J 17/12 – Entry Denied

This decision deals with the question whether a transfer of a European patent application should be recorded in the register although the proceedings for grant have been suspended under R 14.

If you just want a short summary of the Board’s answer, here it is: No.

If you want to know why, please read on.

The application under consideration was filed by Mr Fein in 2006. In 2008, there was a transfer to Reprise Pharmaceutics. On February 7, 2011, a communication under R 71(3) was issued. On March 28, 2011, Ferring instituted entitlement proceedings in the District Court of The Hague. The proceedings were stayed. On April 20, Reprise filed a request to record the transfer of the application from Reprise to Allergan. Allergan requested that the proceedings be resumed. The Legal Division (LD) recorded the transfer but refused to resume the proceedings. Both parties appealed the decision.

Transfer of the application

[2.1] Ferring’s first argument is that once the EPO knew that Reprise’s title to the application had been put in doubt by virtue of the national entitlement proceedings, it should not have accepted on the evidence supplied by Reprise that the application had been transferred to Allergan.

[2.2] The LD rejected this argument and the Board agrees. The general principle under the EPC is that an application for a European patent, as an object of property, is subject to national law and may be transferred (see A 74 and 71). The Board has no reason to doubt that the present application was, as an object of property, transferable to Allergan and that it was indeed transferred, subject no doubt to whatever claims Ferring might establish under national law.

Recording of the transfer in the register: the relevant provisions

[3.1] R 22(1) provides that the transfer of a European patent application shall be recorded in the European Patent Register at the request of an interested party upon production of documents providing evidence of such transfer. R 22(2) provides that such a request may be rejected only if R 22(1) has not been complied with. Subject to Ferring’s argument in point [2.1], above, it is not disputed that the evidence filed by Reprise satisfied the formal requirements of the rule.

[3.2] As to R 14(1), this provides that if the relevant conditions are satisfied (which they were in this case) “the proceedings for grant shall be stayed”. Allergan argues that the recording of a transfer of a patent application in the register is not part of the proceedings for grant. The LD agreed.

[3.3] There are certainly no express provisions of the EPC indicating that R 22(1) and (2) should be put on hold in circumstances where proceedings for grant have been stayed under R 14(1). This is in contrast, for example, to R 15, which expressly provides that in the period during which proceedings for grant are stayed neither the European patent application nor the designation of any Contracting State may be withdrawn.

Recording of the transfer during a stay: the case law

[4.1] So far as the Board and the parties are aware, there is no decision of the Boards of Appeal directly on the point. In the two related cases, J 38/92 and J 39/92, the Legal Board made the general statement that a stay of the grant proceedings has the effect that during the suspension neither the EPO nor the parties can validly perform any legal acts. On the contrary, the grant proceedings remain unaltered in the legal state existing at the point in time of the stay. Taken by itself this general statement might be taken to cover the present case and rule out Allergan’s arguments.

[4.2] It is, however, necessary to have regard to what the facts of those two cases were. A third party had brought national proceedings against the applicant, as a result of which it had obtained a decision of the national court that the two applications were to be transferred back to the third party, and belonged to it (die Patentanmeldung auf die dritte Partei “zurückzuübertragen ist und ihr zusteht.”) The third party had not meanwhile applied for a stay of the grant proceedings but rather, only after obtaining the decision of the national court and then relying on this as evidence, filed a request for transfer of the applications to it. The request was granted but on appeal the Board decided this way of proceeding was wrong: a request under R 20(1) EPC 1973 (now R 22(1)) must be based on evidence of a transfer document, and such evidence was missing. The Board went on to conclude that the request should have been dealt with as a request under A 61(1)(a) by the third party to prosecute the application as its own and that the EPO should have stayed the grant proceedings under R 13(1) with effect from the date of the request. The Board then added the comment cited above, namely that the stay of the grant proceedings meant that neither the EPO nor the parties could validly perform any legal acts and that the grant proceedings remain unaltered in legal state existing at the point in time of stay (“Die Aussetzung des Erteilungsverfahrens hat die Wirkung, daß in dem ausgesetzten Verfahren weder das Europäische Patentamt noch die Parteien wirksam Rechtsakte vornehmen können. Das Erteilungsverfahren verbleibt vielmehr unverändert in dem Rechtsstadium, in dem es sich zum Zeitpunkt der Aussetzung befand.“) See point [2.5] of the reasons in both cases. This was relevant in the particular circumstance of J 38/92 because meanwhile (i.e., after the grant proceedings should have been stayed) the mention of the grant to the original applicant had been published in the Official Journal. The Board thus made it clear this act of the Office had had no legal effect. See points [2.5] and [2(b)] of the reasons and the order, respectively. The factual position was not the same in J 39/92 (where the comment appears in identical terms): in this case there appear to have been no acts by the EPO or the parties which the Board needed to make clear were invalid. The remark therefore appears to have been an obiter dictum.

