T 1961/09 – A Silent Intervention

Both the patent proprietor and one of the opponents filed an appeal against the maintenance of the opposed patent in amended form.

There were third party observations supporting the revocation of the patent, both during the first instance and the appeal proceedings.

During first oral proceedings (OPs) held on October 24, 2012, the status of the opponent as appellant was discussed. The proceedings were then continued in writing. On June 20, 2013, less than a week before the second OPs, there was a third party intervention.

The decision has some interesting passages on the admissibility of one of the appeals and on how to deal with a third party intervention.

Admissibility of [opponent I’s] appeal

[1.1] It is not in doubt that the notice of opposition was filed by Kennametal Inc., a US corporation whose address was stated in the notice to be P.O. Box 231, Latrobe, PA 15650-0231, USA. The notice of opposition was filed on behalf of Kennametal Inc. by Prinz & Partner acting by its authorised representative. The details of the opponent and its representative were duly entered in the register. At the OPs before the Opposition Division (OD), Opponent I, Kennametal Inc., is recorded in the minutes as appearing by this same representative. The decision, refusing the proprietor’s main request but allowing its first auxiliary request, was made against Kennametal Inc. and notified to Prinz & Partner as its representative.

[1.2] A notice of appeal was then filed on Prinz & Partner’s headed notepaper as follows:

“Patent Owner: Iscar Ltd

Opponent I: Kennametal Technologies GmbH

In response to the Interlocutory Decision of 22 July 2009 we herewith appeal the above decision and request its revocation as well as the (sic) revocation of EP 1 572 407 ...”

The reference number for the case (K 1959 EP) was the same as that which had been used in the opposition proceedings.

[1.3] The fact that the address of the appellant was not stated in the notice of appeal (cf. R 99(1)(a)) was not noticed by the Office, nor did it apparently occur to anyone that anything might be amiss with the name of the appellant in the notice of appeal until the day before the first hearing before the Board, on 24 October 2012 […]. Evidence was subsequently filed on behalf of Kennametal Inc. with a view to establishing that the reference to Kennametal Technologies was the result of a mistake […]. The evidence was that although Kennametal Technologies was a company within the Kennametal group, there had been no transfer of the opposition from Kennametal Inc. to Kennametal Technologies. A statement was provided by Mr H. Prokop, who in 2008 was working for Kennametal Technologies and involved in matters relating to inventions in the Kennametal group. He stated that in 2008 he was contacted by the head of the patent department of Kennametal Inc. and was informed that he should become more involved and should assist the patent attorneys in Germany in the event that technical issues arose. He declares he informed Prinz and Partner that he would now be more involved in opposition proceedings and that they should contact him if assistance was required. A statement was also provided by Ms J. Edenbeck, an employee of Prinz & Partner, to the effect that she was contacted by Mr Prokop, who said that he had been appointed by Kennametal Inc. to act as primary contact for technical issues in patent matters. In her statement she first says that this contact was a “couple of years ago” (the statement is dated 17 May 2013) but subsequently says, on the basis of the firm’s file in the opposition proceedings, that she believes the call was made in 2008. She then says: “I apparently inadvertently changed in our file K 1959 EP the name of the opponent to ‘Kennametal Technologies GmbH’ rather than adding them as an additional contact”.

[1.4] The public file shows that thereafter and until 23 October 2012 […] all communications in this matter from Prinz & Partner referred to Kennametal Technologies as Opponent I. Meanwhile, however, in its communications with the parties, the Office continued to identify Opponent I as being Kennametal Inc. (see e.g. point [1.1], above) and the proprietor also continued to identify Kennametal Inc. as opponent in its submissions.

[1.5] Instructions were given by Kennametal Inc. (and not Kennametal Technologies) to Prinz & Partner on 1 October 2009 to file an appeal […]. As to the notice of appeal itself, Mr J. Strass, the European patent attorney who signed the notice on behalf of Prinz & Partner, says that on 1 October 2009 he was asked, by a paralegal working for the attorney within the firm whose file it was, to sign the notice of appeal, this attorney being out of the office. He checked in the firm’s database that the name of the opponent and the other details in the notice were the same as those recorded in the database, and then signed it.

[1.6] The evidence of what happened is not perfect in all its details and the Board is conscious that the onus is on the opponent to establish the facts alleged to the satisfaction of the Board, taking into account in particular the fact that the proprietor is not in any real position to challenge the evidence. Nevertheless, the evidence is credible and there is no real reason to doubt it. The Board accepts it.

