Wednesday 23 May 2012

T 1668/07 - What’s In A Name


The opponent filed an appeal against the rejection of its opposition by the Opposition Division (OD).

In the following extract the Board deals with the admissibility of the appeal:

[2.1] As far as the admissibility of the present appeal is concerned, the provisions of the EPC 1973 are to be applied, since all the time limits for complying with the conditions for filing an appeal under A 108 EPC 1973 had expired before the revised EPC entered into force on 13 December 2007 (see also J 10/07 [1]).

[2.2] It was only in its reply to the board’s communication under Article 15(1) RPBA, annexed to the summons to oral proceedings, that the respondent called into question the admissibility of the present appeal and requested as its new main request that the appeal be deemed inadmissible. In the board’s view this was a rather late stage of proceedings for raising objections to the admissibility of the present appeal as the facts had not changed since the expiry of the periods for complying with the conditions for filing an appeal. However, the admissibility of an appeal has to be examined ex officio at every stage of the appeal proceedings (see also T 15/01 [1]). Hence the board has had to consider the respondent’s new main request although it was filed long after the periods for filing an appeal had expired and after OPs had been arranged.

[2.3] The admissibility of the appeal has been called into question by the respondent with the argument that the notice of appeal was filed on behalf of the company IGR GmbH & Co. KG and the evidence for the change of name of the opponent was only filed after expiry of the two-month period for filing an appeal and that, therefore, IGR GmbH & Co. KG was not the acknowledged name of the party to the first-instance proceedings when the notice of appeal was filed.

[2.4] A 107, first sentence, EPC 1973 provides that any party to proceedings adversely affected by a decision may appeal. If this requirement is not met, the appeal must be rejected as inadmissible under R 65(1) EPC 1973. The board thus has to determine first whether the company IGR GmbH & Co. KG can be regarded at the time of filing its notice of appeal as a party to the first-instance opposition proceedings (whether as original opponent or as successor to the original opponent), and thus, pursuant to A 107 EPC 1973, a person entitled to appeal the decision of the OD.

[2.5] The notice of opposition and the decision under appeal indicate as opponent the company Interessengemeinschaft für Rundfunkschutzrechte GmbH Schutzrechtsverwertung & Co. KG. The notice of appeal was filed on behalf of the opponent and the company IGR GmbH & Co. KG was indicated as opponent. In the statement of grounds of appeal the appellant submitted that the company Interessengemeinschaft für Rundfunkschutzrechte GmbH Schutzrechtsverwertung & Co. KG had changed its name to IGR GmbH & Co. KG.

[2.6] The board considers that the copy of an excerpt from the Commercial Register filed by the appellant […] clearly shows that the above-mentioned change of name of the company Interessengemeinschaft für Rundfunkschutzrechte GmbH Schutzrechtsverwertung & Co. KG was effective under German law as of 9 August 2006, i.e. before the notice of appeal was filed. This has not been contested by the respondent.

A company is a legal person and a mere change of its name does generally not cause a change of its legal personality. In other words a renamed company generally enjoys perpetual succession and does not thereby change its identity. Hence there is generally no transfer of assets from one company to another or universal succession by one company to all the rights and interests of another.

In the filed copy of the excerpt from the Commercial Register there is no evidence of anything other than a change of name. Furthermore, the respondent has not asserted otherwise. The board concludes that the change of the opponent’s name did not result in the transfer of opposition status to a third party in the present case. Hence the jurisprudence of the Enlarged Board of Appeal (G 4/88 and G 2/04) and of the Boards of Appeal (see Case Law of the Boards of Appeal, 6th edition, VII.C.5) on the requirements for the transfer of opponent status does not apply in the present case.

[2.7] The respondent referred to decisions T 1137/97 and T 956/03. However, it follows from the above that the facts of these cases differ from those of the present case, since they concern the transfer of the opponent status to a third party. In these decisions it was held that a transfer of opposition status can only be acknowledged as from the date when adequate evidence is produced, since it is a principle that a patent proprietor and, as the case may be, the OD or the board of appeal should know the identity of the party opposing a patent. In both cases the appeal was found inadmissible because the entitlement of the transferee to replace the opponent and to appeal could not be established by adequate evidence at the time of filing of the notice of appeal or before the two-month period for filing an appeal expired, respectively. In the present case, however, the legal person which was the opponent in the first-instance opposition proceedings also filed the notice of appeal, using its new name IGR GmbH & Co. KG. Thus there is no doubt that the appellant was entitled to appeal the decision of the OD and that the appeal was filed in accordance with A 107, first sentence, EPC 1973 by the party adversely affected by the appealed decision.

