This decision deals with the revocation of a patent - owned by XIRING - by the Opposition Division (OD) and the subsequent appeal, filed on behalf of Gemalto SA (hereinafter referred to as “alleged appellant”). The appeal fee was paid on January 22, 2010. An assignment document signed by Gemalto SA as transferee and XIRING as assignee was produced with the notice of appeal.
On February 16, 2010 the EPO drew attention to deficiencies in the “request dated 23 January 2010” for entry of a change in the European Patent Register (EPR) concerning the name of the patent proprietor. In particular, the administrative fee pursuant to R 22(2) had not yet been paid. It was requested to remedy the deficiency within a period of two months from notification of the communication.
The administrative fee was paid on February 25, 2010.
A statement setting out the grounds of appeal was filed on March 10, 2010.
The opponent submitted that the appeal should be held inadmissible as Gemalto SA was not entitled to file the appeal.
On September 21, 2010 correction of the name of the appellant was requested. Moreover, an accordingly amended notice of appeal was filed on behalf of XIRING against the decision of the OD.
During oral proceedings before the Board, the alleged appellant requested that the appeal be found to be admissible. According to it, paragraphs 1 and 2 of R 22 concerned the registration of a transfer in the EPR, thus information for third parties. Conversely, paragraph 3 related to the effect of a transfer vis-à-vis the EPO. R 22 thus dealt with the conditions for recording a transfer in the EPR so that the transfer became available to the public and, moreover, the condition for a transfer having effect vis-à-vis the EPO. These two situations were different and should not be mixed up.
As an auxiliary request, the alleged appellant that the following point of law be referred to the Enlarged Board of Appeal (EBA):
“Is it sufficient to provide documentary evidence in relation to the transfer of a patent under appeal which was in fact submitted before the expiry of the period for filing the notice of appeal, according to R 20(3) [EPC 1973] or 22(3) [EPC], so that a transfer shall have effect vis-à-vis the EPO? If yes, is the appeal receivable? If No, should the Board of Appeal have drawn attention of the appellant on incorrect designation of the Appellant and have invited the representative to modify the incorrect designation of the Appellant?
Is there in EPC 1973 or 2000, a Rule stating that to be an entitled-Appellant you should be recorded on the Register of European Patent, and in such case what is the utility of R 22(3) [EPC]?”
The opponent requested that the appeal be rejected as inadmissible or, as an auxiliary request, that the following point of law be referred to the EBA:
“Can the unambiguous identification of a non-party as the appellant in a notice of appeal be considered an error for which correction under R 101(2) or R 139 is available, if said non-party is a purported transferee of the European patent for which, at the expiry of the period for filing the notice of appeal, documentary evidence had been submitted but the requirements of R 22(2) had not been fulfilled?”
Here is what the Board had to say:
Preliminary remarks
[1] According to the European Patent Bulletin 2005/32 of 10 August 2005 and the decision of the opposition division of 27 November 2009, XIRING was the patent proprietor. The notice of appeal of 23 January 2010, however, was filed on behalf of Gemalto SA. [...]
R 22
[3.1] The procedure for recording the transfer of a European patent in opposition appeal proceedings is defined by R 22 in connection with R 85 and R 100(1).
[3.2] According to R 22(1) in conjunction with R 85 the transfer of a European patent shall be recorded in the EPR “at the request of an interested party, upon production of documents providing evidence of such transfer.”
It should be noted that the request of the party and the production of documents are conditions sine qua non for recording the transfer. However, paragraph 1 does not require that the request be filed and the documents be produced at the same date.
In the present case, on 24 January 2010 the alleged appellant filed the notice of appeal dated 23 January 2010, produced an assignment document at the same time, but failed to file a request for transfer of the patent as required by R 22(1). The official communication of 16 February 2010, however, includes the mention of a “request dated 23 January 2010”. In view of the fact that the only document on file bearing the date of 23 January 2010 is the notice of appeal, the Board assumes that the Client Data Registration considered the production of the assignment document with the notice of appeal as an implicit request for recording a transfer of the patent in the EPR. Since A 22(1) does not require a particular form of the request, the Board has no reason to disagree with the view of the Client Data Registration.
[3.3] According to R 22(2) “The request shall not be deemed to have been filed until an administrative fee has been paid.”
It is not required that the request for transfer be filed and the administrative fee be paid on the same date. In the case that these actions are performed on different dates, the date of payment of the fee prevails over the date of filing the request.
