T 1421/05 – From The Grave

This decision deals with an interesting case of transmission of the opponent status. The original opponent transferred its business assets to another company and then ceased to exist. Nevertheless, an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form was filed in the name of the original opponent. Is this appeal admissible? In its decision, the Board goes to great lengths, as is reflected by the length of today’s post. In case you only want to know the outcome, just read the first paragraph.

[2] The [patent proprietor] identifies as one of the key questions for the Board as being to decide: if an opponent transfers the business assets in the interests of which the opposition was filed to another company and then ceases to exist, is a later appeal filed in the name of the non-existent company admissible? The answer to this question in the present case is, yes.

It is easiest to deal with the numerous arguments raised by the [patent proprietor] by considering them in relation to the chronological sequence of the relevant events, the three important ones being:

(a) the execution of the Technology Transfer Agreement (TTA) dated 14 April 2000;

(b) the dissolution of the original opponent, Aventis R&T, on 31 May 2003; and

(c) the filing of the notice of appeal and statement of grounds of appeal in the name of Aventis R&T on 4 November 2005 and 5 January 2006, respectively.

The effect of the TTA

[3.1] In its written submissions the [patent proprietor] argued, relying on G 4/88, that since an opposition is an inseparable part of the assets in relation to which the opposition was filed and cannot be transferred inter partes separately from those assets, this means that when such assets are transferred inter partes, the opposition is ipso facto also transferred. This argument was not elaborated on in the course of the oral proceedings (OPs) and is clearly untenable on the basis of the jurisprudence of the Boards of Appeal. Nevertheless, since the argument pervades many of the proprietor’s other arguments, it is appropriate to say something in detail about it here.

[3.2] The conclusion which the [patent proprietor] seeks to draw from G 4/88 is not correct. There, the Enlarged Board (EBA) held that an opposition may be transferred or assigned to a third party as part of the opponent’s business assets together with the assets in the interests of which the opposition was filed (see the Order of the EBA). As part of the reasons for this, the EBA said that where the opposition had been instituted in the interest of the opponent’s business:

“… the opposition constitutes an inseparable part of those assets. Therefore, insofar as those assets are transferable or assignable under the applicable national laws, the opposition which is part of them must also be regarded as transferable or assignable in accordance with the principle that an accessory thing when annexed to a principal thing becomes part of the principal thing.” (point [6]).

[3.3] Despite saying that “the opposition constitutes an inseparable part” of the assets in respect of which it was filed, the EBA did not say that the opposition was automatically transferred with the business assets; rather, that it was transferrable (sic). Indeed, as pointed out in T 19/97 [2] the EBA did not deal with the procedural requirements for the valid transfer of opponent status; it has been left to subsequent case law to work this out. Such case law makes it clear that where the business assets in relation to which the opposition was filed have been transferred and at the same time the transferor has contractually agreed to transfer the opposition to the transferee, the status of opponent stays with the transferor until (a) evidence has been filed with the Office sufficiently evidencing the transfer and (b) a request has been filed to recognise the transfer of the status of opponent. See T 19/97 [5], and also T 1137/97 [4]:

“For the purpose of EPO proceedings, the effective date of the transfer of an opposition must be taken as the date when the transfer has been requested at the EPO and adequate evidence provided. … [A] transfer of an opposition is . something that has to be requested at the EPO together with supporting evidence before it can take effect.”

[3.4] Until such a request has been made and evidence of the transfer has been provided to the Office, the transferor-opponent continues to have the relevant rights and obligations. See T 670/95 [2], T 413/02 [3]. In T 6/05 [1.6.4] the Board made it clear that in a case where the status as opponent is agreed to be transferred together with the assignment of business assets the party status may either remain with the original opponent or be transferred to the new opponent:

“In the case of transfer by assignment of particular business assets from one (legal) person to another … the original opponent continues to exist … [Tlhe original opponent may continue the opposition proceedings. If the assignee who acquired the particular business assets wishes to become a party to the opposition proceedings, it is justified to grant it party status only at the date when sufficient evidence has been produced, because the original opponent only then loses, as a consequence, its party status.”

[3.5] The [patent proprietor] seeks to distinguish T 1137/97 and T 670/95 on the basis that they do not deal with the case of an inter partes transfer where the transferor has later ceased to exist. But this point is not relevant to the present stage of the argument, which is only concerned with the effect of an inter partes transfer.

[3.6] In T 136/01 a similar argument to that advanced by the [patent proprietor] was advanced, also based on the same reading of G 4/88, and was similarly rejected: see point [1.6] of the Reasons. There, the original opponent was Hoechst AG, on whose behalf an appeal was filed, although the assets in respect of which the opposition had been filed had in the meantime been transferred (as it happens, to Aventis R&T and then to Axiva). The Board said:

“As long as the requested transfer has not been sufficiently substantiated, and has not been accepted by the competent department, the original opponent retains the status of party to the opposition proceedings.” (point [1.4.10] of the Reasons)

[3.7] The reason for the above requirement of a request coupled with supporting evidence is procedural certainty: the proprietor and the Office must be in a position to know with certainty who is the person entitled to prosecute the opposition at any particular time. See e.g. T 1137/97 [4] and T 956/03 [7].

[3.8] The [patent proprietor] advanced a rather obscure point based on submissions as to the nature of opponent party status […].

