Wednesday, 3 July 2013

T 2382/10 – The Substitute

Changes of parties during proceedings before the EPO can give rise to tricky questions regarding the admissibility of appeals. Universal succession is a special case always to be kept in mind, because the applicable rules differ from the rules concerning other transfers.

On March 8, 2010, the patent proprietor, A. Friedr. Flender AG, merged with Siemens AG.

Its patent was revoked by the Opposition Division on September 29, 2010.

On November 29, 2010, Siemens filed the appeal.

The opponent contested the admissibility of the appeal. In vain:

*** Translation of the German original ***

[1.1] The [opponent] contests that Siemens AG is entitled to file an appeal.

[1.2] As a consequence of the entry of the merger into the register of the seat of the receiving legal entity (übernehmender Rechtsträger) – in the present case, Siemens AG having its seat in Munich – the Flender AG does not exist any more as a legal person and its assets including the patent rights have been transferred to Siemens AG (§ 20(1), n° 1 and 2 of the German Transformation Act). This is a universal succession in which a legal entity completely merges with another legal entity. The commercial register shows that as a consequence of the entry of the merger all rights existing at the date of the entry into the commercial register have been transferred to the other legal entity and that the transferring legal entity did not exist anymore as of that date.

Thus on November 29, 2010, only Siemens AG could dispose of the impugned patent and file an appeal.

[1.3] As the transfer of the patent had not yet been entered into the European Patent Register (EPR) on the date on which the appeal was filed, the EPR still listed Flender AG as the patent proprietor. However, this entry does not change the fact that Flender AG did not exist at that date and that Siemens AG could dispose of the patent.

Another party can replace the original applicant not only if it has been entered into the EPR, but also when there is unambiguous evidence that the right to the patent has been transferred (wenn ein eindeutiger Nachweis des Übergangs des Rechts auf das Patent vorliegt) (J 26/95).

As the excerpt of the commercial register constitutes unambiguous evidence that the rights regarding the patent have been transferred to Siemens AG before the date of filing of the appeal and that Flender AG did not exist anymore at that date, Siemens AG is entitled to replace it in the proceedings.

[1.4] The legal situation is based on the facts at the time of filing of the appeal. As a consequence, it is irrelevant that the evidence regarding the merger has been submitted after the appeal had been filed.

The present case differs from the case underlying decision T 428/08 in several respects. In that case the receiving company was the opponent and the transfer of the company was the consequence of a legal transaction (Rechtsgeschäft).

However, in such a case other standards have to be applied than in a case of universal succession of the patent proprietor. This is even acknowledged in T 428/08 [7].

[1.5] Thus the entitlement of Siemens AG to file an appeal is not questionable and the appeal is admissible.

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

The file wrapper can be found here.