In the present case, the administrative fee was paid on 25 February 2010. It follows that the request implicitly filed on 24 January 2010 with the notice of appeal was not deemed to have been filed until 25 February 2010.
[3.4] Pursuant to R 22(3) “A transfer shall have effect vis-à-vis the EPO only at the date when and to the extent that the documents referred to in paragraph 1 have been produced.”
Paragraph 3 regulates the date on which the transfer becomes effective vis-à-vis the EPO. The wording “only at the date when and to the extent that the documents referred to in paragraph 1 have been produced” makes any earlier date mentioned in the assignment document obsolete from the viewpoint of the EPO. The earliest date on which the transfer may take effect vis-à-vis the EPO is the date on which the documentary evidence has been produced. Of course, a prerequisite for the transfer to become effective is that a request for recording the transfer has been made. This request is only deemed to have been filed when the requirement of paragraph 2 has been fulfilled.
[3.5] In summary, according to R 22 in conjunction with R 85, the procedural requirements to be fulfilled for recording the transfer of a patent consist in the filing of a request of the interested party, the production of documents providing evidence of the transfer, and the payment of an administrative fee. These requirements do not need to be fulfilled at the same time. If they are met on different dates, the transfer shall only have effect vis-à-vis the EPO at the date on which all the requirements mentioned above are fulfilled. Indeed, only at this date it is ensured that all the requirements of R 22 are met.
This interpretation of R 22 is commonly accepted in the legal literature (Singer/Stauder, Europäisches Patentübereinkommen, Fifth Edition, 2010, Art 71, margin No. 12; Visser, The annotated EPC, updated till 15 November 2009, R 22, page 404).
It is also consistent with the official line adopted by the EPO (Guidelines for Examination in the EPO, December 2007 and April 2010, E-XIII, 1) and the jurisprudence of the boards of appeal (Case Law of the Boards of Appeal of the EPO, December 2006, VII.D.5.2.2 and July 2010, VII.C.5.2).
[3.6] In the present case, this means that the provision of R 22(3) cannot lead to the conclusion that the transfer would have effect at the date, 24 January 2010, on which the notice of appeal with the enclosed copy of the assignment document was received. Rather, according to R 22(2), until the administrative fee has been paid, no request may be deemed to have been filed. Hence, despite the fact that the representative of the appellant Gemalto SA did not explicitly request the registration of the transfer of the patent in the notice of appeal, the Client Data Registration correctly concluded in the communication of 1 April 2010 that the registration had taken effect vis-à-vis the EPO on 25 February 2010, the date on which the administrative fee had been paid.
[3.7] The alleged appellant’s interpretation of R 22 is in evident disagreement with the commonly accepted construction of the legal norm from which there is no reason to depart.
Moreover, it is not convincing. Indeed, it is based on the artificial assumption that paragraphs 1 and 2 of R 22 should concern the effect vis-à-vis third parties, whereas paragraph 3 should be considered in isolation and have application vis-à-vis the EPO.
As the EBA stated in G 2/04 [2.1.2],
“Legal certainty requires that it is clear at any given time who the parties to the proceedings are” (Reasons, [2.2.2(a)]). Moreover, “In the case of the proprietor, the industrial property right may be transferred and such transfer may have effect vis-à-vis the EPO if it is registered in accordance with R 61 in conjunction with R 20 EPC [1973]. This allows the new proprietor to defend his patent in opposition proceedings before the EPO. Hence, the procedural status of the proprietor cannot be transferred without the substantive title”.
Therefore, the EPO registers the transfer of a patent to a new proprietor during the opposition period or during opposition procedure (R 85) or a possible subsequent appeal procedure (R 100(1)). The EPO will regard the new proprietor as a party to the proceedings only if it is duly recorded as such, that is if the formalities as laid down in R 22 have been completed. If the new proprietor wishes to participate in proceedings before the EPO, the registration under R 22 is mandatory and allows a precise and simple determination of the parties, thus avoiding that the EPO is involved in complicated investigations as to the relations between a recorded party and an alleged successor.
The alleged appellant’s argumentation fails to appreciate this aim of R 22. Even if its view would be accepted, which it is not, and assuming for the sake of argument that the EPO could be considered as a “third party” in transactions between an assignee and a transferee, the provisions for having effect vis-à-vis third parties, thus paragraphs 1 and 2 of R 22 in the alleged appellant’s view, would have to be applied together with those of paragraph 3 with respect to the effect vis-à-vis the EPO, as the [opponent] submitted. This would lead to the conclusions drawn above by the Board.