According to the patent proprietor, the present case was concerned with a distinction between a legal fact and a legal fiction. The legal fact here was that the person aggrieved (i.e., adversely affected – see A 107) by the decision was Nutrinova (the food ingredients business of Celanese Ventures GmbH, to which company the relevant business assets had been transferred in July 2002). The legal fiction is that there is such a thing as “party status”, this being something for which there is no basis in the EPC and which is merely an administrative convenience for the EPO. The persons named in the proceedings from which an appeal may be filed enjoy “party status”, even if there has been a transfer from that party. This legal fiction enables the EPO to administer appeal proceedings without investigating whether there has been a change in the legal fact situation. This implies that “party status” is inextricably linked to the name of the party. If this “party status” can be transferred, then it must have been transferred in the present case by the TTA, and the appeal is inadmissible. If it cannot be transferred, then it cannot be transferred by universal succession and the appeal is again inadmissible.

However, the status of opponent is merely a procedural status created by the filing of an opposition. By this act the opponent becomes a party to the proceedings and thus becomes entitled to a bundle of procedural rights (G 3/97 [2.1]; G 4/88 [2], in particular the right to a legal remedy or remedies (T 724/05 [5]). The basis on which the status of opponent is obtained and enjoyed is thus a matter of procedural law (G 3/97 [2.1]). See also the commentary on A 99 in Singer/Stauder, 5th edition, 2010, at point 58

“Im Gegensatz zum Patentinhaber hat der Einsprechende keine materiellrechtliche, sondern nur eine verfahrensrechtliche Rechtsposition.”

and in Schulte, 8th edition, 2008, para. 59, point 154

“… die Stellung als Einsprechender … [ist] eine jedem Dritten offen stehende prozessuale Möglichkeit.”

[3.9] This status, consisting of the right to prosecute an opposition and to the accompanying remedies, is not dependent on any interest, financial or otherwise, in having the patent revoked. Thus the EBA in G 3/97 [3.2.1] made it clear that an opposition may be filed, in the absence of any relevant abuse (as to which see point [5], below), by someone with no financial, commercial or other interest in the opposition:

“… the EPC legislator explicitly designed the opposition procedure as a legal remedy in the public interest which, according to A 99(1), is open to “any person”. It would be incompatible with this to require that the opponent show an interest, of whatever kind, in invalidating the patent.”

[3.9.1] For the same reasons it is not necessary for an opponent to show, subsequent to the filing of the opposition, any continuing interest, of whatever kind, in invalidating the patent. See T 1204/97 [1.2]:

“Moreover, as a legitimate interest is not a requirement for an opposition to be admissible (G 3/97 and G 4/97 [3.2.1 et seq.], see also Singer/Stauder, loc.cit., A 99, note 17 et seq.), it can also not be required as a condition for being entitled to continue an opposition as the legal successor of the original opponent.” (emphasis added)

[3.9.2] Even if the opponent might in some circumstances be considered to be acting on behalf of the transferee, he remains the true opponent. This was established by the EBA in G 3/97 [2.1,3] in the case of an original opponent acting on behalf of a third party. The argument that a person acting on behalf of a third party is not acting in his own name was rejected. The present Board considers that the position is the same following a transfer of relevant business assets by an opponent. There is no objection to this in the absence of additional reasons establishing an abuse.

[3.10] Finally, the [patent proprietor] argues that the Office had constructive knowledge of the TTA because evidence of it had been filed in separate opposition proceedings (against EP 0443861). The suggestion is apparently that a transfer of the present opposition should have been recognised by the Office as from that moment. No case was cited to the Board in support of this novel proposition.

However, first, there is no principle known to the Board under which the Office can be deemed to have notice in one set of proceedings of matters filed in other proceedings. Second, there was in any event no request filed in the present proceedings for transfer of the present opposition.

[3.11] It follows that so far as the Office and the parties were concerned, Aventis R&T remained the opponent after the effective date of the TTA (apparently 1 January 2000) when, so the [patent proprietor] alleges, Aventis R&T assigned to Axiva the relevant business assets, including its interest in the present opposition.

The effect of the dissolution of Aventis R&T

[4.1] It next needs to be considered what was the effect of the events which took place in 2003. This is summarised in the declaration April 9, 2009, filed by Sanofi-Aventis, and is substantiated by extracts from the relevant company registers, various declarations and also expert evidence of German company law filed on behalf of [opponent II].

[4.2] Aventis R&T was originally established as a limited partnership (“Kommanditgesellschaft”) in 1998 (under the then name of Hoechst Research & Technologies Deutschland GmbH & Co. KG). The partners were (a) Hoechst AG (as the sole limited partner, or Kommanditistin) and (b) Hoechs t Research & Technology Deutschland Verwaltungs GmbH (as sole general partner). Hoechst Research & Technology Deutschland Verwaltungs GmbH subsequently changed its name to Aventis Research & Technologies Verwaltungs GmbH. With legal effect from 31 May 2003, Hoechst AG withdrew from the limited partnership (“ist ausgeschieden” : see the relevant company regis ter, Handelsregister des Amtsgericht Frankfurt am Main HRA 28517). This had the effect of dissolving the limited partnership, with the result that Aventis R&T ceased to exist (“Die Gesellschaft ist aufgelöst. Die Firma ist erloschen.”: see the entry in the same register for 18 June 2003). On Aventis R&T ceasing to exist, Aventis Research & Technologies Verwaltungs GmbH became the universal successor of the limited partnership, so that all the assets of the partnership were transferred by operation of law to this latter company. With effect from 29 August 2003, this company was merged into Aventis Pharma Deutschland GmbH, with the effect that this latter company became the legal successor to all the assets of the former. This latter company subsequently changed its name to Sanofi-Aventis Deutschland GmbH (referred in this decision as Sanofi-Aventis). Thus in 2003, and so before the notice of appeal was filed, Aventis R&T had ceased to exist and Sanofi-Aventis had became the universal successor to Aventis R&T. These facts were not challenged by the [patent proprietor].

