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.

Order

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?

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