T 445/08 – The Wrong Person

You might have heard that there has been another referral to the Enlarged Board of appeal (EBA). The questions concern the admissibility of appeals.

Before we discover the questions, let us have a look at the facts of the case.

The international application on which the European patent under consideration was based was filed in the name of Zenon Environmental Inc.

After grant, the patent was assigned to Zenon Technology Partnership on May 30, 2006. The transfer of ownership was registered by the EPO with effect from February 10, 2007.

The patent was revoked by the Opposition Division (OD) in its decision dated December 28, 2007.

On February 8, 2008, an appeal was filed in the name of Zenon Environmental Inc.

On March 7, 2008, the EPO sent a communication concerning the commencement of proceedings before the Board of appeal. This communication had a handwritten statement on it:

On March 13, 2008, the opponent’s representative challenged the admissibility of the appeal on the ground that it had been filed by a Zenon Environmental Inc., which was not the registered patent owner.

On the same day, the patent proprietor’s representative sent a response to the communciation and requested correction of the appellant’s name:

The Board issued a first communication on April 16, 2008, inviting the appellant’s representative to explain on whose behalf he was acting, under what provision of the EPC the correction was being requested, what precisely the correction would be and what effect it would have on the proceedings.

The appellant’s representative answered on June 23, 2008, stating that he was acting on behalf of Zenon Technology Partnership. He then stated:

In its interlocutory decision, sent to the parties exactly four years (!) after the filing of the appeal, the Board decided to refer several questions to the EBA:

(1) When a notice of appeal, in compliance with R 99(1)(a), contains the name and the address of the appellant as provided in R 41(2)(c) and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is a request for substituting this other legal or natural person admissible as a remedy to “deficiencies” provided by R 101(2)?

(2) If the answer is yes, what kind of evidence is to be considered to establish the true intention?

(3) If the answer to the first question is no, may the appellant’s intention nevertheless play a role and justify the application of R 139?

(4) If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)?

If you want to know why the Board found a referral to be appropriate, please read on:

[1] It is undisputed that the notice of appeal as filed is not admissible pursuant to A 107 because the appellant company was not a party to the opposition proceedings and accordingly was not adversely affected by the appealed decision. It was no longer the patent proprietor.

The request for correction concerning the appellant with a view to complying with A 107 was filed only in reply to the Registrar’s letter and after expiry of the relevant two-month period provided for by R 101(1).

Accordingly, the only remaining question is whether the correction as requested, which would result in the appeal being admissible, is possible pursuant to R 101(2) or R 139.

The request for correction

[2] The notice of appeal was drafted as follows:

“European Patent No 1140330 (99955620.2-062)

Zenon Technology Partnership

We hereby give Notice of Appeal (underlined by the appellant) against the decision of the Examination Division [sic] dated 28 December 2007 to refuse the above patent application [sic]. Cancellation of the decision in its entirety is requested so that the patent may be maintained. …

The name, address and nationality of the Appellant is (emphasised by the Board):

ZENON ENVIRONMENTAL INC

845 Harrington Court

Burlington Ontario

L7N 3P3

Canada

ZENON ENVIRONMENTAL INC is a Canadian Corporation.

In the event that the Board of Appeal wishes to make a decision detrimental to the Applicant’s [sic] rights at any time, it is hereby requested that Oral Proceedings be held to discuss this matter”.

[2.1] It appears from the notice, which complies with all the requirements of R 99(1)(a) and R 41(2)(c), that the appellant is fully identified, the company in question being a real company corresponding to the former owner of the patent in suit incorporated under Canadian law, while the current owner is incorporated under the law of Delaware, USA.

[2.2] But the question of admissibility arises because it is contended that the appellant’s identification in the notice of appeal stemmed from an unintentional inversion between the former and current patent owner.

[3] The Board tends to concur with the respondent that in the circumstances of the case at hand there are no deficiencies with respect to the requirements of R 101(2) and R 99(1)(a). This latter rule, by incorporation of R 41(2)(c), defines the standard formal administrative items of information required to fill out the notice of appeal, which will permit the identification of the appellant. A 107 on the other hand, once the appellant has been identified, defines an admissibility requirement to be fulfilled by the appellant in order to be entitled to appeal.