[4.3] Dr Ahrens, a professional representative acting under an authorisation dated 8 March 2001 (see Z16), had been representing Aventis R&T in the opposition proceedings before the company was dissolved. After Aventis R&T1s dissolution, the opposition in fact continued to be prosecuted by Dr Ahrens in the name of Aventis R&T. Thus at the hearing before the OD on 5 September 2005, the “opponent”, named as Aventis R&T, was represented by Dr Ahrens and Mr Taormino, of the firm Hoffmann Eitle (the latter acting under a sub-authorisation given by Dr Ahrens on 6 July 2005). The decision of the OD was subsequently notified to Dr Ahrens on the same basis.

[4.4] [Opponent II] argues that the effect of these events was that Aventis Research & Technologies Verwaltungs GmbH, and later Sanofi-Aventis, became the person entitled to pursue the opposition as universal successor of Aventis R&T. The fact that the opposition was in fact continued in the name of Aventis R&RT was a mistake.

[4.5] The [patent proprietor] argues, first, that even if its earlier arguments are wrong, and Aventis R&T retained the status of opponent after the effective date of the TTA, opponent status cannot in general be transferred to a universal successor: the principles applicable to the case of a universal successor of a proprietor, such as T 15/01, cited by [opponent II], do not apply to the case of an opponent.

Secondly, it was argued that even if in general opponent status can be so transferred, it cannot be transferred in a case such as the present one where the “opponent” had previously transferred the relevant business assets: there was nothing left to be transferred to a universal successor. These two arguments are considered in turn.

No automatic transfer of opposition to universal successor?

[4.6.1] The first line of argument was put forward in the [patent proprietor’s] written submissions but again was not developed during the OPs, and again is clearly untenable, as demonstrated by many decisions of the Boards of Appeal. Thus in T 956/03 [2] it was said:

“It is well-established that oppositions, while they may not be freely transferred, can be transferred in certain circumstances - from one natural or legal person to another together either with those assets of a business in the interest of which the opposition was commenced or by universal succession to all assets, as for example by merger”. (citations omitted)

[4.6.2] See also e.g. T 670/95 [2], where it was said:

“Die Stellung als Einsprechender ist nicht rechtgeschäftlich frei übertragbar …. Sie geht allerdings bei einer Gesamtrechtsnachfolge (Universalsukzession) auf den Gesamtrechtsnachfolger über, so z. B. im Fa11 der Eingliederung oder Verschmelzung juristischer Personen … ” . (citations omitted)

[4.6.3] T 425/05 [1], cited by [opponent II], and referred to in more detail below (point [6.10]) is to the same effect.

No automatic transfer where prior inter partes transfer?

[4.7.1] The Board also considers that this argument is not correct. There does not appear to be any justification for the distinction drawn by the [patent proprietor] that such an automatic transfer cannot take place where the opponent has already transferred the assets in the interests of which the opposition was filed. On the above analysis, Aventis R&T had the right to prosecute the opposition in its name immediately before it ceased to exist and there seems no reason why, as a matter of principle, this right could not pass automatically to Sanofi-Aventis as universal successor.

[4.7.2] As already explained, the status of opponent is purely a procedural status and does not, in the absence of any relevant abuse (as to which see point [5], below), require the opponent to have a financial or other interest in the prosecution of the opposition (see point [3.9], above). Even where the right to prosecute is completely bare (i.e., where the opponent possesses no other rights) no authority was cited to the Board, whether concerning the position under the EPC or under German national law, to show that such a bare right is of a kind which cannot pass to a universal successor, and the Board can see no reason why it cannot do so.

[4.7.3] In G 4/88 [5] the EBA expressly left out of consideration the question whether an opposition could be transmitted or assigned independently of the existence of an interest in instituting the opposition, but noted that transmission of the opposition to the opponent’s heirs is acknowledged implicitly in R 60(2) EPC 1973 and that the Guidelines for Examination also allowed, by analogy, for the opposition to be transmitted to the opponent’s universal successor in law (see Part D, Chapter 1.4 of the Guidelines). This has of course since been confirmed by decisions of the Boards of Appeal, e.g., those cited in point [4.6.1], above. In none of the decisions have the Boards held that, in order for transmission to a universal successor to take effect, the opponent must also possess relevant assets which are at the same time transferred to the successor. Of course in none of these cases were the Boards presented with the unusual facts of the present case. However, it should be born (sic) in mind that it is not necessary for an opponent to carry on any business at all, whether of a kind related in some way to the subject matter of the patent, or otherwise. See point [3.9], above. There thus seems no good reason why the right to prosecute an opposition should not be capable of passing to the universal successor of an opponent who filed an opposition without having any business assets relating to the opposition. Given this, there also seems no good reason why, in the unusual circumstances of the present case, the right to prosecute an opposition should not be capable of passing to the universal successor of an opponent who did have such assets when the opposition was filed but has since parted with them. There does not appear to be any danger of “trafficking” in the opposition in such circumstances (see T 298/97 [6]) and, to the extent that it gives rise to the possibility of abuse, the case law already provides for this (see point [5], below) .

[4.8] The [patent proprietor] accepts that the logical conclusion of its arguments is that (assuming its previous argument that the opposition had already been transferred to Axiva GbmH and then to Lonza Ltd is wrong) when Aventis R&T ceased to exist, the right to prosecute the opposition disappeared, but argues that there is nothing objectionable about this. However, while it is quite correct that where an opponent has no universal successor the right to opponent status may simply disappear when the opponent ceases to exist (see T 525/94 and T 353/95), here there is a universal successor.

The “certainty” argument

[4.9.1] The [patent proprietor] argues that it is intolerable that the right to pursue an opposition could be vested in two different people at the same time, namely the transferee under an inter partes transfer and also the universal successor of the transferor. (It should be noted that this argument, if valid, would apply to inter partes transfer cases generally, not just in the unusual facts of the present case.)

