T 960/08 – A Certain Uncertainty

On 14 May 2008, VDO Automotive AG (“VDO”) filed an appeal against the decision of the Opposition Division (OD) to reject an opposition filed by Siemens AG (“Siemens”). The appeal was filed in the name of VDO and, as an auxiliary request, in the name of Siemens.

With a letter received on 26 June 2008, i.e. after expiry of the period for filing the notice of appeal, the representative filed a declaration by Siemens and another declaration made on behalf of VDO, both dated 22 April 2008, stating that the opponent status had been transferred, as well as an extract from the commercial register of the Amtsgericht Regensburg.

The patent proprietor questioned VDO’s entitlement to appeal and the admissibility of the auxiliary request indicating Siemens as an appellant.

The Board’s analysis of the situation contains both a useful overview over the applicable case law and an interesting statement on auxiliary requests.

[1] At the end of the oral proceedings (OPs), the representative of the appellant requested that the board first decide on the auxiliary request.

This request requires a reversal of the order in which the requests were filed.

The admissibility of the appeal can be examined only on the basis of the legal facts as they stand at the time the period for filing the notice of appeal expired. The order of requests concerning the person of the appellant is also a legal fact. Therefore, the requests have to be considered in the order they were filed when the time limit for filing the notice of appeal expired.

The request is therefore refused.

Entitlement to appeal of VDO

[2.1] VDO is not entitled to appeal under A 107, first sentence.

According to A 107, first sentence, only a party to proceedings adversely affected by a decision may appeal. In deciding which party is affected by a decision, the legal situation at the time the impugned decision was issued has to be considered.

The party adversely affected by the decision under appeal is Siemens, since its opposition was rejected by the impugned decision.

Siemens filed the opposition and remained the party to the opposition proceedings until the end of the procedure, i.e. it was the party to the opposition proceedings at the time the decision under appeal was issued. There was no indication in the notice of opposition that the opposition had been filed in the interests of the business assets “Siemens VDO Automotive” or any other special business assets.

These facts are evident from the file and have been confirmed by the appellant.

It follows that Siemens was formally the party to the opposition proceedings.

VDO was never a party to the proceedings before the department of first instance in the present case. Therefore, the conditions laid down in A 107, first sentence, concerning entitlement to appeal are not fulfilled.

[2.2] VDO is not entitled to appeal due to the transfer to it of the business assets “Siemens VDO Automotive”.

Where opposition proceedings are pending before the EPO, the opponent’s status may be transferred to a third party by universal succession or as part of the opponent’s business assets, together with the assets in the interests of which the opposition was filed (see G 4/88 and Case Law of the Boards of Appeal, 6th Edition 2010, VII.C.5.1.2).

However, there is a clear distinction between a substantive transfer of opponent status with the business assets and its procedural validity in proceedings before the EPO (cf. among others, T 19/97).

The boards of appeal have consistently held that formal requirements have to be fulfilled for the opponent status to be considered transferred. This finding is based on an application, by analogy, of the general procedural principle laid down in R 22(3) (cf. Case Law of the Boards of Appeal, 6th Edition 2010, VII.C.5.1.2).

It follows from this procedural principle that the procedural validity of a transfer of opponent status is dependent on the submission of a duly substantiated request and on production of documents providing evidence of legal succession within the proceedings (cf. among others, T 6/05, T 19/97). A mere declaration by the transferee that he has acquired the party status is not sufficient (cf. T 670/95). A transfer can only be acknowledged from the date when adequate evidence to prove the transfer was filed, i.e. ex nunc (cf., among others, T 956/03, T 1137/97, T 1421/05). There is no retroactive effect of the submission of evidence. Until evidence of the transfer has been provided, the original party to the proceedings continues to have the relevant rights and obligations (cf. e.g. T 870/92, T 19/97, T 478/99, T 413/02, T 6/05). This is especially justified in cases where the opponent status is transferred together with the assignment of business assets, because the original party continues to exist and may continue the opposition proceedings (cf. T 6/05 [1.6.4]). In particular, if the transfer takes place before the period for filing the notice of appeal expires, then the entitlement of the transferee to replace the opponent has to be established by filing the necessary evidence before the period for filing the notice of appeal expires (T 956/03). The present board does not see any reason to depart from this jurisprudence.

