Monday, 31 December 2012

T 2334/08 – The End Is Near

As the year comes to an end, I found the present decision quite appropriate.

The patent proprietor filed an appeal (in December 2008) after the Opposition Division revoked its patent.

The Board summoned the parties to oral proceedings (OPs) to be held on August 9, 2012.

With a letter dated June 1, 2012, the representative on record for the patent proprietor informed the board to the effect that there was no longer any validated patent in force based on the patent in suit and that the patent proprietor had gone bankrupt and no longer existed. The representative further stated that he would not attend the OPs.

The board issued a further communication to the parties, noting that no evidence had been filed in respect of the alleged bankruptcy of the patent proprietor. However, publicly available commercial register information retrieved from the Internet site appeared to confirm the information provided by the appellant’s representative and a copy of this information was annexed to the communication.

It was further noted that as no transfer had been registered under R 22 (applicable during opposition proceedings according to R 85), Nextlimit AB or its estate was still considered to be the patent proprietor and appellant in the present appeal proceedings. In the absence of any information or evidence relating to a succession, the board assumed that the appellant had ceased to exist as a commercial entity and was not in a position to act in the proceedings any more.

The OPs were nevertheless maintained. Neither the appellant not the respondent were represented.

How, and on which legal basis did the Board act in this situation?

[1] The appeal as filed on 17 December 2008 fulfilled the requirements of A 106 to A 108 […].

[2] The submissions made by [the patent proprietor’s] representative with the letter of 1 June 2012 […] indicated that the appellant had ceased to exist as a legal entity.

[3] According to decision T 353/95 [2], only an existing natural or legal person can be a party to opposition proceedings (A 99(1) EPC; Lunzer/Singer, The EPC, London 1995, 99.02) and this applies also at the appeal stage since A 107, first sentence, makes no different provision in this respect (R 100(1)).

[4] If the [patent proprietor] still retained the capacity to act in the present appeal proceedings, the onus was on the [patent proprietor] or its representative to respond to the communication of 20 June 2012 by informing the board accordingly.

[5] Likewise, if there had been a transfer in the ownership of the patent in suit, the EPO should have been informed to this effect (cf. R 22 which is applicable during opposition proceedings according to R 85).

[6] In the absence of any response from the appellant’s representative to its communication of 20 June 2012, the board concludes that the original appellant has lost its capacity to act in proceedings before the EPO. As no transfer has been registered under R 22, the EPO has no record of a valid successor in title who would be entitled to continue the present proceedings.

[7] Consequently the appeal has lapsed and the proceedings are at an end.


For these reasons it is decided that:

The appeal proceedings are terminated.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.


Roufousse T. Fairfly said...

I don't really find this decision satisfying.

Rule 84(1) implies that appeal proceedings can be terminated if all validated patents have lapsed. The board did not consider this question, but chose instead to examine on its own motion whether the owner still had an earthly existence or whether a transfer had occured.

This line of inquiry runs in my opinion against Art. 60(3). The article refers to the "applicant" rather than the "proprietor", but I would assume that its principle is also valid for opposition proceedings, even though there is no explicit disposition therefor comparable to Rule 85.

Investigating the mere continued existence of the proprietor, or requesting him to file a formal transfer of rights amounts in my opinion to an EPO instance questioning the legal fiction of entitlement defined by Art. 60(3). Who says that a ghost can't own patents? Or that the tangible and intangible assets are in some sort of inescapable limbo? I don't see on what authority the EPO could impose to an applicant the filing of documents concerning the situation of its IP assets or of a request to transfer rights. If the company did cease to exist, then its (former) representative was not really in a position to act.

Furthermore, Rule 142(1) allows the interruption of proceedings in case of incapacity, but not their termination.

The decision mentions T353/95, which is only one sample of a large body of jurisprudence addressing the status of the opponent, and not of the proprietor.

