T 1700/11 – Zero Discretion

This is an appeal by the patent proprietor against the maintenance of the opposed patent in amended form.

The representative of the opponent had filed the opposition on October 14, 2008, in the name of Henniges Automotive Sealing Systems North America Inc. He did not file an authorisation.

During the opposition proceedings, the patent proprietor contested the legal existence of the opponent and the validity of the authorisation of the representative. It referred to other proceedings before the EPO and the German Bundespatentgericht where oppositions filed in the name of GDX Automotive North America Inc. (the former name of the Henniges company) had been rejected as inadmissible.

The Opposition Division (OD) did not see any reason to doubt that the representative was authorised; examining authorisations was not among the duties of an OD. There was no need for adding a legally competent member to the OD because the legal situation was straightforward.

The patent proprietor filed an appeal and inter alia requested the Board to reject the opposition as inadmissible and to order apportionment of costs.

It did all it could to hinder the opponent from having the opposition declared not to have been filed, but it was not successful.

As the Board goes to some detail (which, for reasons unknown to me, appears to occur more often in German-language cases), the decision is rather lengthy. If you content yourself with the headnote, here is a translation:

If a European representative files an opposition in the name of a party and does not file a signed authorisation in due time after having been invited to do so by the Board of appeal, then the opposition is deemed not to have been filed (R 152(1)(6)).

This legal fiction entails a loss of rights (R 112(1)); an examination of the admissibility of the opposition which, from a legal point of view – fictitiously – has not occurred, is out of the question.

For those who want it all, please read on:

*** Translation of the German original ***

[2] Pursuant to R 152(6) the procedural steps taken by the representative of the [opponent] are deemed not to have been taken.

The [opponent] has not filed an authorisation for its professional representative within the four-month time limit set in the communication of the Board of appeal dated March 8, 2012.

[3] Generally speaking, the Board of appeal is entitled to order of its own motion that an authorisation be filed within a given time limit, because the Board has to examine, at any stage of the proceedings and of its own motion, whether a procedural situation (Prozessverhältnis) is duly justified. However, this duty to examine is limited by R 152(1) in connection with the “Decision of the President of the EPO dated 12 July 2007” (OJ EPO, Special edition 3/2007, p. 128) because professional representatives are not required to file authorisations. This waiver comes to an end when the EPO, in particular cases, requires [the representative] to produce an authorisation pursuant to Article 1(3) of the Decision of the President. The Board has exercised this power its communication dated March 8, 2012.

The “Decision of the President of the EPO dated 12 July 2007” is also binding on the Boards of appeal. The provisions established by means of this Decision qualify as law (haben Rechtsnormcharakter). The President was empowered, by means of direct legal delegation through R 152(1), to issue this Decision in is quality as legislative authority (Rechtssetzungsorgan). R 152(1) transfers, to a limited extent, the competence of the Administrative Council under A 33(1)(c) to amend the Implementing Regulations to the President of the EPO (regarding the quality of law of a Decision of the EPO, see T 991/04 [20]). Thus the issuing of this Decision is not a “necessary step” within the meaning of A 10(2)(a) but part of the EPC within the meaning of A 23(3). The “Decision of the President of the EPO dated 12 July 2007”does not concern matters governed by the RPBA. Moreover, Article 1(3) of this Decision fully ensures the independence of the Boards of appeal in the conduct of the proceedings.

[4] As the four-month time limit set in the communication dated March 8, 2012, has expired without any result, the opposition filed by the professional representative is deemed not to have been filed. This legal fiction that the opposition has not been filed has become effective ex tunc, at the time when the opposition was filed, as soon as the time limit expired on July 18, 2012, and generated a loss of rights within the meaning of R 112(1) for the opponent.

The Board is of the opinion that in the present case, for the sake of of procedural clarity, [the Board] has to decide on the loss of rights even though the [opponent] has not filed a request pursuant to R 112(2), first sentence. At the present stage of the proceedings, the mere communication concerning the legal fiction that the opposition had not been filed, could create doubt as to whether the patent was maintained unamended, because the OD had maintained the patent in amended form. Therefore, the order (Tenor) of the present decision is better suited to clarify the procedural situation than a mere communication of loss of rights.

[5] The impugned decision is based on incorrect procedural assumptions and, as a consequence, erroneously assumes that a legally effective opposition had been filed in due time. The objective incorrectness of the decision is not obviated by the fact that it was only the Board that ordered that an authorisation be produced. All the Board has to do is to review the correctness of the impugned decision based on the procedural facts that are now available. The decision contradicts the legal consequences stipulated in R 152(6) and is legally deficient. Thus the impugned decision had to be set aside and it had to be declared that the opposition was deemed not to have been filed.

