T 1957/10 – In-House Problems

The patent proprietor filed an appeal against the revocation of its patent by the Opposition Division (OD).

In its notice of appeal, the patent proprietor requested the Board to reject the opposition – which had been filed by LuK Lamellen und Kupplungsbau Beteiligungs KG (“LuK KG”) – as inadmissible. It argued that the European Patent Register (EPR) cited LuK Lamellen und Kupplungsbau GmbH (“LuK GmbH”) as the opponent. In distinct opposition proceedings, the opponent had declared that LuK GmbH had ceased to exist 10 years ago.

Shortly after the appeal had been filed, the opponent filed an excerpt from the commercial register according to which the commercial activities (Handelsgeschäft) of LuK KG had been transferred to LuK Vermögensverwaltungsgesellschaft mbH (“Luk VmbH”) on June 30, 2010 and that LuK VmbH had transferred all European IP rights (Schutzrechte) and all pending European applications to Schaeffler Technologies GmbH & Co. KG (“Schaeffler”).

The Board did not find the opposition inadmissible:

*** Translation of the German original ***

[2] The requests of the [patent proprietor] to dismiss the opposition as inadmissible and to deny the opponent status to the respondent cannot be granted.

The fact that the EPR wrongly cites LuK GmbH as opponent is irrelevant because parties are not responsible for possible errors in the EPR which they have not caused. It is also irrelevant that the [opponent] allegedly declared in other proceedings that LuK GmbH had ceased to exist 10 years ago, all the more because it cannot be determined any more whether such a statement has indeed been made.

The opposition was filed by LuK KG. In a written submission dated March 29, 2011, received on March 31, 2011, the representative of this company informed the Office that it had been dissolved as from June 30, 2010 and that its commercial activities – including all IP rights and applications – had been transferred by means of a merger (Anwachsung) to LuK VmbH. Excerpts from the commercial register of the Mannheim District Court (Amtsgericht) were also submitted, as well as a copy of a document according to which LuK VmbH had transferred all European IP rights as well as all pending European applications to Schaeffler as from July 1, 2010.

According to the [patent proprietor] the opponent status now belonged to [Schaeffler] because this status was not freely transferable. Rather, according to the case law of the Enlarged Board of appeal (EBA), it could only 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 4/88). The [patent proprietor] was of the opinion that the opponent status was equivalent to an IP right and, therefore, as from July 1, 2010, belonged to Schaeffler to which all IP rights of LuK VmbH had been transferred. Moreover, the [patent proprietor] cited decision T 19/97 according to which “a transfer of the party status is admissible at any stage of pending opposition appeal proceedings if it is made together with the transfer of the business activities (Geschäftsbetrieb) or that part of the company in whose interest the opposition was filed.” According to the [patent proprietor] the opposition was filed in the interest of the part of the company that was transferred to Schaeffler because this company deals with IP related problems (Fragen des geistigen Eigentums).

The Board does not agree with this opinion of the [patent proprietor] because an opposition is not an IP right but rather the attempt to annihilate IP rights of another person by means of the revocation of a granted patent. Consequently, the agreement between LuK VmbH and Schaeffler dated July 1, 2010, has no influence of the question which legal person is to be considered to be the opponent in the present proceedings. Until June 30, 2010, the opponent status belonged to the business activities of LuK KG. After its dissolution all its business activities – including the opponent status – were transferred to LuK VmbH. This transfer of the opponent status complies with the requirements set forth by the EBA in its decision G 4/88. The transfer of all IP rights of LuK VmbH to another – apparently associated – company is an in-house (konzernsintern) problem and does not imply that the opposition and the appeal were filed in the interest of the part of the company that was transferred to Schaeffler. Rather, what is decisive is the fact that the commercial activities of the dissolved LuK KG company were transferred to LuK VmbH as from June 30, 2010.

As the legal situation is clear, it is not necessary to refer the questions submitted by the [patent proprietor] to the EBA. As a matter of fact, there is no doubt regarding the identity of the opponent and respondent.

The decision also contains an interesting passage on the admissibility of the second auxiliary request:

[7] The second auxiliary request was only filed during the appeal proceedings although it could have been filed during the first instance proceedings. Therefore it is within the discretion of the Board to admit this request or not to do so (see Article 12(4) RPBA).

The second auxiliary request comprises three independent claims. The torsional vibration damper according to claim 1 is characterised by the section of the slide ring. Claim 2, however, defines torsional vibration dampers by the fact that the primary sheet comprises noses. Claim 3 is directed at still another subject-matter by indicating that the secondary mass is made of grey iron.

It is true indeed that it is not possible in appeal proceedings to divide the patent by filing a divisional application. However, in the present case the three independent claims are not directed at three alternative embodiments of an invention. Rather, they are directed at three different and uncorrelated aspects.

Moreover, each of these lines of defence constitutes an entirely new case because none of the independent claims was had been presented to the OD for decision. As a consequence this request runs contrary to the main purpose of inter partes appeal proceedings, i.e. to give the losing party the opportunity to contest the decision of the OD on substantive grounds.

Under these circumstances the second auxiliary request was not admitted into the proceedings.

To read the whole decision (in German), click here.

The file wrapper can be found here.