This case reminds me of own of my own when I was a novice examiner. I was working on an application of a company A residing in country AA which seemed to have ceased operations. I looked into the case, and found out that A had been purchased a few years before lock, stock, and barrel by company B of country BB. Within a few months, B was in turn acquired by company C of country CC.

The corporation registries of AA and BB showed that both A and B had been dissolved after their respective takeovers.

For some reason the representative failed to register the transfer of the pending application when it occured. He would only move in other cases at the point where a communication according to Rule 51(4) EPC 1973 announced the proposed grant of a patent. He would then file a scrap of paper, a sort of statement which merely stated that the IP of A was now in the hands of C, skipping all the gory details. The paper did not have any signatures belonging to A, B or C, but only that of a US notary public. It was accepted without questioning by the responsible EPO department.

I was somewhat bothered that I was dealing with a ghost, but couldn't do much about it. I eventually refused the application, and the decision was appealed. I became really annoyed when a "divisional" was filed on the eve of the OP before DG3, which basically re-filed a lot of the initial claims that had been refused, and introduced many new, deeply deficient ones. The strange thing was that the "divisional" was filed by A, a company that no longer existed. I understand that filing the divisional in the name of C would have caused irremediable problems, as the parent was still in A's name.

After much head scratching and consultations, I came to the frustrating conclusion that there was really nothing that either the FO or I could do, and the best rationale for doing nothing was Art. 60(3).

Myshkin or Manolis, any ideas how you would have handled this?

MaxDrei said...

Fly, How about the not uncommon situation where patentee disapproves of the text proposed for grant and explicitly announces that it makes no other requests. At this point, the OD or TBA has nothing left to examine. One would think that would be a good enough excuse to terminate the proceedings. But no. The EPO keeps going, all the way through to a Decision to revoke the patent.
In these days of burgeoning DG3 backlog, any excuse to close the file and terminate the proceedings forthwith ought to be taken, no?

And while I am on the subject, here's another thing. What gives the EPO in these circumstances the right actively to revoke the issued patent, at a time when they still have no idea whether or not it fails to meet one or more provisions of the EPC and its Implementing Regulations? Terminating the proceedings is the proper way to go, do you not agree?

Myshkin said...

I don't understand MaxDrei's 'uncommon situation'. If the patentee no longer approves the text of the patent, that is no reason to terminate the opposition proceedings without any decision being taken. If no decision is taken, then the patent already granted can only remain valid.

I'm not sure whether the 'uncommon situation' includes opponents that are still interested in revocation of the patent. If that is the case, then clearly the proceedings cannot be simply terminated without decision.

If there are no such opponents (anymore), then the EPO is still free to continue examination. If the proprietor states that he no longer agrees with the text, which as we all know implies that the proprietor wants the patent to be revoked, then there is no good reason not to revoke, if only for the good of the public. The legal basis for the revocation is Art. 113(2) EPC.

MaxDrei said...

Myshkin thanks but can you enlarge on your:

"...which as we all know implies that the proprietor wants the patent to be revoked"

because I for one don't know that. In the situation I contemplate, revocation is the last thing the patent owner actually seeks.

Where do you get your "implies" from, please. The situation I refer to is not "uncommon". Rather, I was saying that it is "not uncommon".

Myshkin said...

MaxDrei, see T 73/84, OJ EPO 1985, 241 and see the long list of "Anführungen in anderen Entscheidungen".

"Erklärt der Inhaber eines europäischen Patents im Einspruchs- oder Beschwerdeverfahren, dass er der Aufrechterhaltung des Patents in der erteilten Fassung nicht zustimme und keine geänderte Fassung vorlegen werde, so ist das Patent zu widerrufen."

See also GL D-VIII, 1.2.5.

Maybe you are referring to some other situation, but I read "where patentee disapproves of the text proposed for grant and explicitly announces that it makes no other requests" and this is exactly T 73/84. An attorney making this statement on behalf of the applicant while not being aware of the consequences has no excuse. And the case law aside, why would an attorney ever make this statement if not to get the patent revoked? It can't possibly help the applicant who wants his patent to be maintained as granted, right?

