Thursday, 4 July 2013

T 22/09 – Resurrection

We have a new referral to the Enlarged Board of appeal (EBA), pending under the reference G 1/13.

In this case an opposition had been filed on November 2, 2004, in the name of Formalities Bureau Limited, a company governed by the law of the United Kingdom. The opponent was represented by Peter Charles Bawden of Bawden & Associates.

The Opposition Division (OD) maintained the opposed patent in amended form.

On December 29, 2008, Mr Bawden, acting on behalf of the opponent, filed an appeal.

On August 27, 2012 the patent proprietor filed written observations in response to submissions of the opponent. It raised an objection of inadmissibility against the appeal on the ground that there was a discrepancy in the manner in which the appellant had been identified in the notice of appeal and in the statement of grounds of appeal. The [patent proprietor] pointed out that the notice of appeal had been filed in the name of the original opponent, namely:

Formalities Bureau Ltd.
4 The Gate House
2 High Street Harpenden
Herts AL5 2TH

The statement of grounds of appeal, however, had been filed by a different entity, namely:

Formalities Bureau
Bawden & Associates
4 The Gate House
2 High Street Harpenden
Hertfordshire AL5 2TH
United Kingdom.

The patent proprietor argued that in accordance with the case law of the Boards of Appeal (BoA) (e.g. T 298/97) both the notice of appeal and the statement of grounds of appeal had to be filed by the same party, namely the party adversely affected by the decision appealed against, in order for the appeal to be admissible.

In written observations filed on September 4, 2012, the patent proprietor raised a further objection of inadmissibility based on its discovery, made the day before that the company in whose name the opposition had been filed (Formalities Bureau Limited) had ceased to exist in the year 2005, i.e. three years before the OD issued the decision under appeal. As evidence, an internet printout from Companies House (the UK register of companies) was produced, showing that Formalities Bureau Limited had been dissolved on October 4, 2005.

Mr Bawden submitted written observations on behalf of the appellant on 8 October 2012. He provided details of an application to the Chancery Division of the High Court of Justice to restore Formalities Bureau Limited to the register of companies under section 1029 of the UK Companies Act 2006. He also supplied copies of the relevant UK legislation and a legal opinion by a UK solicitor concerning the procedure for restoring a dissolved company to the register and the prospects of success for the application to restore Formalities Bureau Limited to the register.

On December 7, 2012, Mr Bawden informed the BoA that the Court had approved the application to restore Formalities Bureau Limited to the register of companies. On December 17, 2012, he provided the BoA with a copy of a “General Form of Judgment or Order”, dated December 5, 2012, by which the Chancery Division of the High Court of Justice ordered the restoration of Formalities Bureau Limited to the register of companies. Point 3 of the order required a copy thereof to be delivered to the Registrar of Companies and stated that, pursuant to the Companies Act 2006, the company was “thereupon to be deemed to have continued in existence as if its name had not been struck off” .

The BoA found the situation to require a referral to the EBA:

The alleged doubt about the identity of the appellant

[1] The BoA does not agree with the [patent proprietor’s] contention that there is a lack of clarity concerning the identity of the appellant. It is clear from the documents on file that the notice of appeal and the statement of grounds of appeal were filed on behalf of the company in whose name the opposition had been filed namely Formalities Bureau Limited. The omission of the word “Limited” in the name of the company appears to have been accidental. The words “Bawden & Associates” were added as part of the address, not as part of the name of the appellant. That is clear from the fact that those words were placed on the next line.

The legal consequences of the dissolution of Formalities Bureau Limited
and its retroactive restoration to the UK register of companies

[2] Locus standi to oppose a European patent is defined in extremely broad terms. Under A 99(1) “any person” may file a notice of opposition within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin. The opponent does not have to have any special interest in challenging the patent: G 1/84 and T 798/93. An opposition may be filed by a “straw man”, that is to say a party acting on behalf of another person: G 3/97 and G 4/97.