Dismissal of the request to declare the opposition inadmissible

[6] As a consequence of the legal fiction that the opposition filed by the professional representative shall be deemed not to have been filed […] there is no legal basis for declaring that the opposition was inadmissible.

[7] The [patent proprietor] submitted that R 152(6) had to be interpreted narrowly and that the opposition […] had to be dismissed as inadmissible.

It would only be possible to base such an opinion on R 152(6) if the legal consequence ordered therein (that the procedural steps taken had to be deemed not to have been taken) were “pushed aside” (“verdrängt”) by means of legal consequences established by other provisions. In the case of the present opposition, this would mean that the legal fiction pursuant to R 152(2) according to which the opposition was deemed not to have been filed, was ineffective because the opposition had to be rejected as inadmissible under R 77(2). Thus the legal consequence provided in R 77(2) concerning the inadmissibility of the opposition had to completely replace the legal consequence provided in R 152(6). Then R 77 would be a lex specialis with respect to R 152(6).

[8] Similar legal considerations are found in the reasons for decision T 126/04. This decision postulates precedence of the provisions regarding the inadmissibility of an appeal over the legal fiction under A 14(5) EPC 1973 that a translation is deemed not to have been received. As the notice of appeal had only been filed in a privileged language but not in one of the official languages within the applicable time limit, the Board came to the conclusion that, in view of the special nature (Spezialität) of the provisions regarding the admissibility of the appeal, the legal consequence provided in A 14(5) EPC 1973 – according to which the [translation] is deemed not to have been filed – was not applicable.

In its legal assessment this decision expressly deviates from the reasons for decisions T 193/87 and T 323/87 and did not endorse the opinion expressed therein, that when (as a consequence of a legal fiction) there is no opposition, an examination of the admissibility of the opposition under R 56(1) EPC 1973 does not come into question.

[9] The Board of appeal is of the opinion that R 152(6), which is to be applied in the present case, does not establish a legal basis for a narrow interpretation within the meaning of decision T 126/04. The wording of R 152(6) is unambiguous and the use of the expression “without prejudice to” clearly establishes that other provisions may provide further legal consequences but are not intended to replace the legal consequence stipulated in R 152(6).

If this was intended, then the legislator would have had to use a wording such as “subject to” (“vorbehaltlich”).

With the reference to further legal consequences in R 152(6) the legislator wanted to make clear that the legal fiction consisting in that a procedural step was deemed not to have been taken does not exclude further consequences concerning the proceedings under consideration, which is illustrated by means of examples in what follows.

If a professional representative who has no authorisation files a statement of grounds of appeal, then, as soon as the time limit under R 152(6) has expired, the statement is deemed not to have been filed. However, this legal consequence is not intended to exclude that the appeal is dismissed as inadmissible because, according to the legal fiction the statement of grounds of appeal has not been filed.

Also, a request for examination filed pursuant to A 94 by a professional representative who acted without being authorised can have the legal consequence that, in addition to the legal fiction under R 152(6), the application as a whole is deemed to have been withdrawn.

[10] Therefore, the legal fiction pursuant to R 152(6) that the procedural step is deemed not to have been taken, precisely acts as the legal prerequisite that further legal consequences may be declared without any further examination of whether at the moment when the representative acted there was a substantive client-attorney relationship (materiellrechtliches Vertretungsverhältnis). The legislator has deliberately chosen this legal construction – as he has done in other provisions where the legal consequence of deeming acts not to have been taken is stipulated – in order to make it possible to speedily terminate the proceedings for the sake of procedural economy.

The piece of evidence “power of attorney certificate” (“Vollmachtsurkunde”) can only attest of an existing client-attorney relationship, but the fact that it is not filed does not necessarily exclude that there was an effective client-attorney relationship before; it can only serve as an indication that there was no authorisation ab initio. Without the fiction stipulated in R 152(6), the Board would have to clarify of its own motion the procedural fact (Prozesstatsache) that the authorisation for filing an opposition was missing. As a matter of fact, a European representative could have been instructed to take a procedural step although he had not filed (or was unable to file) a power of attorney certificate. Then the procedural step would be legally effective. The fiction of R 152(6) is needed [for the Board] to be able to treat the procedural step as legally ineffective when no power of attorney certificate is filed upon request.

Thus in the present case the opposition filed on October 14, 2008, is legally deemed not to have been filed ab initio, irrespective of whether the representative of the opponent was (at first) authorised, or not.

When, from a legal point of view, there is no opposition, then there is no room for examining the admissibility of the (legally inexistent) opposition under R 77(2).