Sorry, I meant to write 'not uncommon situation' but somehow messed up.

Myshkin said...

I guess it is still possible to quibble about the precise wording ("disapproves of the text of the patent as granted" versus "does not agree with the maintenance of the patent as granted"), so just for completeness T 185/94:
"III. In a letter dated 18 December 1995 the Appellant (Proprietor of the patent) declared disagreement with the text of the European patent.


2. The Appellant no longer approves of the text in which the patent was granted and also refrains from submitting an amended text (cf. decision T 186/84; OJ EPO 1986, 79).

3. Since it follows from the provision according to Article 113(2) EPC that a European patent cannot be maintained against the Proprietor's will, the present European patent has, therefore, to be revoked (cf. T 73/84; OJ EPO 1985, 241)."

MaxDrei said...

Thank you Myshkin but I regret those answers still leave me unsatisfied. I still do not see how a withdrawal of approval of the text proposed for grant leaves the EPO able to infer a demand from the owner that the patent be positively revoked.

Suppose in the meantime the patent has lapsed for failure to pay annuities, in each and every validation State. Why then must the EPO go to the further step of positively revoking the opposed patent. And under what authority does it perform that step of active revocation?

Myshkin said...

I regret that you do not find my answer regarding the interpretation of "the patentee no longer approves of the text" satisfying, but I can not add more than what the Boards already extensively wrote on this matter in the relevant decisions, in which they also cite the relevant provision of the EPC: Art. 113(2) EPC.

However, maybe you could explain why a patentee desiring the maintenance of the patent as granted would state that he does not approve of the text as granted? Would that just be a factual remark that should not have any legal consequences, much like "the weather is nice today"?

Btw, I am taking the liberty of reading "the text proposed for grant" as "the text of the patent as granted", since we are talking about an opposition procedure where there is no "text proposed for grant", but there is a "text of the patent as granted". If a patentee during opposition proceedings really refers to the "text of the patent proposed for grant" (which I believe is NOT a common situation, since it makes little sense), then there is something to say for the OD or the TBA verifying the true intention of the patentee.

If the patent has lapsed in all designated states, then Rule 84(1) prescribes the correct steps to take. This is orthogonal to the issue of a patentee declaring that he no longer approves of the text.

Whether you agree or not with the long standing case law of the EPO and GL D-VIII, 1.2.5, when representing an applicant before the EPO just make sure you know what you are doing when stating "the patentee no longer approves of the text". The law is completely clear on this point, and fighting it simply isn't worth it. Just don't utter that sentence if the patentee desires maintenance...

MaxDrei said...

Yes, indeed, I do mean the text of the B1 publication. But it was the text proposed for grant that the patent owner approved.

Behind my questions lies a real case. I would like to write more, but must refrain. I'm grateful though, for the advice offered.

Myshkin said...

Is the real case any different from the situations covered by GL D-VIII, 1.2.5?

If the patent owner never wanted the patent to be revoked, but his attorney stated before the EPO that the patent owner disagreed with the text of the patent as granted, then the EPO was correct in revoking the patent and the attorney has a very serious problem.

MaxDrei said...

Again. Myshkin, thanks. But consider Art 113 EPC. If I, the patent owner, no longer approve the B1 text, and offer no other, what Art 113 text basis remains, on which the EPO can base its Decision in the opposition proceedings? No text, no Decision, I would say.

Suppose two things. First, suppose that I am in the 123(2)/(3) fatal trap and there's no way out.

Second, suppose that I have valuable patents in the family in other jurisdictions, untroubled by any such EPC-specific "fatal trap". The reason I withdraw my fatally defective text is because I (as owner of a family of patents that includes the opposed EPO patent family member) do not want the EPO Register announcing to the world, for the remainder of the lifetime of the patent family, that the status of the European patent family member is "revoked".

