Tuesday, 11 January 2011

T 4/05 – Doubts Are Not Enough

** Translated from the German **

[2.1] The [patent proprietor] pointed out that the opposition was inadmissible because the identity of the opponent could not be determined without any doubt.

In the notice of opposition filed on July 8, 2002, the opponent is unambiguously identified as “3M Company” having the postal address “PO Box 33427, St Paul, Minnesota, 55133-3427, USA”. The trade name “3M Company” designates the opponent in an unambiguous way and does not leave any room for interpretation.

[2.2] The [patent proprietor] submitted that the opposition had been filed in the name of the “3M Company” having the above postal address, but that the patent register entry of the opposed patent indicated that the opponent was the “Minnesota Mining and Manufacturing Company”. An extract of the patent register was filed as evidence together with the statement of grounds of appeal. Moreover, the power of attorney that was filed before the proceedings before the Board of appeal gave a different postal address and, therefore, also a different registered office (Firmensitz), i.e. “3M Center, Saint Paul, Minnesota 56144, USA”. Also, three companies (“Minnesota Mining and Manufacturing Company”, “3M Innovative Properties Company” and “3M Innovative Properties Company Office of Intellectual Property Counsel”) had the same postal address. Evidence for this was provided in the form of extracts from the patent register filed together with the statement of grounds of appeal. The use of different company names suggested that the designation “3M Company” was an acronym behind which several legal persons could be expected. Therefore, the real identity of the opponent at the time of filing the opposition was unclear. The [patent proprietor] also referred to decisions G 3/99, G 3/97 and G 4/88 as support for his argumentation.

[2.3] However, it is not sufficient to submit doubts concerning the identity of an opponent in order to negate the admissibility of the opposition. What is needed are factual submissions together with cogent evidence that corroborate them. Nothing of that kind has been filed in the present case.

The entry into the patent register, an extract of which has been filed by the [patent proprietor] has been made by the EPO alone and cannot be imputed to the opponent, irrespective of whether it identifies the opponent correctly or not. Therefore, this entry cannot affect its party status.

The general power of attorney # 33692, issued on February 22, 2001, only concerns the powers of the professional representative but does not affect the party status of the opponent. Moreover, the professional representative is sufficiently authorised by the General Power filed by the 3M Company on September 12, 2005.

The [patent proprietor] has not filed the extract from the commercial register which, according to its submissions during oral proceedings (OPs) before the Board, showed a different company name. Consequently, this cannot be considered as evidence showing that the opponent’s identity was unclear – as indeed the [patent proprietor] acknowledged at the OPs.

The [patent proprietor’s] objection that two other companies were trading at the same address also has to fail because this is a mere observation and cannot affect the party status of the opponent, who had been unambiguously identified, in the proceedings.

The decisions cited by the [patent proprietor] concern the party status in common oppositions (G 3/99), the transfer of an opposition to a third party (G 4/88) and the filing of an opposition by a straw man (G 3/97). Therefore, they deal with questions that are different from the present case and, consequently, are not relevant.

For the reasons given above, the Board comes to the conclusion that the opposition complies with the requirements of A 99(1) EPC 1973 and R 55a) EPC 1973, which were in force at the time when the opposition was filed and, therefore, are to be applied (see T 1366/04 [1.2]).

Should you wish to download the whole decision (in German), just click here.

To have a look at the file wrapper, click here.