A direct application of R 77(2) in view of the failure to submit a power of attorney certificate is out of the question because the examination of the power of attorney certificate for the European representative is not part of the examination as to admissibility under R 77. As Article 1(1) of the “Decision of the President of the EPO dated 12 July 2007” does not provide for an examination of the authorisation, the filing of the certificate cannot be a prerequisite for admissibility within the meaning of R 77(2).

Nor can the Board endorse the argumentation of the [patent proprietor] according to which the failure to file a power of attorney certificate has to have the same legal consequence as the failure to correct another deficiency within the meaning of R 77(2) in connection with R 76. As already explained, the fiction that the opposition is deemed not to have been filed allows [the Board] not to examine whether, at the time of filing of the opposition, there actually was no effective authorisation and the latter was withdrawn only at a later stage. The failure to provide the address of the opponent, which the [patent proprietor] cited as a remediable deficiency, does not raise corresponding questions of procedural law. As the procedural situation is not comparable, it is not necessary to “adjust” the legal consequence of a missing authorisation to the legal consequence of a missing address.

Therefore, the request of the [patent proprietor] to declare the opposition inadmissible cannot be granted.

No substantive decision on the dismissal of the opposition

[11] The [patent proprietor] has filed the auxiliary request that, in case that [the Board] refused to declare the opposition inadmissible, the opposition be dismissed as unallowable. As the Board has established that the opposition has to be deemed not to have been filed, the Board is not empowered to take a substantive decision and has to dismiss this request, too.

Request for a referral of the question of 

whether the opposition is admissible to the EBA

[12] According to the explanations given by the [patent proprietor] during the oral proceedings, the referral to the EBA requested by it concerns the legal question of whether the provisions governing the admissibility of an opposition prevail over R 152(6). If this were true, then the present opposition would be inadmissible and not to be treated as if it had not been filed.

[13] From the explanations given above (points [6] to [10]) it follows that the requirements for a referral of a legal question of fundamental importance to the EBA have not been fulfilled (A 112(1)) because the Board of appeal itself can answer this question based on the very wording of R 152(6) and because the literal interpretation of this provision leads to a procedurally convincing and consistent result.

[14] Nor is the result unfair (unbillig) because the decision with respect to the missing power of attorney certificate can be taken at so late a stage of the proceedings.

The fact that the power of attorney certificate was not filed by the [opponent] can have various reasons, which, contrary to the assertions of the [patent proprietor] do not exclusively express an abuse of procedure by the [opponent].

For instance, the [opponent] may, at any stage of the proceedings, withdraw the authorisation it had given to its authorised European representative, without giving reasons.

The procedural facts before the Board do not constitute sufficient proof that the respondent that is formally on record as opponent has caused the opposition or is even aware of its pendency.

As the [patent proprietor] conceded during the oral proceedings, it can happen in big groups having many legally interlaced but independent subsidiaries that an unauthorised person authorised the European representative to file an opposition because it believed that it was entitled to act in this way.

However, the procedural facts before the Board do not allow to exclude that an unauthorised person acted deliberately in the name of the [opponent] and cunningly deceived the European representative with respect to the missing authorisation, either.

In none of these cases the professional duty (standesrechtliche Verpflichtung) of a European representative to assure himself of the identity of his client, which the [patent proprietor] has invoked, can be considered to be an appropriate indication (Beweisindiz) that the opposition proceedings have to be attributed to the person that has been formally declared to be the opponent.

Also, the fact that the European representative has filed documents as evidence for the legal existence of the [opponent] during the opposition proceedings does not allow to convincingly conclude that an effective authorisation had been granted, but that the [opponent] abusively prevented the filing of a power of attorney certificate in order to trigger the fiction that the opposition had not been filed.

[15] It follows from the casuistry presented above that the unfairness of the application of the legal consequence provided in R 152(6) – as alleged by the [patent proprietor] – is exclusively based on the assumption that the [opponent] had acted in abuse of process although this assumption cannot be proven in the present stage of the proceedings. The unclear evidence (Beweislage) in the present individual case cannot serve as the basis for referring the legal question of whether the provision concerning the admissibility of an opposition are to be considered as lex specialis with respect to the legal consequence provided in R 152(6) to the EBA.

[16] The same holds true for the fact that in the present case the fiction that the opposition had not been filed had become effective only in the course of the appeal proceedings, because it would have been the duty of the OD to clarify the evidence concerning the due authorisation of the European representative (this procedural violation is also discussed below, point [19]). This failure of the OD does not justify challenging the validity of R 152(6). The risk of lengthy proceedings and corresponding high procedural costs can also arise in particular cases where there is a dispute with respect to the timely or belated payment of an opposition fee. If it is only the Board of appeal that establishes that the opposition fee has not been validly paid, then also the opposition has to be deemed not to have been filed pursuant to A 99(1).

