Monday, 15 April 2013

T 1032/10 – With And Without Paper

This decision is a good and handy reminder of the rules governing the transfer of the opponent status by mergers and universal succession, as established and confirmed by the case law.

The appeal was filed against the rejection of an opposition filed by “Claudius Peters Technologies GmbH” (CPT).

The patent proprietor objected to the admissibility of the appeal.

It pointed out that a demerger agreement (Abspaltungsvertrag) between the companies “Claudius Peters Group GmbH” (CPG) and “Claudius Peters Project GmbH” (CPP) the relevant assets had been transferred from CPT to CPP before the date of filing of the appeal (May 14, 2010). Moreover, there was a settlement agreement that hindered the appellant from pursuing the opposition.

The opponent argued that the CPT had existed until March 29, 2012, the day of its merger with “Claudius Peters Aerospace GmbH” (CPA), which had become its legal successor. After the filing of the appeal, the opponent status was transferred from CPT to CPA and then to “Piller Holding GmbH” (PH).

The Board found the appeal to be admissible.

*** Translation of the German original* ***

[1.2.1] According to A 107 any party to proceedings adversely affected by a decision may appeal.

[1.2.1] All persons who have been explicitly referred to as parties to the proceedings for the relevant part of the proceedings, as well as all persons the legal interests of which are affected by the decision qualify as parties to the first instance proceedings (Ausgangsverfahren) in the framework of which the impugned decision has been taken (T 811/90; J 28/94; J 33/95 [4]). In practice, the parties to the proceedings are at first the parties in regard of which the deciding organ intended to take the decision, i.e. the parties that are mentioned in the caption of the decision (see Günzel/Beckedorf in: Benkard, EPÜ, 2nd edition, A 107, marginal number 4 et seq.).

What is decisive for the procedural position as party within the meaning of A 107, first sentence, is the legal situation at the moment at which the impugned decision was taken (T 631/94).

[1.2.3] CPT, which had filed an opposition against the patent-in-suit on January 18, 2008, and which was mentioned as party to the proceedings in the caption of the impugned decision of the Opposition Division (OD) dated March 5, 2010, was a party to the opposition proceedings preceding the present appeal proceedings.

[1.2.4] Insofar as the [patent proprietor] points out that the appellant had lost its entitlement to appeal as a consequence of the demerger agreement (document Z1) after the impugned decision had been issued, but shortly before the appeal was filed, the admissibility objection of the [patent proprietor] based on this argument cannot succeed.

Just as a change of party on behalf of the applicant or patent proprietor pursuant to R 22 and R 85 is a direct consequence of a transfer (Umschreibung) of the patent in the Patent Register, an (original) opponent who was adversely affected by the decision of the administrative department of the EPO (here: the OD) can file an appeal and act in the appeal proceedings, irrespective of the substantive situation, as long as the transfer of the opponent status has not been brought to bear and established in the proceedings (see Günzel/Beckedorf, op.cit., A 107, marginal number 29).

[1.2.5] The decisions G 4/88 and G 2/04 have made decisive statements on the conditions for a change of opponent or appellant in analogy to R 22 and R 85.

Accordingly, from a legal point of view, the status as an opponent in pending opposition or appeal proceedings cannot be freely transferred. The transfer is only admissible if it occurs at the same time as the transfer of the business or the part of the company in the interests of which the opposition was filed (cf. T 724/05 [1 et seq.]; T 1206/06 [2]; T 1877/08 [1.2 et seq.]). A change of party is only effective when the legal succession has been requested and established before the EPO via the submission of official documents. As long as the transfer has not been established, the former party remains entitled and bound, because the change of the party status only occurs when it is asserted and established (T 870/92 [3.1]; T 1137/97 [4]; T 413/02 [3]; T 593/04 [1.1]; T 229/03 [3]; T 163/05 [1.5]; T 85/03 [1]; T 6/05 [1.6.1-4]; T 1421/05 [3.3]). A mere statement regarding the transfer of the opponent status is not sufficient (T 670/95 [2]; T 229/03 [5]).

Irrespective of the fact that the parties do not agree on what belongs to the “operative business” (operativer Geschäftsbetrieb) which, according to document Z1, has been demerged from CPT and transferred to CPP and in particular whether this was the business in the interests of which the opposition was filed, and that the documents on file in the appeal proceedings do not allow to draw an unambiguous conclusion in this respect, what is decisive in the present situation is that there was no request for a change of party in favour of CPP on behalf of the appellant. There is no need for an approval of the adverse party (here the [patent proprietor]) to the change of party, and a missing (mandatory) request of the appellant cannot be replaced by a corresponding submission on behalf of the respondent.