In the present case, it was even never explicitly requested during the proceedings that the transfer of the party status as opponent be acknowledged. In fact, there was no substantiated submission on this issue at any time in the proceedings. On the contrary, the appellant submitted that Siemens continued to be party to the proceedings.

The declarations annexed to the letter of 26 June 2008, i.e. after expiration of the period for filing the appeal, that the opponent status had been transferred are not a request that the transfer be acknowledged in the proceedings and cannot be considered an implicit request either because this is in contrast to the procedural behaviour of the appellant and its submissions.

Moreover, the appellant admitted that it could not be proved that the declarations as well as the extract from the commercial register of the Amtsgericht Regensburg were filed at the EPO before the expiry of the period for filing the notice of appeal.

As it was not requested that the transfer of the party status be acknowledged and as the declarations and extract from the commercial register of the Amtsgericht Regensburg filed as evidence were submitted after expiry of the period for filing the notice of appeal although the alleged transfer had taken place earlier, it is unnecessary to examine whether the evidence would be convincing.

Since the required conditions are not fulfilled, the procedural validity of the transfer of the opponent status cannot be acknowledged in the present case.

It follows from the above that VDO is not entitled to file the appeal under A 107.

Admissibility of the auxiliary request indicating that the appeal is filed in the name of Siemens

[3.1] In principle, a conditional appeal is not admissible.

However, in decision G 2/04 the Enlarged Board of Appeal (EBA) held that an appeal filed by one representative containing an auxiliary request concerning the person of the appellant is admissible under the following three conditions:

i. there are no doubts whether a review of the contested decision shall take place;

ii. the professional representative is entitled to act in the name of both persons;

iii. there is a legal uncertainty about the party status.

According to G 2/04, a legal uncertainty about party status exists when the uncertainty is caused by a legal situation which, from an objective point of view, may be considered unclear (cf. G 2/04 [3.2.4(c)]), thus corresponding to situations where the party status has to be decided by the competent body of the EPO on the basis of the file as it stands and depends only on the judgment of this body (cf. G 2/04 [3.2.4(c)]) and the party in question cannot be held responsible for the legal uncertainty as to which one of the entities may seriously be considered to be the correct party (cf. G 2/04 [3.2.5(b)]).

An uncertainty dependent on an uncertain event outside the proceedings, or caused by the procedural conduct of the party, does not justify filing an appeal in the name of a person indicated alternatively as an auxiliary request (see G 2/04 [3.2.4(c)]).

[3.2] In the present case, there are no doubts that it was intended that a review of the contested decision shall take place and that the representative who filed the appeal was entitled to represent both parties.

However, the legal situation was clear from an objective point of view. In fact, although the alleged transfer of the party status took place before the expiry of the period for filing the notice of appeal, no request for transfer of the party status had been filed before expiry of the period for filing the notice of appeal or at any time later. Therefore, according to the established jurisprudence of the boards of appeal (see above point [2.2]), the transfer has no procedural validity before the EPO, irrespective of whether or not there was an agreement between the parties on this point.

The alleged legal uncertainty about the party status resides in the fact that the appellant and the representative were uncertain about the content of the contract concerning the transfer and about the conditions under which a transfer is procedurally valid. This is a state of mind of the representative and thus an event outside the proceedings which does not justify the filing of an auxiliary request in the name of the person indicated alternatively.

(a) The “Einbringungsvertrag” is a contract between the two parties in whose name the appeal was filed. The parties are legal persons. The fact that individuals working for them in different departments did not know the content of the contract, or had different opinions about its content, or evaluated its legal effects differently, or had different opinions on what pertained to the transferred business assets, is an event outside the proceedings.

The argument of the appellant that it is the duty of the EPO to decide who is the right party to proceedings in this case cannot be accepted as it is an improper attempt to shift responsibilities insofar as it seems to imply that the EPO, instead of the parties, should decide on the content of the contract.

(b) As far as the uncertainty as to the necessary means of proof and the time of their filing is concerned, the jurisprudence clearly establishes that, if the appeal is filed by the transferee, the transfer has to be requested and proved within the time period for filing the notice of appeal and that, in the case of a transfer of business assets, the request that the transfer be acknowledged has no retroactive effects.