Therefore R 101(2), which authorises correction of deficiencies under R 99(1)(a), can only justify corrections of deficiencies that are directed to completing the appellant’s identity, if this was not fully provided in the notice of appeal, in cases where the appellant is already identifiable from the notice of appeal.

[4] The Board has now to look into the case law and consider whether this conclusion […] contradicts the established case law dealing with questions of correction of a notice of appeal. The case law offers three categories of decisions to be considered:

(a) decisions in which correction of the name of the appellant was allowed under R 65(2) EPC 1973 because it was held that there was a deficiency, so it was possible to infer from the file who the real appellant was. Sometimes the Boards indicated that R 65(2) EPC 1973 was preferred to R 88 EPC 1973 as it was more specific (T 715/01 [9]);

(b) decisions in which R 88 EPC 1973 was used as a legal basis for the corrections (T 814/98);

(c) decisions in which correction was refused because the notice of appeal contained no remediable errors but rather a mistake of law.

Decisions allowing the request for correction on the basis of R 99(1)(a) and R 101 (2) (R 64 (a) and R 65(2) EPC 1973)

(a) In T 340/92, correction of the name of the appellant was allowed and the appeal declared admissible because the erroneous mention of the appellant’s name was held to be due to a confusion between the name of the appellant company (societe Croizet-Pourty) and its parent company (SOGEA). In this case a request for re-establishment of rights had been filed but the Board decided that this request was superfluous.

(b) The Board then considered that where the appellant’s name or the name of the person actually entitled to appeal was not mentioned in the notice of appeal, in non-compliance with R 64(a) EPC 1973, it was possible to remedy this deficiency under R 65(2) EPC 1973 within the time limit allocated by the Board.

The Board stated that the name of the parent company had been indicated by error, as was apparent from the statement of grounds of appeal and the explanations of the subsidiary company, which was the only one to be adversely affected by the decision under appeal and which was sufficiently identifiable through its representative’s name (point [1] of the decision). It was inferred from the fact that the subsidiary was the only party adversely affected and that it was sufficiently identifiable through its representative that the error was a deficiency that could be remedied under R 65(2) EPC 1973.

(c) It is difficult to know to what extent the solution and reasons given by the Board in that case are relevant for, or transposable to, the current case. However, as far as this Board understands, it seems that the notice of appeal in T 340/92 did not contain an entire identity of the appellant. Only its name was erroneous, which is not the case here.

T 483/90, T 613/91 and T 1/97

[5.2] (a) In T 483/90 the appeal was filed by the opponent without specifying its address; with respect to the name, even if it was not completely clear, it seems that there was no deficiency. In T 613/91 the address was missing.

(b) In T 1/97, which cited the two preceding decisions, the notice of appeal was filed in the name of the opponent; there was an inconsistency between the name indicated in the notice of appeal (“Crown Cork & Seal CO”) and the name taken from the appealed decision (“Crown Cork AGM). But there was no Swiss company “Crown Cork & Seal CO” registered at the address indicated in the notice of appeal, which was the correct address of the “Crown Cork AG” company. The Board did not accept that R 64(a) EPC 1973 applied only when the appellant’s name or address was missing and stated that the general term “deficiencies” used in R 65(2) EPC 1973 was to be interpreted as also referring to an incorrect indication of an appellant’s name and/or address (point [1.4]).

For the then competent Board “there [was] a close relationship between R 64 (a) and A 107 first sentence”, this latter presupposing the identification of the appellant (point [1.1] of the reasons). The Board went on:

“However, this does not mean that i f R 64 (a) is not or not correctly met then A 107 first sentence will necessarily not be complied with” (idem).