[3] The term “person” in A 99(1) may refer either to a natural person or to an artificial legal person such as a limited company. When an opposition is filed by a company, that company must not only exist at the moment when the opposition is filed but must continue to exist throughout the opposition proceedings and, in the event of an appeal, throughout the appeal proceedings. In case T 525/94 it was held that an appeal filed in the name of a company that had been dissolved was inadmissible. In case T 353/95 the appeal proceedings were terminated without a decision on the substance because the appellant company, although in existence at the time when the appeal was filed, had been dissolved while the proceedings were still pending.

[4] In the present case the opposition was filed in the name of Formalities Bureau Limited. That company existed at the time when the opposition was filed but it had ceased to exist by the time the OD issued its decision maintaining the patent in amended form. The company had in fact been dissolved over three years earlier. In case T 353/95 the BoA stated that “Only an existing natural or legal person can be a party to opposition parties”. Hence, following the dissolution of the sole opponent the opposition proceedings could have been terminated. It would, however, also have been open to the OD to continue the proceedings of its own motion under R 60(2) EPC 1973 (now R 84(2)). Moreover, since the appellant did not legally exist at the time when the appeal was filed in its name, or at any point during the two-month period referred to in A 108 for filing the notice of appeal, the appeal could have been rejected as inadmissible under R 101(1) on the ground that it did not comply with A 107. That article provides that an appeal may be filed by any party to proceedings adversely affected by a decision. Having ceased to exist, the company could not have been a party to the proceedings, still less a party adversely affected by the decision of the OD.

[5] The question that arises in the special circumstances of the present case is whether the resurrection of the opponent company as a result of its restoration – with retroactive effect – to the UK register of companies is capable of curing the defects alluded to in paragraphs 3 and 4 above.

[6] In principle the question whether a company exists is to be determined by the law under which it was created. Formalities Bureau Limited was created under the law of the United Kingdom. According to section 1032(I) of the UK Companies Act 2006, the “general effect of an order by the court for restoration [of a dissolved company] to the register is that the company is earned to have continued in existence as if it had not been dissolved or struck off the register” . Point 3 of the order made by the Chancery Division of the High Court of Justice on 5 December 2012 expressly recognizes the retroactive effect of the restoration of Formalities Bureau Limited to the register of companies […]. Moreover, it is clear from the terms of the order that the purpose of restoring the company to the UK register of companies was to allow it to continue to participate in the present appeal proceedings.

[7] The [patent proprietor] argues in essence that, since the opposition had lapsed by the time the decision under appeal was issued and the appeal was inadmissible when it was filed, those fundamental defects cannot be overcome by recourse to a legal fiction provided for in national law whereby a dissolved company is deemed to have continued to exist throughout the relevant period as though the dissolution had never occurred. According to the [patent proprietor], the recognition of such a retroactive effect by the EPO would subvert the system of legal remedies and time limits provided for in the EPC.

[8] The BoA is not persuaded by the [patent proprietor’s] argument based on A 121 and A 122. Both those provisions are concerned with the situation that occurs when a party to proceedings fails to observe a time limit vis-a-vis the EPO. That is not what has happened in the present case, so it is difficult to see what relevance those articles have.

[9] However, the [patent proprietor’s] general argument along the lines that it would be wrong to allow a peculiar feature of UK company law to trump the EPC is not so easily dismissed. The fact is that, although the opposition was admissible when it was filed, the opposition proceedings could have been terminated at any point between 4 October 2005 (on which date the opponent company was dissolved) and 29 October 2008 (the date of the decision under appeal) on the ground that the sole opponent had ceased to exist. Moreover, the appeal was inadmissible at the time when it was filed because the appellant did not at that moment exist. Can those defects be cured retroactively by virtue of a provision of national law which restores a company to the register seven years after its dissolution and deems the company never to have been dissolved? There is no clear answer to that question in the EPC or in the case law of the EPO BoA. It involves a point of law of fundamental importance, within the meaning of A 112(1), inasmuch as it concerns the system of remedies provided for in the EPC, the acquisition and retention of the status of party to proceedings before the EPO and the relationship between the EPC and national law. A decision on that question is obviously necessary since the BoA cannot determine whether there is a proper basis for the continuation of the opposition proceedings by the restored company and whether the appeal is admissible without an answer to the question. It is therefore appropriate to refer the question to the EBA under A 112(1)(a).