[1.7] R 101(2) (and its predecessor R 65(2) EPC 1973) has been used in the past as a basis for correction of errors in a notice of appeal. The rule states:

“If the Board of Appeal notes that the appeal does not comply with R 99, paragraph 1(a), it shall communicate this to the appellant and shall invite him to remedy the deficiencies noted within a period to be specified. If the deficiencies are not remedied in due time, the Board of Appeal shall reject the appeal as inadmissible.”

[1.8] This rule was applied in T 97/98 to correct a notice of appeal in circumstances very similar to those in the present case. An opposition had been filed by, and the decision of the opposition division given against, Fresenius Medical Care Deutschland GmbH but in the notice of appeal a different legal entity, namely Fresenius AG, was indicated as “opponent” and thus as appellant. The appeal was filed by the same representative who had represented the opponent before the OD. It was explained that Fresenius Medical Care Deutschland GmbH and Fresenius AG were separate legal entities within the same group of companies. There was no question of any transfer of the opposition; the indication of Fresenius AG in the notice of appeal simply constituted an error. The Board held (point [1.3] of the Reasons) that correction was possible, saying:

“It is the position of the board that there is a deficiency in the indication of the name and address of the appellant within the meaning of R 65(2) not only when no such express indications at all have been made in the notice of appeal but also when incorrect indications have been made.

What is required under R 64(a) and R 65(2) EPC is that there was indeed a deficiency, i.e. that the indication was wrong, so that its correction does not reflect a later change of mind as to whom the appellant should be, but on the contrary only expresses what was intended when filing the appeal. It must be shown that it was the true intention to file the appeal in the name of the person, who is, according to the request, to be substituted.

Furthermore, R 64(a) and R 65(2) EPC 1973 cannot be construed as forming an exception to the basic principle that – the requirements for an admissible appeal having to be met on expiry of the time limit for filing the appeal – the appellant must be identifiable at that point in time. It must then be possible to determine whether or not the appeal was filed by a person entitled to appeal in accordance with A 107. However … it is sufficient therefore that it is possible to derive from the information in the appeal with a sufficient degree of probability, where necessary with the help of other information on file, e.g. as they appear in the impugned decision, by whom the appeal should be considered to have been filed ...”

The Board then considered the evidence filed by the appellant and concluded that “the overall factual picture of all these elements sufficiently supports the conclusion that the indication ‘Fresenius AG’ in the appeal constituted a genuine error and did not reflect the wish to file the appeal in the name of ‘Fresenius AG’ but that it was the intention of the representative to appeal in the name of the opponent.”

Returning to its earlier statement about the requirements of R 64(a) and R 65(2) EPC 1973, the Board then continued:

“As regards the question of what could be derived from the appeal the Board is satisfied that a person not knowing all the details considered here, presented later to the Board, could have derived from reading the appeal with the help of the indications in the impugned decision that the party on behalf of which the appeal was intended to be filed was the opponent, i.e. Fresenius Medical Care Deutschland GmbH, since this was the sole opponent, represented before the opposition division by the representative who had filed the appeal. Furthermore, there were no indications on file that a transfer of rights might have taken place in the meantime. Thus, in the present case it could be inferred by a third person from the circumstances of the appeal with a sufficient degree of probability that the opponent should be the appellant.”

[1.9] The reasoning and facts in that decision fit the facts of the present case. The evidence filed and summarised in points [1.1] to [1.5] above shows to the Board’s satisfaction that it was not the intention to file an appeal by Kennametal Technologies but by the opponent, Kennametal Inc.. As to what would have been apparent on inspecting the file, two notices of appeal were filed. One was unmistakably from the proprietor. As to the other, the only other party remaining in the proceedings and thus the only other party entitled to file an appeal was the opponent. On the face of this notice of appeal it is apparent that something is wrong: Opponent I is stated to be Kennametal Technologies and yet Opponent I can be seen from the file to be Kennametal Inc.. Further reading of the file would then have revealed that the confusing references to the opponent’s name as Kennametal Technologies by the opponent’s representative had started in early 2009 but that despite this neither the Office nor the proprietor had been under misapprehension about who in fact was the party acting as the opponent. For example, the party present as opponent at the OPs before the OD on 2 July 2009 and against whom the decision was given was clearly understood by everyone to be Kennametal Inc..

[1.10] The proprietor in its submissions argued strongly that the evidence filed by Mr Strass established that the intention was in fact to file an appeal by Kennametal Technologies since, according to Mr Strass’ own evidence, after checking against the information in Prinz & Partner’s files that the opponent’s name was correct, he consciously signed the notice on behalf of Kennametal Technologies. However, the Board considers that this is part of the explanation for the mistake and must be looked at against the wider factual background.