For the Board it was clear that what was required was that the appellant had to be sufficiently identifiable within the two-month period, if necessary with the aid of the decision under appeal, in order to establish that it was entitled to appeal under A 107, first sentence. On the other hand, deficiencies and omissions concerning the name and address of the appellant given in the notice of appeal as specified in R 64(a) EPC 1973 could be remedied later (idem).

[5.2.1] This Board agrees in principle with the analysis made in case T 1/97 by the competent Board, which given the particular circumstances of that case admitted the correction.

[5.2.2]In these three cases the circumstances seem to differ from those of the case at hand. There were deficiencies within the meaning of R 99(1)(c) (correct name not specified but appellant identified as the opponent and/or missing address; discrepancy in the addresses) which did not enable the boards to establish the appellant’s precise identity but justified an investigation.

T 97/98

[5.3] (a) In T 97/98, which, inter alia, referred to T 340/92 and T 1/97, the appeal had been filed in the name of Fresenius AG instead of Fresenius Medical Care Deutschland GmbH. In this particular case also no name was explicitly indicated as the appellant’s name, but “Fresenius AG” was mentioned as the opponent’s name.

(b) The Board first noted that it was not unusual in a notice of appeal to designate the appellant in such a way, namely by referring only to the “opponent” in cases where the opponent became the appellant. Such an indication was admitted as an indication of the appellant’s name as required by R 64(a) EPC 1973 in situations where the same representative who had represented the opponent in the opposition proceedings had then filed the appeal. The same result followed in the case of a patent proprietor/appellant in T 867/91 [1.1].

(c) This Board subscribes to the statements in T 97/98 [1.3], namely that the requirements of R 64(a) EPC 1973 are intended, along with their administrative purposes, to secure the appellant’s identification and to allow the Boards of Appeal to check its entitlement to file an appeal as required by A 107 EPC, and that R 64(a) and R 65(2) EPC 1973 cannot be construed as forming an exception to the basic principle that the appellant must be identifiable on expiry of the time limit for filing an appeal.

(d) But in the opinion of the competent Board in T 97/98 there was a deficiency in the indication of the name and address of the appellant within the meaning of R 65(2) EPC 1973 not only when no such express indications at all had been made in the notice of appeal but also when wrong indications had been made (repeated twice, point [1.3] of the reasons). And some passages of the reasons further expand this statement in a way which might be seen to be potentially conflicting with the conclusion that the Board in the present case could reach (see points [1] and [3]) : For instance, the Board stated that correction of errors in the name or address of the appellant might be of varying nature. It might lead after correction to a different natural or legal person to the one indicated within the time limit for filing the appeal having to be regarded as the appellant.

“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” (the two last sub-paragraphs of point [1.3])

and

“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”. (point [1.4])

To this end the competent Board thoroughly examined the documents (extract from the commercial register, a copy of a letter to the representative and an authorisation) accompanying the request for correction.

(e) This decision, putting considerable weight on the “true intention” of the appellant, was quoted together with T 814/98 in The EPC, Singer/Stauder (volume 2, third edition, A 110, page 243) as allowing a correction of the appellant’s name on a different legal basis to that in T 340/92 or T 1/97. T 814/98 was different because it explicitly accepted the correction under R 88 EPC 1973 […]. As to T 97/98, despite the fact that the legal basis was R 65(2) EPC 1973 and not R 88 EPC 1973, it in fact used the same terminology as in G 11/91 about the requirements of R 139 (R 88 EPC 1973) when assessing whether the requirements of R 101 (2) (R 65(2) EPC 1973) in conjunction with R 99(1)(a) (R 64 (a) EPC 1973) were met.

Thus, the introduction of the notion of “true intention” to assess the requirements of R 99(1)(a) and R 101(2) could have an impact beyond the circumstances of the case upon which the Board then decided: in particular, the conclusion drawn in point [1.4] (see point (d), paragraph [5.3] supra) could prima facie embrace correction of any nature and apply to the case at hand (see [5.8] infra), all the more so since T 97/98 [1.3] explicitly referred to T 1/97 [1.1], where it is stated that the name and address of the appealing opponent can be identified from the decision under appeal (emphasis added by the Board).

