Thursday, 9 February 2012

T 1744/09 – Retroactive Identification

The opponent filed an appeal after his opposition had been rejected by the Opposition Division (OD)

The notice of opposition contained in the letterhead the data identifying the patent and the proprietor. The letterhead further contained the following identifications:

Opponent: EADS Space Transportation GmbH (with address)

Address for correspondence: EADS Deutschland GmbH (with adress)

Immediately following the letterhead, the notice of opposition started with the following sentence (in English translation):

“In the name of EADS SPACE Transportation GmbH, a company affiliated (konzernverbunden) to EADS Deutschland GmbH, we hereby file an opposition …”

Following the detailed reasons of the opposition, the notice of opposition on the last page was signed as follows:

The patent proprietor argued during the opposition proceedings that the opposition was inadmissible, because the representative of the opponent appeared to be the EADS Deutschland GmbH, a legal entity not being entitled to represent the opponent.

The OD held that the opposition was admissible, and that the grounds invoked by the opponent did not prejudice the maintenance of the patent as granted.

The decision was reasoned both on the admissibility issue and on the substantive grounds of the opposition. In the minutes of the oral proceedings (OPs) the following order is recorded:

By contrast, the order of the written decision reads:

A notice of appeal was filed in the name of EADS Space Transportation GmbH, again signed by Mr H. (but not containing EADS Deutschland GmbH in the signature). The statement of grounds of appeal contained a letterhead and a signature similar to that of the notice of opposition, with the difference that a further general authorisation number (“AV-Nr. 48428”) was also indicated under the handwritten signature.

Here is the verdict of the Board:

Admissibility of the opposition and the appeal

[1.1] During the OPs the [patent proprietor] expressly acknowledged that the person of the (original) opponent has been clear from the very beginning and all through the procedure. The main objection against the admissibility of the opposition and the appeal is the missing signature, more precisely an “invalid” signature. The signatures in question as they stand must be considered to be the signature of EADS Deutschland GmbH. The invalidity is caused by the lack of power of EADS Deutschland GmbH, as a legal person, to represent EADS Space Transportation GmbH as a party before the EPO. According to the [patent proprietor], the undisputed fact that Mr H. was in fact a professional representative according to Article 134(1) EPC does not help the opponent. The [patent proprietor] contends that as the documents on file did not indicate that Mr H. is acting in his capacity as a professional representative, this has the effect that his actions (here the signing of the grounds of appeal) are without legal effect, in the sense that these are not to be recognised as actions taken by a professional representative.

[1.2] The board does not follow this line of argument for lack of any legal basis, as explained below.

[1.3] As an initial remark, the board notes that an “invalid” signature can hardly have more serious consequences than a missing one. A missing signature only leads to loss of rights if the deficiency is not remedied within a time limit after an invitation from the Office (R 50(3), last sentence). Even if the board were to find that the signature were missing or “invalid”, it could not order the legal effect (inadmissibility) desired by the [patent proprietor], but would have to invite the appellant to remedy the deficiency (R 50(3), second sentence).

However, as will be further explained below, the board finds that the opponent was properly represented and all the documents, in particular the opposition and the grounds of appeal, were properly signed.

[1.4] A 134(1) establishes that representation in proceedings before the EPO is mostly the privilege of the professional representatives registered as such with the EPO, with some exceptions which are not relevant here. Representation means the ability to make legal statements on behalf of the authorising party, with the legal effect that the relevant rights and obligations directly affect the authorising party, without any further confirming act of the latter. This is why a representative needs to be fully aware of the legal consequences of his actions, i.e. must have personally acquired the necessary professional competences to act for his client.

[1.5] The above explains why representation is mostly restricted to professional representatives. Otherwise, the EPO does normally not enquire for the specific conditions of employment between a party and the professional representative acting for the party, as long as the EPO is satisfied that the representative is indeed authorised by the affected party to act as such. This will normally have been expressed by the issuance of a formal power of attorney (authorisation) to the representative, but such power need not even be put in writing. The entitlement to represent is based on the factual existence of such a power, whether verbal or written, and the corresponding provisions of the Convention, A 133, which specifically permit parties to act in the proceedings through a representative.

[1.6] A 134, which is dedicated specifically to professional representatives, concerns only the personal conditions for acting as such. Some further formal conditions for exercising the power to represent are regulated by R 152 (A 134 EPC 1973 and R 101 EPC 1973 is applicable for the notice of opposition, but the differences are not relevant here). The single formality this rule foresees is the filing of an authorisation. R 152(1) and (5) further delegates power to the President of the EPO to determine eventual further formal conditions which need to be fulfilled so that the professional representatives (and also others) may make effective use of their powers to represent. However, it is to be noted that R 152(1) restricts the powers of the President to determine “the cases in which a signed authorisation shall be filed by representatives acting before the EPO”. This rule includes all types of representatives, and it is a further indication that the legislator foresaw the possibility for representatives to act before the Office without any special formalities. Similarly, R 152(5) restricts the powers of the President to determine “the form and content” of authorisations.

