Thursday, 1 April 2010

T 1533/07 – Insolvent Yet Alive

The present decision deals with another case of bankruptcy during opposition proceedings; it contains some interesting statements on a little known rule: R 84.

[2] The [opponent’s] request for a suspension of the proceedings, based on an analogous application of R 84(2), the wording of which is identical to the wording of R 60(2) EPC 1973, cannot be granted, for the following reasons.

The opposition proceedings can be continued by the EPO of its own motion if the opponent dies or loses its legal capacity (R 84(2)). This rules allows to continue the opposition proceedings without the participation of the heirs or the legal representative of the opponent, which is in the interest of speedy proceedings. Therefore, it is not necessary to wait for the identification of the heirs and the acceptance of the heritage or the appointment of a legal representative (see Singer/Stauder, Europäisches Patentübereinkommen, 4th edition, Article 101, paragraph 70 et seqq. [NB : paragraph 84 et seqq. in the 3rd English edition]).

In the present case, on September 1, 2009 the German district court in Worms decided to open insolvency proceedings against the opponent, who is a legal person, and to appoint a liquidator (Insolvenzverwalter). Together with the opening of the insolvency proceedings the court decided to bar the debitrix from disposing of its present and future assets (Vermögen) during the insolvency proceedings. The administrative powers and the power of disposal were transferred to the appointed liquidator (see also § 80(1) and § 35 of the German Insolvency Regulations (InsO)). Therefore, the [opponent] has lost the administrative powers and the power of disposal concerning its assets, to which the opponent status belongs (see also G 4/88). However, there is no loss of legal capacity of the opponent as mentioned in R 84(2), first sentence (see Schulte, Patentgesetz mit EPÜ, 8th edition, introduction, paragraph 176) so that this rule could at most find an application by analogy.

The Board is of the opinion that in the present case even an analogous application of R 84(2) is not to be considered, because a liquidator has been appointed and named in the decision opening the insolvency proceedings. Therefore, the situation corresponds to none of the cases governed by this rule.

According to German insolvency law the appointed liquidator is party as of right as a consequence of the decision to open the insolvency proceedings (see decision of the BPG dated Mai 21, 2007 – 27 W (pat) 37/06, BIPMZ 2008, 26). Therefore, the appointed liquidator has become a party to the present proceedings by means of a legal change of party (im Wege gesetzlichen Parteiwechsels) and has replaced the opponent and appellant. Thus the proceedings were to be continued with the liquidator as party as of right (kraft Amtes) (see also T 917/01).

The arguments brought forward in favour of a suspension of the proceedings in analogous application of R 84(2) did not persuade the Board. Moreover, the possibility of such an analogous application appears doubtful because it would be in conflict with the purpose of the rule as explained above.

The question may be left aside whether in order for the proceedings to be complete, in view of the grounds for opposition and the cited prior art, which allegedly could not be evaluated without extensive investigations of the Board, submissions, and therefore, the presence, of the liquidator or his representative in the oral proceedings were required. The liquidator had been appointed as of September 1, 2009, by decision of the court. Therefore the Board is of the opinion that there was enough time for preparing the oral proceedings summoned for October 6, 2009 and, as the case may be, for a consultation with the previous appointed representative whose power of attorney issued by the opponent had lapsed pursuant § 117(1) InsO by the opening of the insolvency proceedings, and for issuing a power of attorney for a representative. As a matter of fact, the liquidator has issued a power of attorney to the representative who previously acted in the present proceedings, before the oral proceedings, so that the representative was able to argue the case.

The open question as to which companies and domains of the conglomerate of companies subsumed under the name of the opponent are to be continued as such may be relevant for the insolvency proceedings. However, this question could not be taken into account in the present proceedings because it would have considerably delayed the proceedings, which is neither in the interest of speedy proceedings nor acceptable (zuzumuten) to the [patent proprietor].

I shall come back on this decision tomorrow.

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