[5.4] In seeking to establish the true intention, all the quoted decisions also rely very much on the fact that the appellant had the same representative and that, in conjunction with the appealed decision, it was apparent that the notice of appeal could have been validly filed only by the person adversely affected (T 340/92 [1]; T 1/97 [1.3]; T 97/98 [1.5]).

[5.5] In this Board’s view, it is not pure speculation to read the common reasons of the decisions cited above in the sense that, under R 101(2) (R 65(2) EPC 1973), the entire identification of the appellant could be replaced provided that the true intention to file an appeal in the name of the right person was established, one of the possible means of evidence for establishing the true intention being the fact that nobody else pursuant to A 107 EPC would have been entitled to appeal. In fact, this interpretation crystallised in T 15/01 and T 715/01.

[5.5.1] In the first case the appeal was filed in the name of a legal person which no longer existed due to a merger. The Board took a broad view of the possibilities offered to an appellant to correct the notice of appeal, since it referred to the case law justifying correction on the basis of R 88 (T 814/98; T 460/99) as well as to T 97/98 (commented upon supra point [5.3]). The Board endorsed T 97/98, according to which

“nothing [in R 65(2) and R 64(a) EPC 1973] allowed them to be applied only to certain kinds of deficiencies and as a matter of principle not when the correction of a wrong indication of the name or address of the appellant leads to a different person to the one originally expressly named in the appeal having to be regarded as the appellant.”

The deficiency was that the indication was wrong, so that the correction expressed what was intended when the appeal was filed (T 15/01 [14]).

In the second case, the notice of appeal had been filed by the right person while the statement of grounds of appeal was filed by the new patent proprietor, who however had not yet been registered as such. But, and this is why this Board has to mention this case, the Board then did not make any distinction between the two appeal procedural steps, considering the same admissibility requirements to be met both by the statement of grounds and by the notice of appeal (point [4] of the reasons) :

“the only question remains whether a correction of the name of the applicants in the said statement of grounds is allowable under R 65(2) EPC [1973]”.

Then the Board, in point [5], referred to the passage from T 97/98 quoted in point [5.3(d)] above and then concluded (point [10(f)]) :

“(f) Thus, the board considers that in the present case it is possible to remedy the deficiency under R 65(2) EPC [1973], even after expiry of the time limit for filing the appeal […], since the true intention of the appellants was to comply with the formal requirements for making an appeal admissible. This corresponds to applying in the present situation the rationale of T 97/98”.

[5.5.3] Again, it is true that in T 715/01 the procedural step concerned was not the notice of appeal; but this Board understands, given the general statement in T 715/01 [5], that it was the Board’s view in this latter case that the broad interpretation of T 97/98 regarding the statement of grounds could be applied to the notice of appeal. In this case such broadening would come into open conflict with G 2/04, T 656/98 or T 128/10.

[5.6] In case T 1421/05 the decisive issue was who the opponent was. The appeal had been filed in the name of an opponent who had transferred the assets to which the opposition related and who no longer existed but who had a universal successor. After having decided that the status of opponent remained with the transferor, the Board then stated:

“An appeal filed by mistake in the name of an opponent who no longer exists but who has a universal successor, and which was obviously intended to be filed on behalf of the person who is the actual opponent and who was prejudiced by the decision, namely the universal successor, is admissible; if necessary the notice of appeal and statement of grounds of appeal may be corrected to record the name of the true appellant/opponent” ([headnote 4; 6-7]).

The correction of the notice of appeal was undoubtedly not the main issue in this case (the question arose in fact as a consequence of the main issue, namely who the opponent was), but the Board, in the event that the notice of appeal and statement of grounds were defective, gave its reasons why the correction, if necessary, should be allowed (point [7] of the reasons). The Board indicated that it followed the approach of the Board in T 715/01, which had decided that the relevant rule was R 65 and not R 88 EPC 1973, which was in Chapter V of Part VII of the Implementing Regulations to the Convention, and that the principles for correction under R 65(2) EPC 1973 were set out in T 97/98. While in T 97/98 the Board was satisfied that, from reading the appeal with the help of the indications in the impugned decision, a third party could have derived who really intended to appeal, without knowing the details later brought before the Board of Appeal, T 1421/05 went still further and stated that the Board in T 97/98 did not mean that it was a necessary requirement for correction that the information should be derivable from the appeal (point [7.5] of the reasons).

