Wednesday, 2 January 2013

T 1911/09 – A Private Affair?

In this case all the parties filed appeals after the Opposition Division had maintained the opposed patent in amended form.

In what follows the Board deals with the admissibility of the appeal filed by opponent 2:

Transfer of the opponent status

[2.1.1] During the opposition proceedings [opponent 2] filed document D15, a merger agreement between Pelikan Hardcopy (International) AG and Pelikan Hardcopy Production AG dated 11 June 2008 explicitly stating that the merger was effected by universal succession as of 1 January 2008. Consequently, on that date all the rights and obligations of Pelikan Hardcopy (International) AG, necessarily including its procedural status as opponent against the patent in suit, were transferred to Pelikan Hardcopy Production AG.

[The patent proprietor’s] main argument hinges on an earlier transfer of [opponent 2’s] business assets related to the subject-matter of the opposed patent from Pelikan Hardcopy (International) AG to Pelikan Holding AG on 1 July 2007. The wording of decision G 4/88 [5-6], made it clear that an opposition that has been instituted in the interest of an opponent’s business assets constituted an inseparable part of those assets in case of their transfer. In the present case, Pelikan Hardcopy (International) AG thus had already lost the status of opponent before the merger agreement with Pelikan Hardcopy Production AG became effective. Consequently, in the opinion of [the patent proprietor], at the date of the impugned decision neither Pelikan Hardcopy (International) AG, nor its universal successor Pelikan Hardcopy Production AG were parties to the proceedings and the appeal of [opponent 2] had to be rejected as inadmissible.

[2.1.2] The board does not share [the patent proprietor’s] conclusions from decision G 4/88. There, in point [6] of the Reasons, the Enlarged Board (EBA) discusses the situation in which the opposition had been instituted in the interest of the opponent’s business: “... the opposition constitutes an inseparable part of those assets. Therefore, insofar as those assets are transferable or assignable under the applicable national laws, the opposition which is part of them must also be regarded as transferable or assignable in accordance with the principle that an accessory thing when annexed to a principal thing becomes part of the principal thing” (emphasis added by the board).

The cited passage thus makes it clear that decision G 4/88, although referring to the business assets and the opposition as being inseparable, does not provide any basis for a transfer of the opponent status as being an obligation or an inevitable consequence of a transfer of business assets related to the opposition. To the contrary, the wording chosen (“transferable or assignable”) stresses that the decision rather seeks to define conditions under which a transfer of the opposition is possible. Therefore, decision G 4/88 does not foresee an “automatic” transfer of the opponent status in cases of a contractually agreed transfer of business assets.

In order to ensure procedural certainty the case law (T 1137/97 [4], T 1421/05 [3.3]) has established that a contractually agreed transfer of an opponent status has to be explicitly requested and supported by sufficient evidence. In the present case, neither the transferor Pelikan Hardcopy (International) AG nor the transferee Pelikan Holding AG ever requested a transfer of the opposition to Pelikan Holding AG. Thus, Pelikan Holding AG never had the status of an opponent in the opposition proceedings against the patent in suit. For the sake of completeness it is added that a transfer of the opponent status as part of a transfer of business assets is generally not at the disposition of the patent proprietor. Hence, [the patent proprietor’s] request for transfer of the opponent status has no legal basis and can therefore not be considered.

The board concludes that Pelikan Hardcopy Production AG, as universal successor of Pelikan Hardcopy (International) AG, is a party to the opposition proceedings. Since it is adversely affected by the impugned decision it is entitled to appeal.

[Opponent 2’s] name and address are missing in the notice of appeal

[2.2.1] [The patent proprietor] submits that the notice of appeal by [opponent 2] contained a name and an address as required by R 99(1)(a). However, the person named was not entitled to appeal. A correction of the appellant was not possible, since the “Travaux Préparatoires” for the EPC envisaged that the possibilities of correction regarding the formal requirements of admissibility should generally be the same in appeal and opposition proceedings. Moreover, the questions referred to the EBA in pending referral G 1/12 were directed to that subject so that the present appeal proceedings should be stayed until a decision on the referral was issued.

[2.2.2] The board does not accept these arguments. The notice of appeal by [opponent 2] bears the name of a professional representative, clearly indicated along with his address and function. The board notes that this representative already acted as professional representative for Pelikan Hardcopy Production AG in the opposition proceedings leading to the present appeal case. Under these circumstances it would not be reasonable to conclude that the appeal was filed by this professional representative privatim.

Although it readily permits the identification of the appellant by recourse to the opposition file or via the professional representative, the notice of appeal is incomplete in that it does not specify the name and address of the appellant as required by R 99(1)(a). The name and address of Pelikan Hardcopy Production AG as appellant were submitted in the statement setting out the grounds of appeal based on the remedy provided in R 101(2).

Hence, the board concludes that the requirements of R 99(1)(a) are met and thereby follows the jurisprudence established in decisions T 920/97 [1], T 475/07 [1.1] and T 1519/08 [2.1]).

[2.2.3] Moreover, the board does not agree that the appeal proceedings should be stayed in view of decision T 445/08, pending as referral G 1/12. In that decision, the questions referred to the EBA as well as the discussion of the case law of the boards of appeal point to a constellation in which “a notice of appeal, in compliance with R 99(1)(a), contains the name and the address of the appellant [...] and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal” and there being “a request for substituting this other legal or natural person” (see question (1), emphasis added). By contrast, in the present case, although it also relates to R 101(2), the notice of appeal is incomplete in that it does not contain the name and address of the (identifiable) appellant. Consequently, the present board does not have to decide on a request for substitution of the appellant as was the case in referring decision T 445/08. Taking these factual differences into account, the board does not consider a stay of proceedings until the EBA has decided on the possibilities of and legal basis for a substitution of an appellant to be expedient.

Request defining the subject of the appeal

[2.3] R 99(1)(c) requires the notice of appeal to contain a request defining the subject of the appeal, otherwise the appeal is to be rejected as inadmissible.

In the present case, the notice of appeal does not contain such an explicitly formulated request. Since the impugned decision concerns the maintenance of the contested patent based on the documents of the first auxiliary request, which contains one independent and ten dependent claims, the appeal by [opponent 2] can only be aimed at the impugned decision being set aside and the contested patent being fully revoked.

This interpretation is consistent with [opponent 2’s] requests set out in the statement of grounds of appeal […].

The subject of the appeal is thus implicitly but unambiguously determined. Hence, the provisions of R 99(1)(c) are met.

[2.4] The board concludes that the appeal by [opponent 2] is admissible since it meets all requirements set out in A 106, A 107 EPC 1973 and A 108, as well as in R 97 and R 99.

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