[1.7] The President made use of his delegated powers to regulate the question of authorisations in the “Decision of the President of the EPO dated 12 July 2007 on the filing of authorisations” (Special Edition No. 3, OJ EPO 2007, 128, hereafter “Decision”). However, neither R 152 nor the Decision contains any formal requirement that the documents signed by professional representatives must indicate their basis of entitlement in order to be recognised as valid. It is true that Article 1(1), first sentence of the Decision states that a professional representative who identifies himself as such shall generally not be required to file an authorisation (emphasis by the board). Obviously, such an indication is useful and to be recommended, but it has no immediate legal effect per se if it is missing. R 152(2) and the President’s Decision merely instruct the Office how to proceed in this case: The apparent representative is invited to furnish an authorisation (Article 1(3), 2 and 3 of the Decision). Obviously, such an invitation also permits the Office to enquire about the legal position of the apparent representative if this should not be clear from the submissions. Only when “a required authorisation is not filed in due time”, i.e. following an invitation from the Office, will a legal consequence follow pursuant to R 152(6), namely that the applicable procedural step shall be deemed not to have been taken (emphasis by the Board). Still, even in this case the legal consequence is not caused by the initially missing indication (declaration) of the legal position of the apparent representative (i.e. the missing indication whether he is a professional representative, a legal practitioner or an employee), but rather by the failure to prove that he has the powers and the entitlement to represent.

[1.8] For sake of completeness, the same holds for the previous Decision of the President (Decision of 19.07.1991, OJ EPO 1991, 421) and R 101(4) EPC 1973 applicable at the time of filing the notice of opposition.

[1.9] Moreover, neither any article or rule of the Convention, nor the Decision does preclude that the professional representative identifies himself retroactively. Such a retroactive identification may also obviate the need for a formal authorisation (see also T 850/96 [3.3]). This is also superfluous in most cases, given that the Office maintains a continuously updated register of the professional representatives entitled to act before the Office, and this register is easily accessible for all the involved parties.

[1.10] Given the above, it is immaterial that Mr H. was probably an employee of a third party, and was using the address of his employer as the address of correspondence. It is equally irrelevant that probably out of habit, he also indicated his employer in his signature, thereby possibly implying that the signature is made on behalf of his employer, adding some confusion to the matter. But even this confusion does not detract from the fact that at the time of signing he was personally a professional representative registered with the EPO (A 134(1)) and as such entitled to represent the opponent and to sign on its behalf as well. For this signature, his own name and the indication that he is signing on behalf of the opponent was sufficient.

Moreover, his entitlement to represent did not stem only from his personal qualification as a professional representative and some unidentified agreement between him and the opponent, but this was further evidenced by a general authorisation issued by the opponent and deposited with the Office. The registration number of the general authorisation (AV-Nr. 48310) was explicitly referred to under his signature. On the other hand, on the basis of the totality of the facts, the indication of EADS Deutschland GmbH in the signature objectively did not serve any identifiable purpose for the opposition procedure before the EPO and therefore may be ignored. Whether it might serve some other purpose outside of this procedure need not be examined here.

[1.11] Therefore, the board finds that the representative of the opponent, now appellant, did validly sign both the opposition and the notice of appeal in his capacity as professional representative.

[1.12] The other argument advanced against the admissibility of the appeal is based on the fact that the original opponent, EADS Space Transportation GmbH did no longer exist by the time the notice of appeal was filed, and therefore no admissible appeal could have been filed in its name.

[1.13] However, it is undisputed that EADS Space Transportation does presently have a universal legal successor, and in fact did have one at all times during the proceedings.