[4.9.2] It is of course not in doubt that:

“… clear legal principles are necessary for assessing who may be a party to the proceedings before the EPO … . At any given time throughout the proceedings, there should be no doubt as to who may validly exercise procedural rights and to whom officia1 actions by the EPO are to be addressed.” (G 2/04 [1.3]).

[4.9.3] But on the above analysis it is clear in whom the right is at any time vested, both in the case of an inter partes transfer and in the case of a universal successor. The same is true where both types of transfer are present. There is no question of opponent status being vested in two different persons at the same time.

In the case of an inter partes transfer it has already been pointed out that the requirement of a request coupled with supporting evidence is based precisely on the need for legal certainty (see point [3.7], above). In the case of a transmission of opposition status to a universal successor, as stated in T 6/05 [1.6.4]:

“… there can only be one (legal) person who has rights and obligations, with the consequence that there is necessarily and automatically a continuation of the existing legal status as opponent from the date of the merger. It can thus be established unambiguously and without any legal uncertainty, at any point in time in the proceedings who in fact is the opponent having party status, regardless of the date when sufficient evidence to this effect was filed.”

If both types of transfer are present, as here, the position is therefore also clear. The argument of the [patent proprietor], if correct, would have quite the contrary effect; it would create uncertainty.

[4.9.4] The Board is not confronted by a situation in which the successor to the business assets in respect of which the opposition was filed and the later universal successor of the original opponent are disputing who has the better right to the status of opponent. This type of problem can be dealt with as and when it arises.

Abuse

The [patent proprietor] argues that the transfer of opposition status to Sanofi-Aventis should not be recognised because it is capable of giving rise to abuse. The [patent proprietor] only faintly suggested the existence of actual abuse and in OPs concentrated rather on the possibility of abuse […]. As with the previous argument, the implications of this argument are not limited to the unusual facts of the present case but in fact concern the case of inter partes transfer of opponent status generally.

[5.2] As already made clear, no financial, commercial or other interest is required as a condition of filing or pursuing an opposition. The EBA in G 3/97 made it clear in the following passages that the fact that an opponent may be acting on behalf of or at the instance of a third party does not by itself mean that the opposition is inadmissible: there are only limited circumstances in which the filing of an opposition can be regarded as an abuse:

“… acting on behalf of a third party cannot be seen as a circumvention of the law unless further circumstances are involved. The purpose of opposition proceedings alone does not offer sufficient grounds for regarding an opposition on behalf of another person as an abuse of the procedural provisions.” (point [3.2] of the Reasons)

“… the opponent’s motives are of no consequence for the EPO, at least as long as no conduct involving an abuse of process arises from additional circumstances.” (point [3.2.2] of the Reasons)

“If, for the purpose of opposition, the opponent does not need to show an interest in the invalidation of the patent, then no harm is done if a third party has an interest in the invalidation of the patent. The question of the interna1 legal relationship between the opponent and any third parties has, as a matter of principle, no legal significance for external purposes, i.e. vis-à-vis the EPO and the patent proprietor.” (point [3.2.2] of the Reasons)

[5.3] The EBA concluded that where the person named as opponent was acting on behalf of a third party the opposition would be inadmissible only if the involvement of the opponent were to be regarded as circumventing the law by abuse of process. This might arise where the opponent was either (a) acting on behalf of the patent proprietor or (b) acting on behalf of a client in the context of activities which, taken as a whole, were typically associated with professional representatives, but where the opponent did not have the relevant qualifications required by A 134: see paragraph l(c) of the EBA’s order.

[5.4] The present Board considers that the same considerations must apply to the continuation of an opposition or an opposition appeal.

[5.5] The [patent proprietor] did not suggest that the opponent in the present (whoever it might be) case was in fact circumventing the law by abuse of process by either of the above means. While the categories of abusive behaviour were not stated by the EBA to be limited to the two examples given, the [patent proprietor] did not suggest a third category into which the actions of [opponent II] in the present case would fall. As stated by the EBA, the burden of proof in establishing any abuse falls on the party alleging the abuse (point [5] of the Reasons).

[5.6] The argument is therefore rejected.

The filing of notice of appeal and statement of the grounds of appeal.

[6.1] The notice of appeal in this case was filed on 4 November 2005 by the firm Hoffmann Eitle, acting by a professional representative. The notice stated:

“In the name of, and by authorisation of Our client Aventis Research & Technologies GmbH + Co. KG we herewith lodge an appeal …”.

In its heading the notice referred inter alia to Aventis Research & Technologies GmbH + Co. KG (i.e., Aventis R&T) as “Opponent II”. The notice sought inter alia reversa1 of the first instance decision and revocation of the patent. A statement of the grounds of appeal was filed on 5 January 2006 on the same basis by Hoffmann Eitle, again acting by a professional representative. Hoffmann Eitle were acting under a sub-authorisation given by Dr Ahrens on 6 July 2005; their authority to act on behalf of Sanofi-Aventis has been subsequently affirmed by Sanofi-Aventis (see, e.g., the declaration from Sanofi-Aventis dated 1 July 2010 and confirmation of Dr Ahrens’ authority dated 14 May 2009: Z 8 ).