[3.8] In conclusion, the Board is of the view that the effective date of transfer of the patent to Gemalto SA is the date of payment of the administrative fee pursuant to R 22(2), which falls outside the period for filing a notice of appeal as laid down in A 108. Thus, the appeal was not filed by a party to the proceedings which led to the decision under appeal. It follows that the [opponent’s] conclusion that the appeal filed on 24 January 2010 in the name of Gemalto SA should be rejected as inadmissible (R 101(1)) is correct.
[3.9] With regard to the amended notice appeal lodged on 21 September 2010 on behalf of XIRING, it must also be rejected as inadmissible (R 101(1)) because it was not filed within two months of notification of the decision of the opposition division (A 108). Moreover, on 21 September 2010 XIRING was no longer adversely affected by the decision under appeal (A 107) because the transfer of the patent to Gemalto SA became effective vis-à-vis the EPO on 25 February 2010.
The cited jurisprudence
[4.1.1] In T 656/98 the board was confronted with the fact that the representatives on record for the patent proprietor Genencor Inc filed on 30 June 1998 a notice of appeal on behalf of “The proprietor: Genencor International Inc”. The appellant stated the patent had been transferred from Genencor Inc to its associated company, Genencor International Inc, before the appeal was filed. With a letter of 4 November 1998, received on 6 November 1998, a certified copy of the assignment of the patent from Genencor Inc to Genencor International Inc was filed. The transfer fee was also paid. The EPO recorded the transfer of the patent with effect from 6 November 1998. An opponent (respondent) objected that the appeal was inadmissible on the ground that at the time of filing the appeal the appellant was not a party to the proceedings. The board rejected the appeal as inadmissible.
[4.1.2] The alleged appellant held that the facts underlying T 656/98 and the present case were different.
First, in T 656/98 the document providing evidence of the transfer was not produced with the notice of appeal.
Second, Genencor Inc did not exist anymore at the date of the appeal in T 656/98, whereas XIRING still existed in the present case on 24 January 2010.
Moreover, in T 656/98 the representative of Genencor Inc received a communication from the board of appeal, dated 9 September 1998, querying the fact that the name and address on record at the EPO were not those stated for the appellant. The representative thus had an opportunity to clarify the situation and to confirm the intention to designate Genencor International Inc as the appellant. In the present case, however, the representative of the alleged appellant did not receive the Board’s communication dated 2 September 2010 until 8 September 2010 indicating a deficiency concerning the name of the appellant. A correction was then requested (R 101(2)).
[4.1.3] The mentioned differences are not sufficient for regarding T 656/98 as irrelevant. Quite on the contrary, in both the present case and T 656/98 a notice of appeal was filed designating as the appellant a patent proprietor who differs from the proprietor recorded in the EPR. Moreover, for a decision to be considered relevant, it is not mandatory that all the facts are identical.
[4.1.4] In T 656/98 [headnote] the board held that
“For a transferee of a patent to be entitled to appeal, the necessary documents establishing the transfer, the transfer application and the transfer fee pursuant to R 20 EPC [1973] must be filed before the expiry of the period for appeal under A 108 EPC [1973]. Later recordal of the transfer does not retroactively validate the appeal”.
In the present case, the Board has no reason to depart from these conclusions which, as already stated above, are consistent with the official line adopted by the EPO and the jurisprudence of the boards of appeal.
[4.1.5] As already mentioned above, the alleged appellant also submitted that, unlike in case T 656/98, the deficiency concerning the name of the appellant in the notice of appeal of 23 January 2010 had not been notified until the Board sent the communication of 2 September 2010.
This submission is not correct, as the [opponent] noted. Indeed, the Client Data Registration sent the communication of 16 February 2010 in which the alleged appellant was informed of a deficiency in the request under R 22 and was invited to correct it. The deficiency was identified as non-payment of the administrative fee under R 22(2). The alleged appellant reacted by paying the due fee on 25 February 2010.
