T 184/11 – A Sleeping Beauty

The present appeal was filed by the patent proprietor after the Opposition Division had maintained the opposed patent in amended form.

The opposition had been filed by Fontaine International Europe Ltd. (“Fontaine”).

On April 8, 2013, the representative of the opponent requested the transfer of the opponent and respondent status to the parent company of Fontaine, a company called The Marmon Group Ltd (“TMGL”) as of December 31, 2010. Several letters were filed as evidence for the transfer.

On April 18, 2013, the representative filed further evidence for the transfer, including an excerpt from a commercial register.

Oral proceedings (OPs) were held on May 14, 2013. During the OPs, the representative of the opponent filed further evidence for the transfer.

The decision has quite a lot to offer, so I have decided it to present it in two posts. Today we will have a look at the discussion of the transfer of the opponent status.

*** Translation of the German original ***

[2.1] The status as an opponent cannot be freely transferred. (G 2/04). The procedural position of the opponent can, as implicitly acknowledged in R 60(2) EPC 1973 and R 84(2), be transferred to the heirs, and accordingly the access of the universal legal successor to the opponent status is admissible (G 4/88 [4]). An opposition pending before the EPO may also “be transferred or assigned to a third party as part of the opponent’s business assets together with the assets in the interests of which the opposition was filed” (G 4/88 [order]). Therefore, from a legal point of view (rechtsgeschäftlich) a transfer of the party status in pending opposition or opposition appeal proceedings is only admissible if [the party status] is transferred together with the business assets (Geschäftsbetrieb) or the part of the company in the interests of which the appeal was filed (T 659/92; see also Case Law, 6th edition, 2010, VII.C.5.1). Contrary to the case of universal legal succession, however, the previous party to the proceedings remains entitled and legally obligated as long as the evidence concerning a legal transfer of the party status has not been provided and no corresponding request has been filed with the EPO, because the transfer of party status is only effective when it is requested and proven (see T 870/92 [3.1], which has been confirmed in many later decisions, such as T 956/03 cited by the [patent proprietor]; cf. T 1421/05 [3.3]; T 1137/97 [4] and T 1032/10 [1-3]).

[2.2] In the present case the [opponent] was able to prove, by means of pages 1 to 4 extracted from the commercial register held by the state-owned office Companies House (B6) that at the time of the OPs before the Board of appeal the Fontaine company was being liquidated but had not yet been dissolved. As also argued by the [opponent], according to the applicable U.K. law, the Fontaine company, which was being liquidated was still existing as a legal person (“dormant company”). Thus the Fontaine company was still party [to the proceedings] at that time. Nor is there any indication that the professional representative could not represent the Fontaine company any more, because her authorisation had not been withdrawn by the Fontaine company or by a liquidator.

[2.3] It is clear from the letter dated December 20, 2010, and the transfer agreement dated December 31, 2010, that the Fontaine company has transferred its business assets concerning the manufacture and sale of parts for the truck industry in Europe to TMGL immediately after its close of business on December 31, 2010. The Board is of the opinion that the “Excluded Assets” mentioned on page 3 of the agreement (B3) only comprise the share capital which the seller Fontaine held in the company Big D Fifthwheels & Landing Legs Ltd., and do not call into question the transfer of the above mentioned business assets. As the present case concerns plug-in coupling systems for connecting wires between a towing vehicle and a trailer, it can also be said that the opposition was filed in the interests of these business assets.

[2.4] The letters dated December 20, 2010, (B1) and January 19, 2011, (B2) as well as the extract from the commercial register held by the state-owned office Companies House (B4) prove that the company TMGL exists as an independent legal person.

[2.5] It can also be seen from the letter dated January 19, 2011 (B2) that MHT Europe is not an independent legal person but only a commercial department of the TMGL company (“a trading division of TMGL”). This is also confirmed by page 5 of the extract from the commercial register held by the state-owned office Companies House (B6) because there is no company “MHT-Europe” mentioned in the alphabetic list of registered companies. A similar statement can be made for Fontaine Fifth Wheel and MHT (which is the abbreviation of “MARMONHIGHWAYTECHNOLOGIES”, as can be seen from the 2-page Internet printout B7) because there is no registration of those names on pages 1-3 and 5, respectively, of the extracts from the commercial register held by the state-owned office Companies House (B6).

[2.6] For the above reasons the Board reaches the conclusion that the full evidence for a legal transfer of the opposition together with the business assets of the opponent and respondent Fontaine to TMGL as of October 31, 2010, has only been filed during the OPs before the Board of appeal and that, as a consequence, the request for a transfer of the party status of the opponent and respondent could only be allowed at that moment.

Even though the request for a transfer of the party status and the documents serving as evidence were only filed at a very late stage of the appeal proceedings, the Board did not see any good reason not to take account of the request and the corresponding evidence. In particular, the Board could not endorse the opinion of the [patent proprietor] according to which decision T 956/03 had to be applied by analogy in such a way that in case of a transfer occurring before the expiry of the time limit for filing an appeal the evidence also had to be provided before the expiry of the time limit for filing an appeal. In decision T 956/03 the Board followed the established case law according to which a transfer cannot be acknowledged before the day on which appropriate evidence for the transfer has been filed (see T 956/03 [4] as well as point [2.1] above) and expressed [the opinion] that this was desirable for the sake of legal security in order to ensure that the identity of an opponent was known. In case T 956/03 the Board also had to decide on the admissibility of the appeal filed by one of the appellants which had claimed to be the legal successor of one of the opponents of the first instance proceedings without having filed corresponding evidence within the time limit for filing an appeal. The principle established in decision T 956/03 [7], according to which the entitlement of the [person] under consideration to replace the opponent also had to be established by filing the required evidence before the expiry of the time limit for filing an appeal if the transfer had taken place before the expiry of the time limit for filing an appeal, has to be seen in the light of that factual situation. The present case does not concern the question of whether the appeal filed by an alleged legal successor is admissible. Rather, the opponent who had taken part in the first instance proceedings at first acted as a respondent and the request for a transfer of the party status was only filed in the course of the appeal proceedings. As a consequence, the Board is of the opinion that an analogous application of the above mentioned principle to the present case is not justified. This is also in line with the case law of the Boards of appeal according to which the party status of the opponent in appeal proceedings can also be transferred to a third party after the expiry of the time limit for filing an appeal, independently of whether the opponent is the appellant or the respondent (see also T 670/95 [2]), as long as this does not make the admissibility of the appeal questionable.

[2.7] Ultimately the opponent and respondent status has been transferred as of May 14, 2013, from the Fontaine company to TMGL, with whom the appeal proceedings were continued. These findings were communicated to the parties during the OPs held on May 14, 2013, subsequent to the corresponding discussion and the deliberation of the Board.

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