[6.2] The [patent proprietor] argues that an appeal filed by a universal successor of an opponent which has previously transferred away the assets in respect of which the opposition was filed is inadmissible since the universal successor can have no interest in the proceedings, and thus cannot be prejudiced within the meaning of A 107 by an order of the OD. (Again it should be noted that this proposition, if it held good, would apply not just in the special case of an appeal filed by a universal successor of an inter partes transferor, but in the more general case of any appeal filed by an inter partes transferor.) This is largely a repetition of previous arguments, and again the Board does not consider it to be correct. A party is prejudiced by a decision if it does not accede to one of its substantive requests: see e.g., T 234/86. This condition was clearly satisfied in the present case. The Board has already explained that it is not necessary that an opponent has a continuing interest, financial or otherwise, in the prosecution of the opposition or appeal (see point [3.9], above).

[6.3] T 1324/06 was relied on heavily by the [patent proprietor]. There, the proprietor argued that the opponent had no legitimate interest in pursuing the opposition appeal since (so the proprietor alleged) several divisions of the opponent Company had been sold. It offered no evidence for this, although it was accepted that the opponent had been declared bankrupt. The Board, after citing G 2/04 to the effect that an inter partes transfer of an opposition requires a concurrent transfer of the material assets, said:

“Since a transfer of material assets by the initial opponent may thus result in its inability to further pursue the opposition or appeal, allegation of facts that would entai1 such grave consequences should be proven beyond any reasonable doubt. Yet, all the patentee could offer in this respect was some hearsay evidence about the alleged sale of assets, and the fact that one of documents filed in appeal [sic] did not originate from [the original opponent], but another source. Taken alone or together, these allegations are insufficient to prove beyond reasonable doubt that [the original opponent] should no longer be entitled to pursue the appeal.” (point [1.3] of the Reasons)

[6.4] The [patent proprietor] in the present case argues that since it is clear beyond doubt that Aventis R&T had previously transferred all its material assets (something which is disputed by [opponent II]), it is no longer able to pursue the opposition or appeal. It is not entirely clear what the Board inT 1324/06 intended by saying that the original opponent might be unable to pursue the opposition or appeal, but the present Board cannot take it as a statement (which in any event would only have been obiter) that if there is evidence of a transfer by an opponent of the relevant assets, the opponent from that point on is no longer entitled to pursue the opposition or an appeal. This would be wholly contrary to the jurisprudence of the Boards of Appeal already discussed relating to when a transfer can be acknowledged (point 3, above) or the fact that it is not necessary for an opponent to have a continuing financial, commercial or other reason in revoking the patent.

[6.5] It might appear that support for the [patent proprietor’s] argument is also to be found in T 298/97 [7.5], where the Board said:

“… if the original opponent has transferred the relevant assets to other companies, it no longer possesses the “business” (that is, the economic activity carried on by it - see G 4/88 [5]) in respect of which the opposition was brought and thus not having, as the party adversely affected by the decision under appeal, filed the Grounds of Appeal, it cannot in law have any further interest in the appeal.”

However, this observation should not be taken out of context. The Board was considering a different point, namely, whether both the original opponent and a transferee of the business assets could be appellants. The Board was not concerned with the case of an opponent which had transferred the relevant business assets but had not requested or substantiated a transfer of the opposition. Indeed the Board said later:

“Under A 99(1) “any person” may oppose a European patent: no commercial or other interest whatsoever need be shown. If the opposition fails, the opponent can as an “adversely affected party” appeal under A 107: again, no commercial or other interest is required.” (point [12.2] of the Reasons)

[6.6] Reference has already been made by the Board to T 136/01 when rejecting an earlier, similar argument of the [patent proprietor] (see point [3.6], above). Somewhat perversely, the [patent proprietor] in fact relies on this decision, particularly sub-paragraphs (c) and (d) of the following passage:

“… it has therefore to be ascertained whether [the original opponent and appellant]:

(a) were a party to the opposition proceedings,

(b) were adversely affected by the impugned decision.

(c) were still enjoying the status of a party at the time the appeal was filed,

(d) have not, subsequently, lost the status of a party to appeal proceedings for any legal or factual reasons.” (point [1.3] of the Reasons)

[6.7] The [patent proprietor] says that Aventis R&T was not enjoying the status of a party at the time the appeal was filed and had lost the status of a party to appeal proceedings for legal and factual reasons. However, the decisions cited above show that Aventis R&T still enjoyed party status after the effective date of the TTA. As already shown, after the date of its dissolution, opponent status automatically became vested in Sanofi-Aventis. This company still enjoyed the status of a party at the time the appeal was filed and had not lost the status of a party to appeal proceedings for legal or factual reasons.

[6.8] Given, then, that an appeal filed by the universal successor of a transferor-opponent is in principle admissible, the question is then whether the present appeal is admissible in the circumstances that the notice of appeal and statement of grounds of appeal were filed in the name of Aventis R&T, the original opponent, a dissolved company, and not in the name of Sanofi-Aventis, the universal successor. Coupled with this question is whether correction of the name of name of (sic) [opponent II] from Aventis R&T to Sanofi-Aventis should be allowed.

[6.9] The [patent proprietor] argued in this respect that even if it is possible for a universal successor to acquire the status of opponent, evidence must be filed with the Office to establish the succession before any appeal can be validly filed by such a successor. It was argued that since in the present case no relevant evidence had been filed before the expiry of the appeal period, the right to prosecute the opposition appeal had disappeared. The [patent proprietor] relied inter alia on T 656/98, which establishes that for a transferee of a patent to be entitled to appeal, the necessary documents must be filed first.