[1.14] It is true that a person, whether natural or legal, which has ceased to exist, cannot perform legal acts, or put differently, cannot acquire rights or obligations. Nevertheless, what matters in the present case is the fact that the rights and obligations of the ceased person – here EADS Space Transportation GmbH – have been transferred to its universal legal successor as a matter of national law, without any interruption in the existence of the rights and obligations (see also T 425/05 [1.2]). These rights and obligations include all substantive and procedural rights before the EPO, no matter under what name they were established. The basis of the acquisition and the continued existence of these rights is the continuous factual existence of a person having legal capacity (“Rechtsfähigkeit”, “capacité juridique”) under the relevant national law, including the ability to legally succeed its legal predecessor. But the continuous existence and use of its original name is not required for maintaining the rights and serving the obligations, because the name is merely an identifier, an attribute of the person, but not a holder of rights. For the same reason, it is immaterial that the universal legal successor continued to use the original name in the proceedings before the EPO. The fact that the legal succession has not been recorded with the Office does not preclude the continued actions of the legal successor under the previous name, as long as a legal successor exists and remains identifiable. This means that in the present case, from a legal point of view the appeal has been filed on behalf of the universal legal successor of the original opponent existing at the relevant time, namely Astrium GmbH, even though the notice of appeal and the grounds of appeal were formally filed in the name of the original opponent EADS Space Transportation GmbH. This is why Astrium GmbH could later be recorded as the opponent and appellant, simply confirming towards the proprietor and third parties that it had been the original appellant all through the appeal proceedings. As such, it is not the same as a transfer of the opposition, which requires notification of and consent by the EPO.

[1.15] The legal conclusion argued by the respondent, namely that no legally valid actions can be taken in the name of the ceased person, would lead to untenable results. For example, the Office would not be able to take any action in the proceedings, because it would not be possible to notify communications or decisions, hence they would not be legally effective (see also T 425/05 [1.3]). Further, instead of relying on the subsequent filing of extracts from company registers in order to prove the changes in person, parties would need to declare immediately any changes in their person, in order to prevent any loss of rights. It would be most unrealistic to expect that any legal succession between natural or legal persons should be timed depending on actions which are to be expected from or need to be performed before the EPO. Now given the fact that the legal successor of a party may not even be immediately known – a situation not uncommon in case of inheritance between natural persons -, such an immediate declaration towards the office may simply prove to be impossible. It is also conceivable that a representative making legal statements to the Office on the basis of previous instructions from a party may not even be aware of a possible death or other form of cessation of his client, thus not even knowing that his actions are potentially invalid. This illustrates well why the arguments of the respondent cannot be followed.

[1.16] Otherwise, the notice of the appeal and the grounds of appeal were timely filed and the appeal fees were paid. The grounds of appeal were sufficiently reasoned.

[1.17] In conclusion, the board holds that the opposition and the appeal is admissible.

The Board then went on to assess inventive step and concluded that the subject-matter of claim 1 lacked inventive step. It then considered the opponent’s request for reimbursement of the appeal fee:

[3.1] Besides stating that the OD has decided to reject the opposition, the cover sheet of the notification of the written decision, form 2330, includes an “additional decision” that “the opposition is ... rejected as inadmissible”. This additional decision is not included in the decision duly announced at the OPs as indicated on form 2309.2 of the minutes. Moreover, it conflicts directly with the OD’s finding recorded at point 9 of the minutes, and the reasons given under the corresponding heading on pages 2 and 3 of the grounds of the decision. These record that admissibility was considered, but that the division found in favour of admissibility of the opposition.

[3.2] The Board concludes on the face of these facts that the “additional decision” indicated on form 2330 is an obvious mistake, as it clearly does not reflect the OD’s intention as evident from the reasons and the minutes and the decision’s announcement at the OPs. The Board holds that such an obvious mistake does not constitute a substantial procedural violation which might have justified a reimbursement of the appeal fee under R 103(1)(a). The mistake may have caused initial surprise to the [opponent]. However, the Board is unable to see how, once it became clear to the [opponent] that it was a mistake and what the division’s true intent had been, this might have deprived the [opponent] of his rights or affected due process. As the Board finds no substantial procedural violation it concludes that a reimbursement of the appeal fee is not justified.

[3.3] The proper remedy for obvious mistakes in decisions is provided by R 140. However, as the decision under appeal is to be put aside, the question whether or not to correct the decision is moot.

Should you wish to download the whole decision, click here.

The file wrapper can be found here.


Anonymous said...

Concerning the "additional decision": if I remember correctly this is simply a group of check boxes in the examiner's software, and it's easy to make mistakes in that area, as examiners generally concentrate on the reasoned grounds for the decision, but generally hardly look at the accompanying forms actually generated from the input information. I don't have the layout of the panel before me, it is possible that the labels were misinterpreted.

The minutes are drafted by the second examiner, and approved by the chairman. It is not foreseen for the first examiner to appose his signature on the document -- I made it personally a point to review them.

Discrepancies are therefore possible.

(This reminds me of the time when the second examiner lost all his notes just after the OP. I immediately sat down and wrote a "Gedächtnisprotokoll", luckily the case was still fresh in my mind).

It is also technically possible for the examiner to print out one version of the documents for approval by the division, but send out a differing one. The mistake cannot be caught easily.

Les joies de la technique...