[17] The Board of appeal does not see any reason to refer the legal question concerning the alleged precedence of the provisions governing the admissibility of the opposition to the EBA under A 112(1) in order to ensure uniform application of the law.

Decision T 126/04 based on A 14(5) EPC 1973 does not concern the interpretation of R 152(6) that is applicable here and cannot be considered to be a divergent decision, be it only for this reason. Moreover, neither the Board nor the [patent proprietor] are aware of former decisions on the present legal question. Decision J 12/88, where it was found that “proceedings before the EPO are null and void if the applicant’s representative acted without any instructions and without filing any valid authorisation” and which, therefore, ordered the reimbursement of all fees, does not go into details of the application of the fiction underlying what was then R 101(4) EPC 1973, but has not decided that the opposition was inadmissible either.

Thus the Board of appeal is of the opinion that none of the requirements for a referral to the EBA laid down in A 112(1) is fulfilled.

Reimbursement of the opposition and appeal fee, respectively

[18] As a further consequence of the legal fiction that the opposition has to be deemed not to have been filed the Board has ordered the reimbursement of the opposition fee. There is no cause in law for the EPO to withhold a fee that has been paid for a legal act that has not been performed. In the absence of any other legal arrangement, this also holds true when the fact that the act has not been performed is established on the basis of a legal fiction.

[19] The Board of appeal has also ordered the reimbursement of the appeal fee for reasons of equity under R 103(1)(a) because the appeal is to be allowed and the decision to be set aside is based on a substantial procedural violation.

The substantial procedural violation of the OD consists in the fact that it has failed to order the filing of an authorisation pursuant to R 151(1) in connection with Article 1(3) of the Decision of the President of the EPO dated 12 July 2007 on the filing of authorisations.

Even though according to this provision, the OD in principle has discretion to order the filing of an authorisation, this discretionary power was reduced to zero in the present case, in the light of the overall circumstances, and the OD would necessarily have had to order the filing of an authorisation. The mere uncertainty of the effectiveness of the filing of the opposition necessarily obliges the OD to remedy this uncertainty of its own motion before it decides on the substance of the case. In the present case, the procedural uncertainty was already established by the substantiated and documented contestation of the authorisation. In particular after having become aware of the decision of the OD in the parallel proceedings concerning application 01 127 947.8, the OD had no discretion not to request an authorisation because it had been stated in this decision that the authorisation of the professional representative of the opponent Henniges Automotive Sealing Systems North America Inc. had not been proven.

The OD has explained in its decision that in the parallel proceedings the opposition had been filed by GDX Automotive North America Inc., Delaware, and that the change of name to Henniges Automotive Sealing Systems North America Inc. had only been declared in the course of the proceedings, and that, therefore, the factual situation was different from the one underlying the present case. However, as rightly pointed out by the [patent proprietor], the change of name in the parallel proceedings has no significance whatsoever for the identification of the doubts concerning the valid authorisation of the professional representative. In the present proceedings the OD had no verifiable facts (Anknüpfungstatsachen) on which to base its trust in the alleged effectiveness of the authorisation of the professional representative. Therefore, the failure to order the filing of an authorisation constituted a substantial procedural violation within the meaning of R 103(2)(a). The Board also considers the further requirement mentioned in this provision, i.e. that the appeal is allowed, to be fulfilled. The impugned decision is to be set aside in its entirety, for the factual reasons on which the appeal was based, and the fact that the Board of appeal has ordered the opposition filed by the respondent to be deemed not to have been filed, which differs from the request of the appellant, is not to be understood as a (partial) dismissal of the appeal within the meaning of R 103(2)(a). It is also equitable to reimburse the appeal fee because the proceedings would not have had to take place if this procedural violation had not occurred.

No need for apportionment of costs

[20] The request of the [patent proprietor] to have the [opponent] bear the costs which [the patent proprietor] had incurred has to be dismissed, be it only because, as found in the present decision it cannot be established at all that the respondent has instructed “its” European representative to file an opposition. As there is no proof that the respondent has a causal responsibility for the filing of the opposition, it cannot be ordered to bear costs.

Order

For these reasons it is decided that:

1. The request of the appellant that the question of the admissibility of the opposition be referred to the EBA is dismissed.

2. The impugned decision is set aside.

3. The opposition is deemed not to have been filed.

4. The opposition and appeal fees are to be reimbursed.

5. The request of the appellant for apportionment of costs to the detriment of the respondent is dismissed.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.