[5.7] In the light of this case law, having considered the general statements of the decisions mentioned above, particularly in T 97/98, against their specific factual background, this Board could come to the conclusion that some differences can be detected in the factual circumstances (see points [5.1(c)] and [5.2.2] above), which in the present case could justify a refusal of the requested correction without apparently deviating from the established case law. But the Board is not convinced that these differences are more than formal differences: what was found decisive was the true intention which led the boards to decide that the indication was wrong and the true intention was established with the help of information taken from the file or the fact that the representative had been the same. Moreover, there are decisions, such as T 715/01 and T 1421/05, which developed the potentially broad interpretation of T 97/98 in a sense which in fact can be seen as broadening the scope of R 101(2).

[5.8] This is why the question arises in the present case whether, in view of this possible broad interpretation, this Board should consider the alleged incorrect indication in the notice of appeal as a deficiency pursuant to R 99(1) (a) and R 101(2). In fact the parameters used to establish the true intention in the decisions analysed above point to an error qualifying as such a deficiency in the identity of the appellant: from the file and the appealed decision it is immediately clear that Zenon Technology Partnership is the only party adversely affected, the same representative has been acting for this company since the opposition procedure, no transfer of rights has occurred, the appeal fee had been paid in the name of Zenon Technology Partnership, in addition the anomaly was immediately seen by the Registrar - all of which could plead in favour of a genuine error.

[5.8.1] As regards genuine errors, the Board refers here to The Annotated EPC by Derk Visser, 19th edition, page 581, where the case law of the boards of appeal in this matter is summarised as follows:

(a) the first requirement for a correction to be authorised under R 101(2) is that the deficiency is a genuine error, adding however that the correction must reflect what was intended when filing the appeal, which is an intentional feature;

(b) the second requirement reflects, in the Board’s view, the ambiguity of the case law. It is stated:

(i) on the one hand that the indication in the notice of appeal must be such that the appellant is identifiable upon expiry of the period for filing the appeal, even though it is allowed to make the correction after that point in time, so that it is possible to determine whether or not the appeal was filed by the entitled person in accordance with A 107. This Board fully agrees with this statement, which was already in T 1/97 (see point [5.2 (b)] supra) . But there is a second comment.

(ii) on the other hand that it is sufficient for that purpose that it is possible to derive from the information in the appeal, if necessary with the help of other information on file, with a sufficient degree of probability by whom the appeal should have been filed (T 97/98 [1.4]) (emphasis added by the Board). This remark introduces an element of subjectivity into the assessment of the requirements of R 99 (1) (a) and R 101(2).

[5.8.2] Having said that, the Board notes that there is another trend in the case law, which sticks to objective criteria.

Decisions rejecting the request for correction

G 2/04, T 128/10 and T 656/98

[5.9.1] The facts underlying this case were that the opponent (Akzo Nobel N.V.) and the company owning the activities to which the opposition pertained (bioMérieux B.V.) had filed a notice of appeal because they were in doubt as to which of the two companies was entitled to appeal. One of the requests was that the name of the appellant bioMérieux B.V. in the notice of appeal be corrected to Akzo Nobel N.V. if this company was the one entitled to appeal. The EBA noted that the opponent Akzo Nobel N.V., clearly identified as the opponent in the declaration of opposition, was not indicated as the appellant but bioM6rieux was (point [3.1] of the reasons). This was in conformity with the true intention of the author of the declaration. The EBA went on to state that it was the established case law that in such circumstances there was no deficiency which might be remedied in accordance with R 64(a) in conjunction with R 65(2) EPC 1973, nor was there an error which might be corrected in accordance with R 88 EPC 1973 (point [3.1] of the reasons).