[10] If the defects alluded to in paragraphs 3 and 4 above cannot be cured retroactively as a result of the restoration of the opponent company to the UK register of companies under section 1032(1) of the Companies Act 2006, it will be necessary to decide whether that has the consequence that the decision of the OD automatically ceases to have effect and that the opposed patent is maintained as granted. It is appropriate to refer that question also to the EBA.

The question of the parties obligation to keep the EPO informed about certain matters

[11] The [patent proprietor] has not explained the relevance of the question which it asks the BoA to refer to the EBA concerning the parties’ obligation to keep the EPO informed about certain matters. In particular, the [patent proprietor] has not indicated what specific consequences would, in its view, follow in the present case from a failure to comply with such an obligation (were the existence thereof established). The BoA does not therefore consider it necessary to refer that question to the EBA.


For these reasons it is decided that:

The following questions are referred to the EBA:
1. Where an opposition is filed by a company which is dissolved before the OD issues a decision maintaining the opposed patent in amended form, but that company is subsequently restored to the register of companies under a provision of the national law governing the company, by virtue of which the company is deemed to have continued in existence as if it had not been dissolved, must the EPO recognize the retroactive effect of that provision of national law and allow the opposition proceedings to be continued by the restored company?

2. Where an appeal is filed in the name of the dissolved company against the decision maintaining the patent in amended form, and the restoration of the company to the register of companies, with retroactive effect as described in question 1, takes place after the filing of the appeal and after the expiry of the time limit for filing the appeal under A 108, must the BoA treat the appeal as admissible?

3. If either of questions 1 and 2 is answered in the negative, does that mean that the decision of the OD maintaining the opposed patent in amended form automatically ceases to have effect, with the result that the patent is to be maintained as granted?

You can download the decision here.

The file wrapper can be found here.


Manolis said...

Interesting to see that the same Board has already referred questions on the subject of the identity of the appellant (although not exactly the same) which are pending under G1/12.

And, Oliver, the EBoA has not announced the official number yet, so G1/13 is only a guess - albeit a very educated one! ;-)
(just so that readers do not start searching for it at the EPO website)

Anonymous said...

- a grace period taken ad absurdum!

Kind regards,

George Brock-Nannestad

Myshkin said...

I think the first question to be answered is question 2.

If the answer is no, then the appeal is inadmissible and the decision of the OD remains as it is. There is no need to answer question 1 (although the answer would still be of general interest, it is not necessary for deciding case T 22/09). The answer to question 3 can only be negative: however deficient the decision of the OD may be, if it is not (admissibly) appealed, it remains in force.

If the answer to question 2 is yes, then the answer to question 1 becomes important, but it would seem that a positive anwer to question 2 almost necessarily implies a positive answer to question 1.

Regarding question 2, I wonder whether a restoration with retroactive effect under UK law implies that cases filed with UK courts by the non-existing company suddenly become admissible. Maybe the answer is yes, but T 22/09 does not mention this (unless I have missed something). If the answer is no, then clearly the answer to question 2 should be no as well.

Anonymous said...

Here are a number of interesting aspects. First, normally, what counts is the information in the Register. As long as that says the company exists, it exists. So the first question will be if the Register's information can be backdated based on later evidence. Normally not, I think. The Register is adapted on the date the evidence was filed. I do not think it can be adapted retrospectively. But let us see what the EBA thinks about that. Then the question in how far national law may influence the contents of the Register. Which question may be obsolete if it is decided that the Register is what counts and changes are valid as from the day the evidence was filed. If that would be the outcome, It would seem that both the OD decision as well as the appeal are valid.
I heard that at the time when the German company Hoechst completely changed its organization, the representative himself did not know who he was representing and took a long time to get things sorted out.
Everybody being so busy with mergers etc., nobody seems to think of informing the EPO!

Myshkin said...

First, normally, what counts is the information in the Register. As long as that says the company exists, it exists.