The necessity of requesting and proving the transfer before expiry of the period for filing the notice of appeal was therefore clearly recognisable.

It is true that in decision G 2/04 [3.2.3(c)], the EBA cites as an example of legal uncertainty the situation where a request for transfer of the opposition has been submitted but the transfer has not yet been registered and it is doubtful whether or not the evidence submitted by the requester for establishing the transfer actually satisfies the EPO that a transfer has duly taken place.

In the present case, however, no request to register a transfer has been filed, so that this example is irrelevant.

(c) As far as decisions G 4/88 and G 2/04 are concerned, it is clear that both decisions are complementary and applicable to the present case insofar as G 4/88 establishes the principle that the opposition pending before the EPO may be transferred to a third party as part of the opponent’s business assets together with the assets in the interest of which the opposition was filed and as G 2/04, contrary to the view developed by the appellant, does not contradict this finding and does also not permit a free transfer of the status as opponent.

The factual situations underlying these two decisions are very clear and very different from each other. In the situation underlying G 4/88 it was for legal reasons not from the outset possible to attribute the procedural status of opponent to the business assets in the interests of which the opposition was filed, whereas G 2/04 is concerned with a situation in which the holding company did not want to attribute the procedural status of opponent to the entity in whose interest the opposition was filed and which already existed at that time. In G 2/04 it was decided that there is no reason to extend the application of the rationale of G 4/88 to the case where a subsidiary company was sold in whose interest the opposition had been filed by the parent company.

The legal situation that follows from these decisions is clear: only if the business assets in the interests of which the opposition was filed are sold to another company is a transfer possible. In that case, if all further conditions established by the jurisprudence are fulfilled, then the transfer also has procedural validity before the EPO.

In the present case, it was submitted that a transfer of business assets had taken place and that the transferee did not exist at the time the opposition was filed. There was accordingly no reason to think that G 4/88 was not applicable. Moreover, the situation underlying G 2/04, namely two legal entities existing at the time the opposition was filed, was not given.

There could also not be any uncertainty on the way the two decisions should be applied.

The uncertainty was a personal uncertainty on the part of the representative, and this is an event outside the proceedings.

Thus, the conditions established by decision G 2/04 for the admissibility of an auxiliary request concerning the identity of the appellant are not fulfilled.

Since the appellant is not entitled to appeal and its auxiliary request is not admissible, the appeal is inadmissible under A 107 and R 101(1).

[4] The appellant requested that the notice of appeal be corrected under R 139.

A correction under R 139 is only possible if there is an error in a document.

For the notice of appeal, R 101(2) and R 99(1)(a) are to be applied as lex specialis (cf. e.g. T 340/92, T 1/97, T 97/98).

The principles for correction of a notice of appeal under these Rules were set out in T 97/98. Even though that decision was taken under the EPC 1973, the same principles apply under the EPC now in force, since the text of R 99(1)(a) and R 101(2) is identical to that of R 64(a) and R 65(2) EPC 1973.

In case T 97/98 [1.3], the board held that:

“What is required (for a correction) 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 EPC. 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).

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 (point [1.6] of the reasons).

The present board agrees with these principles and applies them to the present case.

The appellant submitted the request for correction as an auxiliary request.

This implies that it considered the original declaration to be the main request.

This implies in turn that this declaration was not an error and that the change is just a change of mind. A correction is therefore not possible, because the notice of appeal did not contain a deficiency under R 99(1)(a).

The notice of appeal in case T 457/08 was filed as evidence that the true intention was to file the appeal for Siemens, as the main request, and for VDO as an auxiliary request, because that was the order of the requests in that case. However, that notice of appeal cannot prove the true intention in the present case. Furthermore, the notice of appeal in another appeal is not information on file, i.e. as it appears in the impugned decision, as required in T 97/98.

The respondent submitted decision T 428/08, in which the same order of requests as in the present case was chosen and maintained.

Therefore, it cannot be assumed that the appellant usually files its appeals in the reverse order and only in the present case was the order erroneously changed. The appellant itself submitted that it has tried different combinations in order to provoke a referral to the EBA.

The board therefore holds that the original declaration was not an error and cannot be corrected under R 101(2). […]

The appeal filed in the name of VDO or subsidiarily in the name of Siemens is rejected as inadmissible.

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