[5.9.2] Thus this Board cannot conclude from these statements that the EBA really endorsed T 97/98 in its general statements, or T 715/01, applying these statements: Indeed the EBA then concluded that

“considering the overriding interest that a party must be identifiable, the [Enlarged] Board sees no reason for a broadening of the scope of application of R 65(2) or R 88, first sentence, EPC [1973] (point [3.1] of the reasons)

[5.9.3] In the Board’s interpretation this only means that where there is no deficiency in the sense of R 99(1)(a) and R 101 (2) there is no reason to search for the true intention, the EBA leaving open the question of the relation between R 101(2) (R 65(2) EPC 1973) and R 139 (R 88 EPC 1973).

T 128/10 and T 656/98

[5.9.4] In T 128/10, the mistake as in T 656/98 was held to be a mistake of law as to who was entitled to appeal.

[5.9.5] The circumstances these two cases have in common are that the notice of appeal was filed on behalf of an identified person and was intended to be filed on behalf of this person, but it transpired afterwards that this person was not entitled to appeal (after a transfer of rights it happened that the appellant had not yet become the registered patent owner at the time of filing the notice of appeal).

[5.9.6] In these cases where it was submitted that the real intention was to file the notice of appeal on behalf of the patent proprietor, the Boards concluded that the intention as to the identity was clear and that there was neither a deficiency nor a mistake (T 656/98 [7.1] and T 128/10 [5.4]).

[5.9.7] The only difference between the case at hand and T 128/10 or T 656/98 is that in the latter cases there was a clear mistake of law: the patent proprietors had overlooked the fact that registration was a necessary requirement for being recognised as patent proprietor in proceedings before the office and therefore for being entitled to appeal, while in the present case the mistake consists in having filed an appeal in the name of a person who was not entitled to appeal, when there had been no change which could have introduced a possible hesitation about who was entitled to appeal. Accordingly, if there were not the reservations made in point [5.8] supra, and the question about the possible role of the intention, the present case could correspond to the situation as described in T 656/98 [7.1-3], where the Board then concluded that there was no deficiency, hence no room for any application of R 65(2) EPC 1973.

Decisions based on R 139

[6] The Board is aware that the case law is not uniform as to whether the scope of application of R 139 extends to an act of procedure such as the notice of appeal.

[6.1] T 715/01 excluded it and preferred to apply R 65(2) EPC 1973. T 814/98 allowed the correction of the appellant’s name on the basis of R 88 EPC 1973 without any preliminary discussion about the applicability of the rule. Other decisions simply mentioned it was possible without any comments (see for instance T 15/01 [14]). Consequently this rule cannot be seen as a satisfying solution.

[6.2] The upshot of the above is that the decision of this Board on the admissibility of the notice of appeal depends on the role allocated, or not, to the appellant’s intention, either under R 101(2) in conjunction with R 99(1)(a) or under R 139. Accordingly, given the fact that the case law offers no clear uniform answer, the Board will now consider the respondent’s auxiliary request for a referral to the EBA.

Auxiliary request: referral to the EBA

[7] In fact, it results from all the decisions examined above that the crucial line of partition within the case law is, or should be, the existence of a deficiency, always relied on by the decisions, rather than the intention.

[7.1.1] Either the notice of appeal was filed in the name of the presumed entitled person, who ultimately was not entitled. Whatever the intention was at the time of filing, it led to a mistake of law and to the inadmissibility of the appeal (T 128/10; T 656/98).

[7.1.2] Or something happened, perhaps not intentionally, which led to a deficient indication in the notice of appeal. But the difficulty with respect to this category of decisions is that some of them accepted a very broad definition of “deficiency”, by having recourse to the notion of “true intention” to characterise such deficiencies, e.g. including discrepancies, as an unintentionally wrong identification. And in these cases the true intention was thoroughly investigated to complete the identity of the identifiable person (see for instance T 1/97 above).