[6.10] On one view, the filing of the notice of appeal and the statement of the grounds of appeal in the name of Aventis R&T was in fact completely correct and no correction of the name is required. This conclusion most clearly follows from the decision cited by [opponent II], namely T 425/05 […], the facts of which are similar to those of the present case. There, an appeal was filed in the name of an opponent at a time when it had already been dissolved, following its bankruptcy, but having a universal successor. The appeal was filed by the representative who had previously been authorised to act on behalf of the opponent, whose authority had never been rescinded, and whose authority to act on behalf of the successor had subsequently been affirmed (after expiry of the appeal period). The appellant apparently requested correction of the name, citing T 15/01 […]. The [patent proprietor] argued that the mistake in the notice of appeal could not have been a mere clerical error which could be corrected, since the representative could not have been acting on behalf of the successor at a time when he had not yet been authorised […]. The Board observed that, after dissolution, the original opponent’s assets had passed into the hands of its successor, who had thus succeeded the original company as opponent and therefore also as client of the representative. The Board pointed out that the representative’s authorisation to act on behalf of the original opponent had never been contested or rescinded, and its authority to act on behalf of the successor had since been confirmed. The Board therefore considered . that the appeal filed by the representative had been implicitly but necessarily (“implicitement mais nécessairement”) filed on behalf of the successor. Absurd consequences would follow if the representative’s authorisation to act were to be taken as having lapsed at the date when the original opponent ceased to exist: the notification of the OD’s decision would not have been effective, so that the time for filing an appeal would not yet have started to run (see point [1.3] of the Reasons). Although the Board noted the request for correction, it merely observed that the identification of the original opponent as appellant had been a clerical error which had in fact since been corrected in the register (see point [1.3] of the Reasons). The Board did not, however, actually make an order correcting the name of the appellant in the notice of appeal. It is not clear from the public file when the correction took place, but it cannot have been before 21 April 2006, and thus before the time for filing the notice of appeal had expired.

[6.11] Although it is not entirely clear what the Board meant by the phrase “implicitement mais nécessairement” in this context, the facts of that case are indisputably very close to those of the present one. The appeal here was filed by the representative who had previously been authorised to act on behalf of the opponent and whose authority had never been rescinded, and whose authority to act on behalf of the successor has subsequently been affirmed.

[6.12] As regards this decision, the [patent proprietor] seeks to distinguish it on the basis that in the present case there had been a transfer of the opposition and relevant assets before Aventis R&T ceased to exist and before the appeal was filed. But these points have already been dealt with.

[6.13] The [patent proprietor] relied on T 956/03 […]. There, an appeal was filed in the name of an opponent’s universal successor before any evidence concerning the succession was filed. The appeal was held to be inadmissible, the Board concluding that the rules relating to the recognition of a transfer in the case of a universal successor were the same as in the case of an inter partes transfer:

“In the present Board’s view, the case law shows a definite balance in favour of the view that a transfer can only be acknowledged from, at the earliest, the date when adequate evidence to prove the transfer has been filed. This is desirable in the interest of legal certainty and, within that principle, to ensure the identity of an opposing party is known. If the transfer takes place before the appeal period expires then the entitlement of the transferee to replace the opponent must be established by filing the necessary evidence before the appeal period expires. Accordingly, since that was not done in the present case, the appeal of appellant III is inadmissible.” (point [7] of the Reasons).

[6.14] It is implicit from this decision that had the appeal been filed in the name of the original opponent, it would have been admissible. The decision in T 425/05 (see point [6.10], above), which had only very recently been published, does not appear to have been cited to the Board and understandably the Board appears not to have been aware of it. In any event, it is not clear from the facts of T 956/03 whether the original opponent had ceased to exist at the date the notice of appeal was filed, but given that this seems to have been the same Sanofi-Aventis Deutschland GmbH as in the present case, presumably it did still exist.

[6.15] The [patent proprietor] also relies on T 6/05, […] in which neither T 956/03 nor T 425/05 appears to have been cited to the Board. Here, in contrast to T 956/03, the Board held that an appeal filed by a universal successor before any evidence of the succession is filed is admissible: a universal successor acquires opponent status from the moment of succession and not first when evidence of the transfer has been supplied. The Board noted that as regards transfer of ownership of a patent, the position in the case of transfer to a universal successor is different than in the case of an inter partes transfer. In the case of a universal successor of the patent proprietor, the successor automatically acquires party status from the date on which the succession becomes effective and not only once sufficient evidence of it has been produced. Since according to the jurisprudence of the Boards of Appeal the principles for transferring a European patent were to be applied mutatis mutandis to the transfer of opponent status, it was justified to apply the same considerations and conclusions with respect to the transfer of the opponent status due to universal succession.

“Thus, in the case of transfer of the opposition by way of universal succession, the universal successor automatically acquires the bundle of procedural rights of his predecessor and hence party status from the date on which the merger became effective and not only once sufficient evidence to this effect has been produced.” (point [1.7] of the Reasons)

[6.16] Since in that case the appeal had been filed in the name of the universal successor of the opponent and since it had automatically acquired party status, it was adversely affected by the decision under appeal, and the appeal was admissible even though no evidence of the transfer had been filed (see point [1.9] of the Reasons). Again, it is not clear from the facts of that case whether the original opponent had ceased to exist at the date when the notice of appeal was filed.

[6.17] It appears to the Board that the decisions in T 956/03 and T 6/05 are conflicting. On one view it is not necessary to decide between the two because:

(a) T 425/05 points clearly to a solution in the present case;

(b) the appeal in the present case was filed in the name of the original opponent, not its universal successor, so that the decisions in T 956/03 and T 6/05 are prima facie not relevant; and

(c) in any event in the present case there is a request for correction.