The evidence as a whole establishes that it was the intention to file a notice of appeal on behalf the entity that was the opponent.

[1.11] The Board was also pressed by the proprietor to await the outcome of the reference to the Enlarged Board (EBA) in G 1/12 or least to refer a separate question of its own. The facts in T 445/08, the referring decision in G 1/12, were very different.

There, the patent had been granted to Zenon Environmental Inc. but, following a subsequent transfer, the entry in the register was altered to record Zenon Technology Partnership as proprietor. The opposition division subsequently revoked the patent, correctly identifying Zenon Technology Partnership, a US company, as the proprietor. A notice of appeal was then filed headed:

“European Patent No 1140330 (99955620.2-062)

Zenon Technology Partnership

The notice then stated:

“We hereby give Notice of Appeal against the decision of the Examination Division (sic) dated 28^th December 2007, to refuse the above patent application (sic). Cancellation of the Decision in its entirety is requested so that the patent may be maintained with claims as presently on file ...

The name, address and nationality of the Appellant is:

ZENON ENVIRONMENTAL INC

845 Harrington Court

Burlington

Ontario L7N 3P3

Canada

Zenon Environmental Inc is a Canadian corporation ...”

The proprietor’s attorney filed evidence that it was always the intention to file the appeal in the name of the patentee, Zenon Technology Partnership, and the mention of Zenon Environmental Inc. as appellant was a simple error.

[1.12] The Board observed that the notice of appeal on its face complied with the requirements of R 99(1)(a) and R 41(2)(c) EPC and that the named appellant was a real company and was fully identified. The Board considered that R 101(2) could only justify corrections of deficiencies that were directed to completing the appellant’s identity where this was not fully provided in the notice of appeal and where the appellant was already identifiable from the notice of appeal. It is clear that the Board considered that prima facie there were no “deficiencies” in the notice as such. The Board noted, however, that some decisions of the Boards of Appeal had introduced the subjective notion of “true intention” and that uncertainty existed about whether and, if so, when it was possible to have recourse to the true intention of a party to assess whether there was a remediable deficiency under Rule 101(2) in conjunction with R 99(1)(a). (As an aside, the present Board observes that this point was clearly highly relevant since if the notice of appeal were to be corrected it was necessary to have recourse to evidence of the subjective intention of the representative who had filed the notice of appeal.) In the event the Board in T 445/08 referred a number of questions to the EBA, the first of which is in the following terms:

“When a notice of appeal, in compliance with R 99(1)(a), contains the name and the address of the appellant as provided in Rule 41(2)(c) EPC and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is a request for substituting this other legal or natural person admissible as a remedy to “deficiencies” provided by R 101(2)?”

[1.13] The question is drawn in fairly wide terms. Technically it does not cover the present case because in the present case the address of the appellant was not given in the notice of appeal, contrary to R 99(1). However the Board does not think that this is a material distinction. More significantly, however, the question referred also does not deal with the present case because here, in contrast to the situation in T 445/08, the notice of appeal cannot be said to contain the name of the appellant in compliance with R 99(1(a), as provided in R 41(2)(c).

Thus, in the present case, there is ambiguity on the face of the notice as to whether the appellant is Opponent I or Kennametal Technologies. The referring Board in T 445/08 was not concerned with this kind of case and the questions referred were not intended to deal with it.

[1.14] The Board has therefore not found it necessary to await the outcome of the EBA’s decision, as requested by the proprietor. Unlike the position in T 445/08, it is clear to the Board that there is objectively a deficiency in the notice of appeal. Not only this, there is no real doubt about how it should be corrected. See point [1.9], above. In this, it is not necessary to have recourse to any evidence filed as to what the subjective intention of the opponent’s representative was (although such evidence was filed). The matter can be decided on an objective basis. The present Board does not consider that the Board in T 445/08 intended to bring into doubt the jurisdiction to correct an error in the notice of appeal in such circumstances as those in T 97/98.

[1.15] As to the question which the proprietor requested to be referred to the EBA, this is as follows:

“If the answer to question 1, 3, or 4 referred to the EBA of Appeal by T 445/08 (G 1/12) is yes, does the point of time at which the error occurred have any influence, particularly if it did not occur at the time of lodging the appeal, and more particularly, if it occurred way back in the first instance, and if so, what is the influence?”

Question 1 is already set out above. Questions 3 and 4 were as follows:

“(3) If the answer to the first question is no, may the appellant’s intention nevertheless play a role and justify the application of R 139?

(4) If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)?”