[7.2] In that light, the current case could belong to the first category, as already asserted (point [5.9.7]): the notice of appeal was filed on behalf of somebody not entitled to appeal, and it contains no deficiency pursuant to R 99(1) (a), so that there is no reason to trigger the application of R 101(2).

[7.3] But in the light of the comments in points [5.8] above, it remains an open question whether a wrong indication can be considered a deficiency open to correction under R 101(2) because the appellant contends that the true intention was to file an appeal in the name of Zenon Technology Partnership, submitting arguments close to those admitted to establish the true intention

[7.4] As already indicated in points [5.8] above, the case law has introduced the subjective notion of “true intention” and the possibility to “derive from the information in the appeal, if necessary with the help of other information on file, with a certain degree of probability by whom the appeal should have been filed”.

Thus uncertainty exists about whether and, if so, under which requirements it is possible to have recourse to the true intention to assess whether there is a remediable deficiency under R 101(2) in conjunction with R 99(1)(a).

This uncertainty concerns an important point of law: the admissibility of an appeal.

Owing to this uncertainty the Board could turn to R 139, which could be a possible solution. But this rule offers no clear answer either (see points [6], supra).

[7.5] 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.

[7.6] In the present case, the main reason to refer a question to the EBA is that a point of law of fundamental importance has arisen. Given the overriding interest that the party must be identifiable as underlined by the EBA (G 2/04 [3.1]), it is a matter of legal certainty that the admissibility requirements for a notice of appeal should be immediately clear for the parties and should not need to be settled at the price of a preliminary admissibility discussion about the definition of a deficiency and the possible remedies.

[7.7] At this point the Board refers and subscribes to T 656/98 [1.1], where it is stated that it must be possible to determine the person entitled to appeal precisely and easily if the appeal process is not to be tangled up already at the outset in complicated investigations as to the relations between the original parties and later would-be parties and would-be appellants. This declaration made in relation to the transfer of rights to patent ownership remains relevant for the current case because it addresses the status of the appellant.

[7.8] Apart from the trouble caused by the investigations which might be necessitated by a search for the true intention, the Board is not convinced that allowing the correction only on the basis of the true intention would not result in broadening the scope of application of R 101(2) in a manner which was prohibited by G 2/04, also with the consequence contra legem of eluding R 101(1) and A 107.

[7.9] In fact the question is whether this broad interpretation would not lead in extreme cases to simply ignoring A 107: in cases where the patent is revoked or the opposition is rejected, the sole possible appellant being the sole losing party or its legal successor, the requirements of R 99(1) (a) could simply be ignored.

[7.10] Furthermore, while the EBA in G 2/04 had no reason to discuss the relationship between R 65(2) and R 139 EPC 1973, now R 99(1)(a) and R 101(2), for the purpose of the referral at hand, it admitted implicitly that it was an issue. In the present case the appellant bases its request on both provisions, so that the question of their relationship is also decisive for the present decision on admissibility.

[7.11] Finally, having regard to certain elements of case law, the Board cannot be sure that the true intention of the appellant has no role to play. Accordingly, taking the responsibility to pronounce judgment on this important point of law in a sense which would depart from these elements of case law would be fatal for the appellant’s case. This would add unfairness in a context of legal uncertainty.

[8] This is why the Board comes to the conclusion that the issue is to be referred to the EBA.

Order

For these reasons it is decided that: 

The following questions are referred to the EBA:

(1) When a notice of appeal, in compliance with R 99(1)(a), contains the name and the address of the appellant as provided in R 41(2)(c) and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is a request for substituting this other legal or natural person admissible as a remedy to “deficiencies” provided by R 101(2)?

(2) If the answer is yes, what kind of evidence is to be considered to establish the true intention?

(3) If the answer to the first question is no, may the appellant’s intention nevertheless play a role and justify the application of R 139?

(4) If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)?

NB: The referral is pending under reference G 1/12.

To download the whole decision, just click here.

The file wrapper can be found here.

NB: I think Le blog du droit européen des brevets was first to spread the news. You can find a French summary of the referral there.