Moreover, attention is drawn to the fact that the Client Data Registration sent the further communication of 1 April 2010 informing that the registration of the transfer had taken effect on 25 February 2010, i.e. after the expiry of the period for filing a notice of appeal under A 108. The alleged appellant did not reply to this communication, although it had been informed of the EPO’s interpretation of the requirements according to R 22 in the communication of 16 February 2010 and thus had been made aware of the legal consequences.
[4.2.1] In T 15/01 the board distinguished between the situation where a party acquired a patent through a transfer and through a merger. It held that
“R 20(3) EPC [1973] does not apply in the context of universal successions in law. The universal successor of a patent applicant or patentee automatically acquires party status in proceedings pending before the EPO” [headnote, II].
[4.2.2] T 15/01, cited by the alleged appellant, does not apply to the present case because the document, produced with the notice of appeal of 23 January 2010, provides evidence of the transfer of the patent and its American and Canadian members of the same patent family from XIRING to Gemalto SA. There is no evidence of a merger behind this transfer.
[4.2.3] Therefore, the Board concludes that R 22(3) applies in the context of the present case.
Correction of the appellant’s name in the notice of appeal
[5.1] The alleged appellant submitted that it was its true intention to file the appeal of 23 January 2010 in the name of the patent proprietor, but it was neglected to indicate XIRING as the appellant until the registration of the transfer of the patent took effect vis-à-vis the EPO. In such a case, a correction of the appellant’s name in the notice of appeal should be possible.
[5.2] In T 97/98 an appeal in the name of Fresenius AG was lodged against a decision of the opposition division to maintain the patent in an amended form. Later on the appellant submitted that Fresenius AG was erroneously indicated in the notice of appeal as being the name of the opponent. The true intention was to file the appeal in the name of Fresenius Medical Care Deutschland GmbH. Correction of the appellant’s name was requested.
Thus, the situation was that on expiry of the time limit under A 108 EPC 1973 the appeal did not expressly indicate the true name of the person in whose name the appeal was intended to be filed. In the board’s view
“What is required under R 64(a) and R 65(2) EPC [1973] is that there was indeed a deficiency, i.e. that the indication was wrong, so that its correction does not reflect a later change of mind as to whom the appellant should be, but on the contrary only expresses what was intended when filing the appeal. It must be shown that it was the true intention to file the appeal in the name of the person, who is, according to the request, to be substituted” [1.3].
The board then concluded that “correction of the name of the appellant to substitute a natural or legal person other than the one indicated in the appeal is allowable under R 65(2) EPC [1973] in conjunction with R 64(a) EPC [1973], if it was the true intention to file the appeal in the name of said person and if it could be derived from the information in the appeal, if necessary with the help of other information on file, with a sufficient degree of probability that the appeal should have been filed in the name of that person” ([1.4; headnote]).
[5.3] It should be noted that the conclusions drawn in T 97/98 are endorsed by the EBA in G 2/04. In particular,
“Considering the overriding interest that a party must be identifiable”, the EBA saw “no reason for a broadening of the scope of application of R 65(2) or R 88, first sentence, EPC [1973]” ([3.1]).
[5.4] In the present case, the alleged appellant itself declared that it was its true intention to file the appeal of 23 January 2010 on behalf of Gemalto SA which in its view was the patent proprietor at the filing date of the appeal. According to T 97/98, in such a situation, there is no deficiency in the notice of appeal concerning the name of the appellant which may be remedied in accordance with R 99(1)(a) in conjunction with R 101(2) nor an error which may be corrected pursuant to R 139, first sentence. Thus, the Board agrees with the [opponent’s] submissions.
Auxiliary requests for referring points of law to the EBA
[6.1] Pursuant to A 112(1)(a), “in order to ensure uniform application of the law”, or “if a point of law of fundamental importance arises”, the Board of Appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required for the above purposes. If the Board of Appeal rejects the request, it shall give the reasons in its final decision.
[6.2] In the present case, the alleged appellant’s auxiliary request essentially concerns the interpretation of the requirements of R 22 and the correction of the designation of the appellant in the notice of appeal. Since the jurisprudence of the boards of appeal with regard to both issues is consistent, there is no need to refer a question to the EBA to ensure uniform application of the law. In view of this, the Board does not see that a point of law of fundamental importance arises, that would need a clarification by the EBA.
Therefore, the alleged appellant’s auxiliary request is not allowable.
[6.3] As the [opponent’s] main request is allowable, the [opponent’s] auxiliary request need not be considered. [...]
The appeal is rejected as inadmissible.
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