The point which the proprietor wishes to make is that in the present case the relevant mistake was made in 2008, i.e. when the incorrect information was entered in Prinz & Partner’s computer records, not when the notice of appeal was filed on 1 October 2009. However, the Board considers that the relevant mistake was made when the notice of appeal was filed, stemming from a mistake made earlier in the day when drafting and checking the notice. The explanation for the mistake lies in the earlier mistake made in 2008. The Board cannot, however, see that the timing of the mistake or of its cause has any bearing on the issue and does not consider it necessary to refer a question to the EBA for any of the reasons given in A 112(1).

[1.16] As the decision in T 445/08 points out, there is some uncertainty in the case law as to whether there is jurisdiction under R 139 to correct an error in a notice of appeal. The third question referred to the EBA in G 1/12 concerns this issue. In the circumstances there is no need for the Board to consider the matter further, except to say that assuming that there is such jurisdiction and given the Board’s conclusions on the mistake in this case, the order for correction is also made under this rule.

The intervention by the intervener and the further conduct of the proceedings.

[2.1] The notice of intervention satisfies the requirements of A 105 and the Implementing Regulations. This was also not disputed by the proprietor when given an opportunity to do so, even though the proprietor had initially requested that the intervention be held inadmissible. The Board thus concluded that the intervention is admissible.

[2.2] As already noted […], at the OPs of 26 June 2013 the Board was faced with the problem of how the proceedings should be continued given the very late stage at which the intervention occurred and the new issues which had thereby been raised. The proprietor objected to the proceedings being continued on that day because it had not had sufficient opportunity to react to the new position. The Board was also not in a position to deal with these issues and, indeed, where an intervener raises a new ground of opposition (as the present intervention did) it should normally be remitted to the OD. See G 1/94 [13]. Nevertheless, and after the matter had been discussed with the parties, the Board decided that the OPs should be continued, at least with a discussion of the novelty objection raised by the opponent in respect of claim 1 of the main request. This was made possible because the intervener agreed that it would not make any submissions on this issue. This meant that the issue could be discussed without causing any unfairness to the proprietor, because the discussion would be limited to an issue already in the proceedings before the notice of intervention was filed. Proceeding in this way was also fair to the opponent, who had a legitimate interest in seeing the proceedings concluded without further delay. For these reasons, the Board therefore decided as a first step to continue with the OPs by hearing the opponent’s novelty objection against claim 1 of the main request. As had been agreed, the intervener did not make any submissions on this issue.

[2.3] After this issue had been dealt with and the objection found to be prejudicial to the allowability of the main request, the proprietor then requested that the case be remitted for further consideration of the new issues. The Board decided not to remit the case but to continue the proceedings by hearing the opponent’s clarity objections against the auxiliary requests then on file (A 84). This was again possible because the intervener agreed that it would withdraw all its own clarity objections to the proprietor’s auxiliary requests then on file. The Board was therefore in a position to hear the arguments of the opponent and the proprietor on these issues of clarity without the intervener adding any further objections. Although the proprietor argued that the Board might already have been influenced by having read the written submissions of the intervener on clarity, the clarity objection of the opponent had itself however not been modified by the intervener’s submission and the proprietor and the opponent were not in any way, as a result of any comments by the intervener, presented with any new case in that particular regard (nor was it argued that the proprietor had been presented with a new case in this sense). The proprietor’s further argument in favour of remittal, that the way it would have to argue against the clarity objection of the opponent might then be affected by the intervener, was also not convincing, since the way in which the proprietor might wish to argue against a clarity objection due to the presence of the intervener was not related to the clarity objection itself but rather to possible tactical considerations outside the framework of the appeal.

As you might have guessed, the patent was finally revoked: the main request was found to lack novelty and the final auxiliary requests were not admitted into the proceedings.

NB: The Board also provided headnotes:

1. Where there is objectively a deficiency in the notice of appeal indicating a genuine error as regards the identity of the appellant and there is objective evidence in the file indicating with a sufficient degree of probability who the appellant should be, then the notice of appeal may be corrected under R 101(2) (see point [1.9] of the Reasons). The reference to the EBA in G 1/12 by the Board in T 445/08 does not bring into doubt the jurisdiction to correct an error in the notice of appeal in circumstances such as those in T 97/98 (see point [1.14] of the Reasons).

2. While an intervention under A 105 shortly before OPs in an appeal, raising new issues, will normally require the OPs to be adjourned if not the remittal of the case altogether (G 1/94), the OPs may be continued if and so far as this can be done without unfairness to the other parties, in particular the proprietor (see points [2.2-2.3] of the Reasons).

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