingly justified request. For reasons of procedural legal safety, a change of parties due to a legal (?? rechtsgeschäftlich) transfer may not take place outside the proceedings without formal knowledge by the Board and may not take place retroactively because otherwise procedural acts or decisions could be carried out or made without a participation of the new opponent as sole entitled party. Therefore, a party change could only occur in the proceedings once the legal succession was requested and proven before the Board, because only then it was established for the Board who was the new opponent (appellant) and, therefore, party. Therefore, this formal requirement for an agreed change of party based on a transfer of a business division follows from general principles of procedure. Decision T 870/92 [3.1] comes to the same conclusion by applying R 20(3) and R 61, which as such only govern the effect of a legal transfer on the side of the applicant patent proprietor.”

Therefore, the appellant cannot rely on the fact that the filing of excerpts from the commercial register retroactively caused a change of the opponent status. [6]

The appellant also pointed out that the claimed legal transfer could have been determined by anyone and the Board by consulting the publicly available commercial registers event at the date on which the appeal was filed, and that further proof for the effectiveness of the legal succession was not needed in order to cause a transfer of the opponent status to the appellant.

The question as to whether certain facts which are disclosed by a public register can be considered to be manifest facts for the Board can be left aside. As a matter of fact, a conclusive demonstration of how the legal transfer to the appellant had taken place is missing in the notice of appeal, because of the assertion that a business division was acquired by Continental AG. There were no concrete legal facts in the notice of appeal concerning the merger by post-formation acquisition which pointed out how the acquisition of the business division by Continental AG took place and that there was no temporary acquisition (?? Durchgangserwerb) of the business division by Continental AG. It is not part of the duties of the Board to complete and correct a missing conclusive statement of facts of a party by inspection of the relevant commercial registers.

Having said this, it does not result from [the entries in] the commercial registers which rights were transferred from Siemens AG to VDO Automotive AG because there is only a reference to a particular business division. The legal transfer of a business division from one legal entity (Rechtsträger) to another is quite different from the case of a universal succession wherein one legal entity is completely merged with another from the legal point of view and wherein the commercial register testifies by the entry of the merger that all the rights existing at the moment of the entry into the register have been transferred to the other legal entity and that the transferring legal entity has ceased to exist from the legal point of view at that moment. When there is a legal transfer of a particular business division from one legal entity to another, both legal entities continue to exist as legally independent entities even after the entry of the transfer into the commercial register. Which rights or which assets are attached to the business division only results from the legal intention of the parties that is stipulated in the transfer agreement. If Siemens AG had claimed its rights as opponent against the will of the appellant in the appeal proceedings, only the transfer agreement – but not the entry into the commercial register – could have been considered as evidence for the real entitlement. Therefore, the appellant would have had to submit at least an extract of the merger agreement in order to prove that the attribution of the opponent status of Siemens AG as inseparable asset of the business division Siemens VDO Automotive and as evidence for the legal transfer of the opponent status to VDO Automotive AG. In this respect there cannot be other rules for proving the transfer of the opponent status according to substantive law than for proving the transfer of a patent attached to a business division. Which IP rights or “opponent status” are attached to a business division can only be determined from the merger agreement, possibly by interpreting it, as the case may be. The appellant has not provided such evidence; the reference to generally known facts [disclosed] in commercial registers is not sufficient as evidence. [7]

[…] The appeal is rejected as inadmissible. 

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