EPO decisions command deep respect, all over the world. Announcing on the EPO Register that the opposed patent was "revoked", is misleading, unnecessary, uncalled for and, I think, unfair to the patent owner because it might prejudice people (prospective investors, for example) against the validity of all the other members of the patent family.

The EPO is the decider in opposition proceedings, but it is no longer in a position to decide on the merits of the opposition. The fair thing to do, and the thing that Art 113 EPC points to, is instead just to close the file. Then, the Register no longer announces "patent revoked" and no longer prejudices its readers against the validity of other patent family members.

Myshkin said...

No text, no decision, that would be an easy way out to stop any opposition from succeeding...

Are you REALLY serious in thinking it should be possible to work around a fatal Art. 123(2)/(3) by withdrawing the text and not submitting any other text?

Sorry, but this is plainly ridiculous.

A patent can only be granted or maintained if there is a text submitted or approved by the applicant that the EPO considers allowable. If there are multiple requests by the applicant/patentee, none of them allowable, refusal or revocation must follow. Similarly, if there is no request by the applicant/patentee, refusal or revocation must follow.

If the granted patent is fatally flawed, then evidently an opponent should succeed in getting the patent revoked. Uncalled for? Unfair? I have no nice words for your position. An attorney coming up with your trick seriously thinking it stands a chance gets what he deserves for not knowing the EPC.

MaxDrei said...

Myshkin, again thanks. I can see you are upset, even outraged, but it would have been nice to have seen more development of your "similarly" underpinned with real provisions on the EPC.

Of course you need a text before you can issue a Decision to maintain. I fully agree. I'm just running the argument that, having regard to Art 113 EPC, "similarly" you need a text (expressed in a Request) before you can decide to refuse that Request and, in consequence, revoke the patent.

Suppose the withdrawal of approval is filed within the initial 4 month term for response to the Notice of Opposition. You are First Member. How do you know whether the granted patent is invalid? What text, if any, are you going to assess for validity?

If you are going to revoke for the reason that there is no approved text, where in the EPC do you find your authority to do that? If there is such authority, why was it not used in the present case, that prompted this thread?

Myshkin said...

I'm not outraged, only shocked that a European patent attorney would think an opposition procedure could be sabotaged by the patentee at will.

I have already explained the legal side of this issue. If the explanation is not making sense to you, then so be it. If you want to believe that I am in a conspiracy together with all of DG3, fine with me.

MaxDrei said...

So there you have it folks. Myshkin has said all he wants to say, and is bowing out. Anybody else have any thoughts, constructive or otherwise?

Roufousse T. Fairfly said...


Second, suppose that I have valuable patents in the family in other jurisdictions, untroubled by any such EPC-specific "fatal trap". The reason I withdraw my fatally defective text is because I (as owner of a family of patents that includes the opposed EPO patent family member) do not want the EPO Register announcing to the world, for the remainder of the lifetime of the patent family, that the status of the European patent family member is "revoked".

I suspected something of the sort when I last checked and saw the direction this discussion was heading into.

Just between you and me, I wouldn't bet a farthing on the success of your cunning plan (tm) for averting the infamy of the word "revoked".

If you ever manage to an appeal to be terminated, this would only make the decision of the first instance final. In the case discussed by Oliver the patent had been revoked by the OD.

You could try to zap the bundle of national patents, and eventually hope the opponent to demand termination as per Rule 84(1), but this would require his cooperation if the rule were properly applied. The first instance decision would still become final.

The problem is that revocation, contrary to a lapse, means that the patent never had any legal effect, making this outcome preferable to the opponent.

Withdrawing you acceptance of the text as granted is tantamount to a request for revocation, no matter how you put it.

You could at best try to delay the inevitable by unsägliche dilatory tactics. Or vest the patent into Strohmann GmbH, who would then proceed to put it out of its misery. By jettisoning the diseased limb, the client would already begin to distance itself from the from the mess, albeit not very plausibly, but maybe just enough to avoid accusations of inequitable conduct in the country with the most envied patent system of the world (Kappos).

Roufousse T. Fairfly said...