[2.8] The respondent further argues that there was no indication in the notice of appeal of a change of the opponent’s name and that, therefore, the appellant, using its new name, was not identifiable in the present case. The board thus also has to ascertain whether the notice of appeal contained sufficient information for identification of the appellant within the meaning of R 64(a) EPC 1973.

[2.9] According to R 64(a) EPC 1973 the notice of appeal shall contain the name and address of the appellant in accordance with the provisions of R 26(2)(c) EPC 1973. The purpose of this provision is, apart from administrative purposes, to secure the appellant’s identification and to allow establishment of whether or not the appeal was filed by a party to the proceedings within the meaning of A 107 EPC 1973 (see T 97/98 [1.3]).

Deficiencies and omissions regarding the appellant’s name or address may be remedied under R 65(2), first sentence, EPC 1973 on invitation of the board of appeal, even after expiry of the two-month time limit under A 108 EPC 1973 (see T 1/97 [1.1] and T 97/98 [1.3]).

[2.10] However, according to the jurisprudence of the Boards of Appeal, the appellant must be sufficiently identifiable within the period for filing an appeal (see T 533/93 [1.1] , T 1/97 [1.1] and T 97/98 [1.3]). This is the case 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” (T 97/98 [1.3]; see also T 1/97 [1.1] and the further decisions cited therein).

[2.11] In the present case, the appeal was expressly filed in the name of the (sole) opponent, but in the notice of appeal the company IGR GmbH & Co. KG was indicated as the opponent, which was different from the name of the opponent indicated in the impugned decision and recorded in the European Patent Register (EPR) at that time. However, in spite of this inconsistency, in the board’s judgement the appellant was sufficiently identifiable within the period for filing an appeal, since, in the notice of appeal, the appellant was clearly referred to as the opponent and the opponent’s address, the number of the contested patent and the name and address of the professional representative were the same as those cited in the impugned decision and recorded in the EPR at the time when the appeal was filed.

[2.12] Accordingly, a deficiency in the indication of the name of the appellant could have been remedied under R 65(2), first sentence, EPC 1973 on invitation of the board of appeal, even after expiry of the two-month time limit under A 108 EPC 1973. Due to the above-mentioned inconsistency in the name of the opponent, the board would normally have issued a communication under R 65(2), first sentence, EPC 1973, drawing the appellant’s attention to the fact that the appeal appeared at first sight to have been filed in the name of a legal person other than the opponent in the first-instance proceedings and outlining the possible legal consequences depending on the circumstances of the case, which would have to be clarified by the appellant. However, before issuing such a communication, the board was informed of the change of the appellant opponent’s name with the appellant’s statement of grounds of appeal and the evidence attached thereto […]. Thus it became apparent that the notice of appeal indicated the appellant opponent’s correct new name according to the Commercial Register, Düsseldorf, Germany, and that the appellant was not a different legal person from the opponent in the first-instance opposition proceedings […]. However, since the opponent had not yet informed the EPO of this change of name, the new opponent’s name had not been recorded in the EPR at the time of filing of the appeal. This inconsistency was removed when the entry of the opponent’s name in the EPR was updated after receipt of the statement of grounds of appeal. Since the legal situation regarding the appellant’s name was clarified and any deficiency regarding the requirements of R 64(a) EPC 1973 had been remedied with the update of the EPR, there was no longer a need for a communication from the board under R 65(2), first sentence, EPC 1973.

[2.13] In view of the above, the original opponent filed the notice of appeal and the requirements of A 107, first sentence, and R 64(a) EPC 1973 are met. The present appeal is also in accordance with A 106 and A 108 as well as R 64(b) EPC 1973 and thus admissible.

NB: The Board also provided a take-away headnote:
If an appellant files an appeal using a new name and without indicating that its name has changed, the requirements of A 107, first sentence, and R 64(a) EPC 1973 are met provided the appellant is identifiable and substantiates its change of name, for entry in the European Patent Register, at the latest upon the boards invitation under R 65(2), first sentence, EPC 1973.
To download the whole decision, click here.

The file wrapper can be found here.

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