Nevertheless, the apparent conflict between the two cases does present a difficulty, because on one view the consequence of T 6/05 is that, subject to the issue of correction, the appeal in the present case filed in the name of the original opponent is inadmissible (although the Board in T 6/05 was not concerned with the kind of facts present here and obviously said nothing about the position) and that of T 956/03 that, while the appeal in the present case is admissible, it is not a case where correction of the name of [opponent II] is appropriate, since it was only later, after evidence of the universal succession was filed, that the status of Sanofi-Aventis as successor could be acknowledged. It is also not clear from T 956/03 whether the original opponent was still in existence, and what difference this might have made to the decision. (It should be noted that there was no request for correction in T 956/03 because the appeal had clearly been deliberately filed in the name of the universal successor as opponent, and there was no mistake). Further, the decision in T 15/01, referred to in point [7.6] below, indicates that correction is appropriate.

The request for correction

[7] Taking the view therefore that the position is uncertain, and assuming, without deciding the issue, that it may be correct that the appeal and statement of grounds of appeal filed in the name of the original opponent in the present case were defective, is this a case where correction should be allowed?

[7.1] In the present case the period for filing the notice of appeal and the grounds of appeal expired before the coming into force of EPC 2000 on 13 December 2007. The provisions of the EPC 1973 therefore apply: see T 157/07 [1.6].

[7.2] The request for the correction of the name of [opponent II] in the notice of appeal and statement of grounds of appeal was made under R 64(a) EPC 1973 in conjunction with R 65(2) EPC 1973, alternatively under R 88 EPC 1973 (corresponding to R 101(2) and R 139 EPC 2000 respectively). As to these alternatives, as was pointed out in T 715/01, R 88 EPC 1973 appeared in chapter V of part VII of the Implementing Regulations to the Convention, which relates directly to part VII of the Convention, and not to part VI relating to the appeal procedure. R 65(2) EPC 1973 provides an explicit remedy for deficiencies in the name and address of the notice of appeal as it refers to R 64(2) EPC 1973, sub-paragraph (a). The Board in T 715/01 therefore considered that the relevant provision was R 65(2) EPC 1973. The present Board follows this approach and in the event it has not been necessary to examine whether a correction of the name of [opponent II] in the notice of appeal could also be allowed under R 88 EPC 1973 (as was accepted in T 814/98 [1] and T 460/99 [1])

[7.3] The rule provides:

“(2) If the Board of Appeal notes that the appeal does not comply with the provisions of R 64, sub-paragraph (a), it shall communicate this to the appellant and shall invite him to remedy the deficiencies noted within such period as it may specify. If the appeal is not corrected in good time, the Board of Appeal shall reject it as inadmissible.”

R 64(a) provides that the notice of appeal should contain the name and address of the appellant in accordance with the provisions of R 26, paragraph 2(c) EPC 1973.

[7.4] The principles for correction under R 65(2) EPC 1973 were set out in T 97/98. In that case the opposition had been filed by, and the decision of the OD given against, Fresenius Medical Care Deutschland GmbH but in the notice of appeal, a different legal entity, namely Fresenius AG, was indicated as “opponent” and thus as appellant (see point [1.1] of the Reasons). The appeal was filed by the same representative who had represented the opponent before the OD. It was explained that Fresenius Medical Care Deutschland GmbH and Fresenius AG were separate legal entities within the same group of companies. There was no question of any transfer of the opposition; the indication of Fresenius AG in the notice of appeal simply constituted an error. The Board held (point [1.3] of the Reasons) that correction was possible:

“What is required under R 64(a) and R 65(2) 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.”

The Board added that, for the purposes of R 64(a) and R 65(2) EPC 1973 it must be possible on the expiry of the time limit for appeal to determine whether or not the appeal was filed by a person entitled to appeal in accordance with A 107. For this, it is sufficient if:

“… it is possible to derive from the information in the appeal with a sufficient degree of probability, where necessary with the help of other information on file, e.g. as they appear in the impugned decision, by whom the appeal should be considered to have been filed …” (point [1.3] of the Reasons). In a later passage (point [1.6] of the Reasons), the Board also indicated that the identity of the true appellant should be derivable within the appeal period by a person not knowing all the details later presented to the Board.

[7.5] In that case an appeal had been filed in the name of someone who was not the opponent but the Board considered it sufficiently probable that it was the intention to file the appeal on behalf of the person who was the opponent. The present case is in some respects different, since it would not have been possible to derive from the information in the appeal, even with the help of other information on file, but not knowing all the details presented later to the Board, that it was the intention to file the appeal in the name of the original opponent’s universal successor. Nevertheless, the Board does not read T 97/98 as making this a necessary requirement for correction; the Board in that case was not only dealing with a different factual case but also merely said that it was “sufficient” if this requirement was satisfied. The significant point in the present case is that it is highly probable that it was the intention to file the appeal on behalf of the person who was the opponent (see point [7.10], below).

[7.6] The facts of T 15/01 […] are similar to those of the present case. There, an appeal was filed in the name of the original proprietor (SIDD) but at a time when it no longer existed and when, as a matter of substantive law, a universal successor (SDLO) had become the proprietor of the patent. Correction of the name of the appellant was requested, which the Board considered was possible both under R 65(2) EPC 1973 and R 88 EPC 1973 (see point [14] of the Reasons). The Board said that:

“… when an applicant or patentee ceases to exist, his universal successor in law immediately and automatically acquires the party status in proceedings pending before the EPO. Since SDLO was, as of 4 September 1998, the successor in universal title of SIDD, it automatically became party to the opposition proceedings on that date. No interruption of the proceedings occurred … Since the OD was not informed of the change, it continued to use the old name of the legal predecessor of SDLO as designation of the proprietor. So did the representatives. This, however, only amounts to a wrong designation of the true party; it does not have the consequence that procedural acts which occurred after the change were made on behalf of or against a legal person who had ceased to exist. Thus, SDLO was the true party to the proceedings when the appealed decision was given and was adversely affected by it.” (point [12] of the Reasons)

