In this case an opposition had been filed by Siemens AG (“Siemens”) and transferred to Nokia Siemens Networks GmbH & Co. KG (“NSN”).
The Opposition Division (OD) had maintained the opposed patent in amended form.
An appeal was filed both by the patent proprietor (Sony) and NSN.
The Board examined the party status and the admissibility of the appeal:
[1.1] As a matter of principle, the board examines the question of party status ex officio before dealing with the substance of the case (cf. G 2/04 [3.2.5], and T 1178/04 [27, 31, 34]). According to the established case law an opponent status is not freely transferable. It may however 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 (G 2/04 and G 4/88). If the technology of the opposed patent concerns different parts of the opponent’s business, the status of opponent can pass to a third party only if all these parts are transferred to it (see T 9/00 [2(e)]).
[1.2] In the present case, it was common ground between the parties that with effect of 1 October 2006 the original opponent (Siemens) transferred its business part “Carrier Networks Geschäft” to Siemens Networks GmbH & Co. KG (statutory declaration dated 3 February 2009) which subsequently changed its name to NSN.
[1.3] However, in the board’s judgement, the declaration submitted by NSN in support of the transfer of opposition does not constitute sufficient evidence in order to conclude that the transferred business part comprised all of the technology to which the patent in suit relates. More specifically, the term “Carrier Networks” is open to different interpretations and the declaration does not give details of the technological areas covered by the transferred business part. Nor does the further evidence as submitted in reply to the first communication, in which it was confirmed that Siemens had transferred “its assets, liabilities and contracts relating to the carrier networks equipment and services business with telecommunication network operators and service providers of Siemens’ communications group (COM) comprising: (a) the mobile networks, fixed networks and carrier services divisions; and (b) the carrier core development and supply chain management carrier networks functional divisions”, provide sufficient evident in order to conclude that the transferred business part comprised all of the technology to which the patent in suit relates. In this respect the board notes that the patent in suit is concerned with a communication resource allocation method for adapting the transmission capacity of a wireless link between a mobile terminal apparatus and a base station connected to a cellular communication network. Independent claim 9 as granted is directed to a mobile terminal. Hence, the patent relates, inter alia, to business activities in the field of mobile telephones. At the oral proceedings (OPs) before the board the representative representing both Siemens and NSN did not contest that Siemens is currently the applicant for or patent proprietor of patents relating to mobile telephones.
[1.4] In view of the above the board concludes that the opponent status was not validly transferred. The OD thus incorrectly held that NSN was the new opponent and, consequently, the appeal was filed in the wrong name, namely in the name of NSN, instead of in the name of Siemens.
[1.5] Following T 1178/04 [3], the fact that the OD’s ruling on the issue of opponent status was wrong cannot however mean that NSN was not a party to the proceedings at the date the notice of appeal was filed. A person is to be regarded as a party for the purpose of A 107 even if his entitlement to take part in the proceedings is brought into question and such entitlement is the subject-matter of a pending decision. Although he may cease to be a party if it is decided that he is not entitled to take part in the proceedings, this does not mean he never was a party.
[1.6] Since there is no dispute that the other requirements of A 107 and A 108 have been satisfied in this case, it follows that the appeal filed by NSN is admissible.
Procedural consequences
[2.1] The OD’s view that the opponent status was validly transferred had the consequence that the opposition proceedings were continued with the wrong party, i.e. with NSN instead of the original opponent. These proceedings thus suffered from a major procedural deficiency. According to Article 11 RPBA, a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise. Such a remittal was considered necessary in decision T 1178/04 [44-45] in a situation similar to the present one.
[2.2] However, in the board’s view, the particular circumstances of the present case, which are summarized in the following, speak against a remittal under Article 11 RPBA. In response to the board’s communication accompanying the summons, the appellant’s representative explicitly stated that he had been and was still authorized to represent the original opponent and submitted a corresponding authorisation. He had already offered to file such an authorisation in the OPs before the OD, when the patent proprietor for the first time questioned the transfer of opponent status. None of the parties argued that the fact that the opposition proceedings were continued with the wrong party had changed the outcome of the proceedings in substance. Any suggestion that the true opponent might not have appealed the decision or might have conducted the appeal proceedings differently would amount to mere speculation and be highly implausible, since the original opponent indeed authorized the representative to represent it in the current appeal proceedings. Moreover, all the parties agreed that a remittal and the ensuing repetition of the first instance proceedings would cause a considerable and undesirable delay in having the case decided by the final instance. Under these circumstances, the true opponent (Siemens) is deemed to have acquired the appellant status from NSN as a consequence of the board having decided that the opponent status was not validly transferred to the latter company. Thus, in the present case, there is no need for a remittal on the ground that the appeal was not filed by the true opponent itself.
[2.3] The appeal proceedings are therefore continued with Siemens as the appellant. Further, since in the course of the OPs the proprietor withdrew its appeal, the proprietor is party to the appeal proceedings as of right and will hereinafter be referred to as the respondent (A 107).
Should you wish to download the whole decision, just click here.
NB: For some reason unknown to me (which might simply be an error), the decision is marked as “draft”.
The file wrapper can be found here.
A similar case was discussed in an earlier post on this blog.
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