Thursday, 14 October 2010

R 18/09 – Joint Action

The petition for review concerns the decision in appeal T 128/08 revoking the opposed patent. The petitioners are the three joint proprietors of the patent, namely Johnson Matthey plc, Daimler AG, and HJS Fahrzeugtechnik GmbH & Co. KG (“HJS”). The decision contains some interesting statements on representation in petition for review proceedings.

The petition for review was filed by fax on October 7, 2009, by Mr L. The petition stated it was filed in the name of and on behalf of HJS.

In a letter dated 13 October 2009 and received at the EPO by fax on the same date, the common representative of the joint proprietors of the patent, Mr S., withdrew as representative and stated that Mr L. would be the new representative. On 16 October 2009 the EPO sent letters to both Mr S. and Mr L. confirming the change of representative.

Mr L. sent three replies to the EPO’s letter to him of 16 October 2009.

First, in a letter dated November 5, 2009, Mr L. stated that he was not the representative of the other two proprietors (Johnson Matthey plc and Daimler AG) and that official communications could be sent directly to those companies and gave for that purpose the names and addresses of persons at each Company.

Second, Mr L. wrote to the EPO on December 3, 2009, stating that in September 2009 Johnson Matthey plc and Daimler AG had transferred their interests in the patent to HJS evidence of which would follow.

Finally, Mr L. wrote to the EPO on December 18, 2009, stating that his firm also represented Johnson Matthey plc and Daimler AG (though not saying since when and not filing any additional authorisations) and that the petition for review had been filed in the name of all the patent proprietors.

Admissibility of the petition – joint proprietors, common representative

[4] Regardless of the confusion in which the petitioners placed themselves in the present case, the fact is that, although the petition was originally filed in the name of and behalf of HJS only, HJS was at all material times (and even despite submissions to the contrary) one of the three joint proprietors of the patent and the petition was never retracted, either by HJS or its (purported) representatives.

[5] However, it is also a fact that HJS, being only one of three joint proprietors, was not entitled to file the petition on its own. The Enlarged Board (EBA) held in decision G 3/99 that an opposition filed by several persons in common is to be dealt with as an opposition filed by only one party and such a group of common opponents is to be considered as a single party represented by a common representative (see Reasons, point [15]). It further held that, if such a group of common opponents should file an appeal, they can only do so jointly as a single party acting through their common representative (see Reasons, point [17]). The same principle has been applied to the filing of an appeal by one of joint patent proprietors (see T 1154/06 [1]).

[6] It is also to be noted that R 151, which concerns the appointment of a common representative, is stated to apply to joint proprietors of a European patent and also applies in appeal proceedings, if not on its face then beyond doubt by reason of R 100(1). It also applies to review proceedings by virtue of R 109(1) which provides that provisions relating to proceedings before the Boards of Appeal shall apply in proceedings under A 112a unless, as is not the case here, otherwise provided. It follows that the principle that a plurality of persons acting in common be treated as a single party (a “group party”) and the requirement that such a group party acts through a common representative both apply to petition proceedings.

[7] It was also held in G 3/99 that there is no practical need to acknowledge the validity of procedural acts of one member of a group party who is not its common representative. Since such a procedural act is treated by the EPO in the same way as a missing signature, each member of the group party or any other person on his behalf can perform such an act to avoid missing a time limit, provided the deficiency is remedied within a further time limit set by the Board in a communication. Hence, where an appeal is filed by a non-entitled person, it shall be considered as not duly signed and the common representative be invited to sign it within a given time limit (see G 3/99 [20 and order, paragraph 2]).

Applying this approach […] to petition proceedings and specifically to the present case, the procedural deficiency was that the petition was originally filed by and on behalf of only one of three joint proprietors and by a representative who clearly was not the joint representative at the time. However, the joint proprietors subsequently – but only at the third attempt, and apparently after considerable confusion amongst themselves and their representatives - succeeded in remedying the procedural deficiency by supplying the signature of the new common representative before a time limit was formally set by the Office. […]

The petition for review was finally found to be unallowable. The decision contains some more interesting paragraphs:

Apportionment of costs

[20] The [opponent’s] request for an apportionment of costs related solely to the issue of the joint proprietors. It argued that it would have incurred less costs if the petitioners had not first filed the petition in the name of HJS only, then produced several different stories, and then finally an explanation said to be the result of misinformation. The [opponent] claims this was a misuse of the proceedings.

The petitioners say there was no deliberate misuse.

The EBA can agree to that extent with the petitioners - no-one would have deliberately filed the inconsistent and self-contradictory letters of 5 November, 3 December and 18 December 2009. However, those letters were merely the superficial aspect of a question which, once raised, needed to be resolved, namely whether one of several joint proprietors of a patent may file a petition for review. To make one party pay the other’s costs of dealing with that issue, which may in time have implications for others beyond the present case, would not be equitable.


[21] The petition requested acceleration of these proceedings […]. While the reason for the request (to minimise free third party use under A 112a(6)) is readily understandable, that could apply in every case where a patentee is petitioner. The EBA’s view is that petition proceedings should by their nature be dealt with as speedily as possible and therefore acceleration requests are unnecessary.

The decision also allows to enrich our collection of grounds that will not be accepted in petition for review proceedings. As a matter of fact, the petitioner argued that Article 6 of the European Convention on Human Rights (“ECHR”) had been violated in the appeal proceedings.

[19] Although the petitioners argue at some length that A 112a(2) and R 104 must be so construed as to allow a complaint under Article 6 ECHR, the EBA has in decision R 16/09 [2.3.5-6] held that the list of grounds contained in those two provisions is exhaustive and that an alleged procedural defect which does not appear on that list cannot form the basis of a petition for review (see also R 10/09 [2.4-5]). Accordingly, since a contravention of Article 6 ECHR does not appear on that list, this ground of the petition is per se unallowable.

Should you wish to download the whole decision, you can do so here.