[7.7] The Board was satisfied that the it was the intention to file an appeal on behalf of SDLO:

“To decide otherwise would not only be overly formalistic, but would also undermine the procedural mechanism provided for in Rule 90(1)(a), second sentence, and R 101(7) EPC. … [Tlhis mechanism ensures that in cases of universal succession a representative may continue to act in proceedings pending before the EPO. The mechanism works even if the representative does not yet know the identity of the successor in law (who in the event of death of a natural person may be uncertain for a considerable period of time) and even if the representative is not informed about the fact itself that a succession in law has occurred. Thereby procedural efficiency is also increased in so far as a representative does not need to ascertain himself every time before acting in the proceedings whether or not a succession in law has occurred. This mechanism would be seriously damaged if a representative who designates the appellant by the name of the applicant or patentee on record who has already ceased to exist rather than by the name of the successor in law could not correct this objectively wrong designation.” (point [15] of the Reasons)

[7.8] The Board therefore allowed the requested correction (although such order for correction does not form part of the final order) and the appeal of appellant 1 was held admissible (see point [16] of the Reasons). In some respects the approach taken in this decision was different from that taken in the later case of T 425/05 (see point [6.10], above), in which T 15/01 appears not to have been cited to the Board. As already pointed out, in that case it was considered in similar circumstances that the notice of appeal had been implicitly and necessarily filed on behalf of the successor, and no order for correction appears to have been made (see point [6.10], above).

[7.9] The [patent proprietor] argues that T 15/01 is not relevant as it concerned an appeal by a proprietor, as to which the rules are different (in particular R 90(1)(a) EPC 1973, quoted in the decision, above). It also did not concern an appeal by an opponent who had previously transferred the relevant assets and who then had ceased to exist. However, the reasoning in the case applies equally to the wrong designation of an opponent/appellant, as is clear from T 97/98, above, which concerned such an appeal, and more generally since the same principles applicable to the status of proprietor should be applied mutatis mutandis to opponent status (see T 6/05, point [6.15], above). While it is correct that R 90(1)(a) EPC 1973 deals with the status of proprietor, R 101(7) EPC 1973, cited with it in T 15/01, deals with the position of termination of authorisations in general.

[7.10] As to the facts of the present case, reference has already been made to the contents of the notice of appeal and statement of grounds of appeal. These documents were filed by the representative who had been acting in the opposition proceedings and whose authority to act on behalf of Sanofi-Aventis has been affirmed subsequently. [Opponent II] explained that because of the uncertainty about how the Office would treat a request to transfer the opposition following the TTA, a deliberate decision was taken to continue to conduct the opposition proceedings in the name of Aventis R&T. […] In its communication dated 24 March 2010, the Board queried why the opposition and the appeal had continued to be conducted in the name of Aventis R&T after May 2003, at a time when the relevant parties might have been expected to know that this company no longer existed. The answer provided was that although it had been decided that the party position should remain unchanged (i.e., that Aventis R&T should remain as opponent), it was also decided that the overall conduct of the proceedings (and opposition proceedings against another patent, EP 0512997), and the responsibility for the costs, should be undertaken by the purchasers of the business from Aventis R&T under this agreement. The overall control of the opposition had therefore been left in the hands of these purchasers (namely, Axiva, Celanese Ventures GmbH, Nutrovina Nutrition Specialities & Food Ingredients GmbH, as well as subsequently Lonza Ltd), who had instructed Dr Ahrens and Hoffmann Eitle directly through a company coordinating the proceedings. Because of this, Sanofi-Aventis, the successor to Aventis R&T, had had little conduct with Dr Ahrens and had not informed her or her sub-agent of the merger of this company and succession to Sanofi-Aventis. From their side, Dr Ahrens and Hoffmann Eitle had seen no break in the continuity of their instructions and had been unaware that they were continuing to act, and had filed a notice of appeal and a statement of grounds of appeal, in the name of a company that no longer existed. Their intention, however, was to continue to act for the opponent. […]

[7.11] The Board accepts this explanation. Adapting the wording of T 15/01 [15] (cited above), the Board is therefore satisfied that it was the intention to file a notice of appeal and statement of grounds of appeal on behalf of the person who had party status as opponent during the opposition and who was adversely affected by the appealed decision, and that this person was Sanofi-Aventis. The fact that these acts were done in the name of Aventis R&T was a mistake.

[7.12] Finally, the [patent proprietor] also says that correction is not possible here because the mistake which was made was one of law, not fact, relying on T 656/98 [5]. The Board there was considering the effect of R 88 EPC 1973, not R 64(a) EPC 1973. But even so, the present Board has concluded that the notice of appeal and statement of grounds of appeal were filed by representatives in the name of Aventis R&T being unaware that this company no longer existed and that it had a universal successor. This was a mistake of fact.

[7.13] The principles which are applicable to correction of the notice of appeal under R 65(2) apply also to the correction of the statement of the grounds of appeal: see T 715/01 [10] and T 15/01 [14]. It also does not matter for the purposes of R 65(2) EPC that it was not the Board but the [patent proprietor] who raised the point about [opponent II’s] identity. See e.g., the facts of T 15/01 and T 157/07.

[7.14] The Board therefore considers that it is appropriate to order the correction of the name of [opponent II] in the notice of appeal and in the statement of grounds of appeal to Sanofi-Aventis. In the circumstances it is not necessary to consider whether the terms of the TTA were such that, if sufficient evidence of it had been filed with the Office together with an appropriate request, the Office would have acknowledged a transfer of opposition status.

There is more to be noted in this decision, as we shall see in a separate post.

To download the whole decision or have a look at the file wrapper, click here.

NB: This decision is also very well summarized and discussed on Le blog du droit européen des brevets.