Wednesday, 4 May 2011

T 2232/08 – An Error With Consequences

This decision deals with an appeal against the decision of the Opposition Division (OD) to revoke a patent belonging to the MS Development (“MS”) company. In the notice of appeal, the professional representative indicated that the Zurflüh Feller (“ZF”) company was the new patent proprietor and requested its entry into the European Patent Register, based on the enclosed deed of assignment (acte de cession). This deed concerns the transfer of 201 shares representing the total capital (capital social) of the MS company.

The question arose as to whether the appeal was admissible.

The appellant argued that the intention clearly was to file the appeal in the name of ZF. The entry of the transfer had been notified to the professional representative on December 17, 2008, indicating November 25, 2008, i.e. the date on which the request for entry into the Register and the notice of appeal were received at the EPO, as the effective date.

The opponent submitted that the deed of assignment only concerned the shares (parts sociales) of the MS company and did not prove that the patent had been transferred because the legal entity (personne morale) of the patent proprietor still existed on the date on which the appeal was filed. Therefore, according to the opponent, the appeal was filed by a company different from the patent proprietor and had to be declared inadmissible.

What did the Board conclude?

*** Translated from the French ***


[1] It is established and undisputed that the appeal was filed in the name of ZF on November 25, 2008.

From on the deed of assignment and the copy of the excerpt from the commercial register, which have been filed by the parties, one can see that the assignment concluded between the proprietors of the totality of the shares of the MS company on the one hand and the ZF company on the other hand only concerned the shares of the patent proprietors, i.e. the control of the company, but that the legal entity of the patent proprietor still existed at the date on which the notice of appeal was filed. There was no other document providing evidence for the transfer of the patent.

As a consequence, the Board is of the opinion that the entry of the change of proprietor should not have been made and has to be cancelled.

Hence it has to be examined whether the appeal filed in the name of ZF is admissible.

A 107 provides, inter alia, that only parties to the proceedings that have led to the impugned decision can validly file an appeal. In this context, “party” is to be understood as meaning a person that has taken part in the proceedings before the EPO. Although a party may cease to be a party if it is decided that it is not entitled to take part in the proceedings, this does not mean it never was a party, only that it is no longer entitled to take part in the proceedings. In other words, its position cannot change retrospectively from that of having been a party to that of never having been a party (T 1178/04 [3] and T 1081/06 [3]).

In the present case, the entry of the transfer of the patent from the original patent proprietor MS to the appellant ZF has become effective on November 25, 2008, the day on which the notice of appeal was filed.

Consequently, the appellant was a party to the proceedings within the meaning of A 107 when it filed the notice of appeal. The fact that the transfer was entered into the Register erroneously (sur base erronnée) cannot mean that ZF was not party to the proceedings on the day on which it filed its notice of appeal (T 1178/04 [4] and T 1081/06 [3]).

Thus the Board considers that the appeal is admissible.

Continuation of the proceedings

[2] In the present case the transfer has been entered into the Register during the appeal proceedings only. Thus the entry did not affect the decision of the OD and a remittal to the first instance on this basis is not justified (as opposed to T 1178/04 [43-47]).

As far as the appeal proceedings are concerned, they have been initiated and pursued by the professional representative having taken part in the whole proceedings starting with the filing of the patent application, and who has also declared in his letter dated November 9, 2010, that he also represented the interests of the MS company. This assertion has not been contested by the [opponent] and the Board has no reason to challenge it.

In the light of these elements, the Board considers itself able to continue the proceedings dealing with substantive matters (au fond), including the arguments submitted by the professional representative of the [patent proprietor].

The situation is somewhat weird. Had the EPO refused to enter the transfer into the Register, as it should have, the appeal would have been inadmissible. But as it did enter it, the appeal was found admissible. Once the entry is canceled, who is party to the proceedings? MS again? What if it does not exist any more? This could have raised difficult questions had the Board decided to remit the case.

This being said, in the end all those considerations had no practical consequences because the appeal was finally dismissed: the claimed subject-matter had been found to lack novelty.

To download the whole decision (in French), click here.

The file wrapper is found here.

NB: Laurent Teyssèdre also comments this decision (here).