[1.2.6] Thus CPT was entitled to file an appeal in its quality as opponent and party to the opposition proceedings within the meaning of A 107.

Legal succession

[2] In contrast to the legal transfer of an opposition together with a business, or part of it, respectively, an opposition can be transferred by universal succession, e.g. as a consequence of a merger of the opponent with another company. In such a case the opposition is transferred automatically, irrespective of the date on which the required evidence is filed (T 6/05 [1.7]; T 425/05; in detail: T 1421/05 [1 et seq. and headnotes 1 to 4]).

When a transfer of the opposition due to an (at first merely) alleged legal transfer together with the business in the framework of which the opposition had been filed, there is the possibility that the opposition remains with the original opponent or is transferred to the transferee, of which both the Board before which the appeal is pending and the other parties to the proceedings can only be certain after the corresponding evidence has been filed. In the case of a legal universal succession, however, there can only be one single entitled person (Berechtigter) because the transferee automatically and exclusively takes the legal position of the former opponent. Thus there cannot be any legal uncertainty regarding the identity of the person that holds the legal position of the opponent. This is what justifies an exception from the otherwise strict requirements for the legal transfer of an opposition and the application, mutatis mutandis, of the principles that govern the transfer of a patent to the transfer of an opposition by legal universal succession (see : Günzel/Beckedorf, op.cit., A 107, marginal number 32).

[2.2] In the present case the appellant has established by documents Z2 and Z3 that the original opponent and appellant CPT has merged with CPA as a consequence of the merger agreement dated February 29, 2012, as well as the consent of the shareholders’ meeting held on the same day and the shareholders’ meeting of the transferee on March 1, 2012, and that [CPT] has ceased to exist as soon as the merger had become effective, i.e. on March 29, 2012.

Thus CPA has taken over all legal positions of CPT in its quality as the universal legal successor of the latter.

Document Z4 further proves that CPA, as a consequence of the decision on its shareholders’ meeting of May 21, 2012, has become PH.

[2.3] In view of this unambiguous legal succession from the original opponent CPT to CPA and the change of the latter to PH, the Board cannot see any indication for an abuse of proceedings within the meaning of decision G 3/97 on behalf of the appellant, as alleged by the [patent proprietor].

The same holds true for the […] settlement agreement into which the [patent proprietor] and CPP have entered (document Z5). Even if CPG was controlling CPT between November 13, 2008 and January 3, 2011 […] (document Z5), the settlement agreement does not bind CPT and its legal successors – at least as far as the present appeal proceedings are concerned.

[3] As a consequence, CPT was entitled to file the appeal under A 107, which is admissible.

The transfer of the opponent/appellant status to CPA, which has later become PH, is established ; the appeal proceedings are pursued with PH.

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

The file wrapper can be found here.


Anonymous said...

Based on the summary ( I have not read the decision itself), I find a crucial point missing: in the EPC there is no requirement that an opponent should have a business interest in opposing. Anybody can file an opposition. So in my eyes, the basis for the proprietor's attack, the transfer of the assets to which the opposition relates so that there would be no interest in continuing opposition/appeal proceedings, is completely at fault. The only question is, if the appealing party was damaged by the first instance decision, not if it (still) has business interests.

george said...

I would think that the question of interests would only be relevant if there was a demerger splitting the assets of the opponent between two or more companies, if the transfer was to be entered into the Register before the filing of the appeal (say, during the proceedings before the OD). For the transfer to be effective, the would-be-appellant would have to provide evidence that it had been allocated the assets in the interests of which the opposition had been filed. (There may be some uncertainty, but as you know, G 2/04 has provided a solution.) In the present case this was not relevant because the transfer simply had not been entered into the Register.

Myshkin said...

A business interest is not needed to file an opposition, but whether opposition has been filed in the interest of (part of) the opponent's business can be important for the answer to the question whether the legal person that filed the opposition is still opponent.

This is because G 4/88 decided that in case the opposition was filed in the interest of (part of) a business, opposition status follows the business assets in the interests of which the opposition was filed. When those assets are transferred, opposition status goes with them, whether the (former) opponent wants that or not.

At least this is how I understand G 4/88 in the light of G 2/04 which states that opposition status is not freely transferrable. But now that I study the above decision better, it seems that the Board sees it differently and relies on the transfer of the opponent status (not) being "brought to bear and established in the proceedings": if the opponent transfers the relevant assets but never asks the EPO to change the identity of the opponent, he remains the opponent.

Interesting and I don't know if I agree. I would say transfer of opponent status in the situation of G 4/88 occurs automatically by law, in which case the proprietor might have been right (depending on the exact circumstances of the case which would therefore have to be examined).

Now I'll have to study T 724/05, T 1206/06 and T 1877/08 to see if they are all wrong. ;-)