Withdrawing you acceptance of the text as granted is tantamount to a request for revocation, no matter how you put it.

Forgot to add: At best you will prevent a decision to be pronounced on substantive grounds, which is still desirable.

MaxDrei said...

Fly thanks. Always good for a thoughtful and learned comment, including picking up on the by now notorious "envy of the world" assertion.

Some of your thoughts had already occurred to me. Nevertheless, the thread above has been very helpful. I will now think some more about the issues.

Anonymous said...

I fully understand that it is unpleasant to have an official stamp of “revoked” on your file when in fact you are relinquishing your patent right. You do not want an examination on the new merits of the case because it would be prejudicial, or in this case more correctly: it might inspire somebody to a defence that had been proven effective. For the very same reason court decisions that go against the state in a lower court are sometimes not appealed by the state for risk of having a prejudicial decision established in a higher court that would increase the population’s human rights (we just had such a case in Denmark). And for the same reason, arbitration is used in many commercial contracts, to the detriment of the general international development of contract law. However, in the examining phase of a European application it is quite possible to make an appeal against a decision to refuse, and then withdraw all requests when the fight becomes impossible, in order that no record is made of the actual examination on the merits of the claims on appeal. No requests, no decision. The application remains refused but only on the merits of the original examination. And this is where a divisional was frequently very quickly filed, under the old rules.

A final memento: the only official and approved text is the Druckexemplar. The B1 document is not a legal substitute, and the XML version on the EPO Document Server is only reproducing the B1 document, Druckfehler and all. Validations based on the B1 document are not necessarily sufficient.

Kind regards,

George Brock-Nannestad

MaxDrei said...

George thanks. As you say, the game is to prevent the EPO Register announcing "Revoked" to all the world. Myshkin has the best reason why "Revoked" is appropriate: when all of Patentee's admitted Requests have been refused, the natural consequence is a Decision to revoke. He thinks the outcome should be the same, when the Patentee withdraws approval for the text agreed for grant. So would anybody. But does the text of the EPC allow the EPO to do that? The point has not yet been decided by the EBA has it?

Roufousse T. Fairfly said...


It's called "revocation" regardless of whether it is the result of a request by the patentee or a decision of an EPO instance.

Article 68 defines the effect of the revocation: it is as if the patent had never existed. There is no semantic differentiation depending on the nature of the revocation.

Furthermore, EPC 2000 introduced
Article 105a, which defines a proprietor initiated request for central revocation. "Revocation", and not "abandonment" or "withdrawal".

Regarding George's comment, I would really liked to see certain of my decisions appealed. Especially those where I spent much energy in identifying the philosophical nature of the deficiencies, and for which I felt I may have been breaking new ground, or where I had been exhaustive. Perhaps this was precisely why they weren't appealed... Instead, it was more the routine bread and butter stuff, of which I wasn't the proudest, that went to the boards. But those decisions stood up well to the scrutiny, and none of these cases were ever reported by Oliver. (The odds are against it in any case. There are 250+ K's law reports a year, against 5000+ examiners).

Myshkin said...

The point has not yet been decided by the EBA has it?

Of course one can defend the most ridiculous propositions, even those that have been refuted in a uniform manner by dozens of TBA decisions, by the argument that the EBA has not yet decided them...

Do you know of any legal system where a party in inter partes proceedings can unilaterally prevent the court from taking a decision and force the proceedings to be terminated by stating "I don't want a decision to be taken" or any other sentence?

What are the chances that the EBA would conclude that the EPC is such an unworkable legal system?

MaxDrei said...

Thanks again Myshkin. As I said above, my interest stems from a real case, which is still running. So I'm constrained from giving you the full facts, which I know and you don't.

I must say that your postings do give me hope though, of making progress. Shakespeare nailed it with his words "Methinks the lady doth protest too much".

So, you never know, one day my case might be providing good discussion material for this blog. And meanwhile, for my client, the way things stand at the EPO it is a case of: so far so good.