You might be right, but I have some doubt. The Register establishes the identity of the opponent vis-à-vis the EPO, but, I would think, not its legal existence. Suppose evidence of the company's dissolution had been filed much earlier, would that have led to an update of the designation of the opponent in the Register? It would most likely have led to the appeal being considered inadmissible, but I don't think on the basis of any (updated) information in the Register.

Anonymous said...

Interesting question, if the Register checks the existence of parties. If not, imagine the following: A non-existing party files an opposition. It has a plausible name and address, but it does not really exist. The patent is revoked on the basis of that opposition. If later the non-existence of that party would be revealed, how is the situation then? Or would the representative be assumed to be the party? Is that possible at all?

Myshkin said...

I don't think the Register performs any investigations of its own motion such as checking for the legal existence of parties.

Another thing is that most if not all information in the Register is just there for informing the public and/or national authorities (Art. 127 is in Part VII, Chapter II, titled "Information to the public or to official authorities") and not to serve as a source of indisputable facts for the EPO. Ideally the contents of the Register corresponds to legal reality and if it does not it should be corrected, but it does not determine legal reality.

At first sight it may appear to be different for the designation of the applicant because of R. 22(3), but in fact there is no difference. According to R. 22(3), a transfer has effect vis-à-vis the EPO once documentary evidence has been provided and the fee has been paid. The relevant fact is therefore not the registration in the Register (which may even have to be delayed until the publication of the application, Art. 127).

It is up to the OD to check the legal existence of the opponent as part of the examination of admissibility. If the OD fails to notice the problem, incorrectly decides that the opposition is admissible and then revokes the patent, the result is a real revocation of the patent that can only be changed by an admissible appeal filed by the proprietor (which will then be allowable and lead to the opposition being declared inadmissible).

The representative will only be assumed to be the party if the representative filed the opposition in his/her own name.

In T 525/94, one of the appealing opponents did not exist, but this opponent is still named in the Register without any indication of his non-existence.

Anonymous said...

Myshkin, you are right, the register does not check if a party exists. But I do not think it is the OD's task to check. I think it is the other party that has to prove that it's adversary does not exist. If nobody says anything, the parties are assumed to exist. I think.

Myshkin said...

Legal existence of an opponent or appellant is a requirement for admissibility, so it must be checked at any stage of the procedure by the OD and/or the Board. Admissibility can not be left to the parties.

An interesting decision in this respect is T 1178/04 with the following Headnote: "The duty of the European Patent Office to examine, ex officio, the status of the opponent at all stages of the proceedings extends not only to the admissibility of the original opposition but also to the validity of any purported transfer of the status of opponent to a new party.
The doctrine of no reformatio in peius is of no application in relation to the exercise of such duty."

So if (only) the opponent appeals a decision to maintain the patent in amended form, the appeal may still result in the patent to be effectively maintained as granted, namely in case the Board discovers the opposition to be inadmissible. This despite the prohibition of reformatio in peius.

Note however that if the opponent ceases to legally exist only after filing the opposition, the opposition remains admissible because of R. 84(2). Of course the non-existing opponent should play no further role in it.

I wonder what happens if an opponent already does not exist when filing the notice of opposition, the OD does not notice this and maintains the patent in amended form, and only the non-existing opponent appeals. The most obvious outcome seems to be inadmissibility of the appeal. But I do not exclude that the Board should instead declare the opposition inadmissible.

The case in T 22/09 is different though, since the opponent only ceased to exist after filing the notice of opposition. Still, it was probably a good idea to also refer the third question.

Regarding the duty of the EPO to examine admissibility (and the status of the opponent) at all stages, in practice there is no need for an OD to continuously check admissibility. And in practice, it will sometimes happen that a reason for admissibility goes unnoticed. But if an OD at any point in the procedure does notice that admissibility might be in question, the OD has the duty to investigate this further. This implies for example that as long the opposition or appeal has not been decided, it is never too late for the proprietor to put forward some facts that could point to the inadmissibility of the opposition.

Anonymous said...

Mmmmm I can see some difficulty for an OD or a Board to check the existence of a company e. g. in a Japanese or Chinese commercial register. Or even in a European country not having an official EPO language. Knowing nothing about the reliability of those registers at that.