[4.3] In the light of these facts, the present Board therefore considers that the above general statement cannot be taken as necessarily applying to the facts of the present case. The mention of the grant in the Official Journal, which was the relevant act of the EPO in J 38/92, was undoubtedly a step in the proceedings for grant. It cannot be said with a similar level of certainty that the same is true of the registration of the transfer of the application.

[4.4] Ferring relied on the decision in J 20/05. In that case, the issue was whether an applicant was entitled to file a divisional application at a time when proceedings for grant of the parent application had been stayed. Ferring pointed to the fact that the Board there held that the entitlement to file a divisional application was a procedural right that derived from the applicant’s status as applicant under the earlier application, and thus it had to be examined whether the applicant was entitled to file the divisional application by virtue of being the applicant in the earlier parent application. The Board held that since the rights in respect of a divisional application could only be derived from the parent application, the disputed right of the applicant to file the parent application could not form a sufficient basis for a right to file a divisional application. Ferring argued, applying this reasoning, that when the request to record the transfer of the application was filed by Reprise, there was doubt about who was the person lawfully entitled.

[4.5] While this decision could no doubt support Ferring’s position, the Legal Board there made the point, citing J 2/01, that the entitlement to file a divisional application is a procedural right that derives from the applicant’s status as applicant under the earlier application (point [2] of the reasons). The point was repeated in J 9/12 [3]. The present Board cannot be confident that a right to have a transfer of an application registered following a request under R 22(1), which may be filed by any interested party, is such a procedural right. The Board therefore prefers to approach the question applying more general principles, as set out below.

Stay of proceedings: the general principles.

[5.1] The purpose of R 14(1) is to protect the third party’s interests during entitlement proceedings, at least provisionally (J 7/96 [2.3]; J 15/06 [7]; J 20/05 [3]).

[5.2] Whether or not the recording of a transfer literally constitutes part of the “proceedings for grant” (and thus falls within the express wording of R 14(1)), the decision in J 20/05 demonstrates that the effect of a stay under R 14(1) is not limited to a stay of “proceedings for grant”, understood literally: other acts may also be excluded by a stay if they are inconsistent with the objective of protecting the third party’s rights. Rule 14 EPC 1973 can prevent, as lex specialis, other acts, e.g., as in J 20/05, the filing of a divisional application (see also G 1/09 [3.2.5], and J 9/12 [3,5]). In J 20/05 the filing of a divisional application was held to be excluded because of the need to protect the third party’s rights in the parent application. The Board said:

“... the appellant’s argument that it is not forbidden by R 13(1) to file a divisional application during suspension of the parent application proceedings cannot succeed. 

Even if the filing of a divisional application during suspension of the parent application proceedings is not expressly excluded by R 13 EPC [1973], R 13 is stated in general terms and it is consistent with its objective of protecting the third party claimant’s rights that the filing of a divisional application during suspension should be prevented. 

It would be inconsistent with and contrary to the fundamental objective of the provisions on suspension, on the one hand to suspend the parent application proceedings because of the national entitlement proceedings, but on the other to allow the filing of a divisional application by the applicant whose entitlement is challenged.”

See point [3] of the reasons, and also J 9/12 [5].

Registration of transfer during a stay: the Board’s conclusions

[6.1] The question is thus whether the registration of a transfer of an application is inconsistent with the fundamental objective of the suspension of the proceedings, which is to protect the third party claimant’s rights in the application.

[6.2] The core provision of the EPC so far as entitlement proceedings are concerned is A 61(1), which provides various remedies if “by a final decision it is adjudged that a person other than the applicant is entitled to the grant of the European patent”. In this respect it seems to the Board that if the EPO is to be required to act on such a decision, it needs to be a decision which establishes that the third party rather than “the applicant” is entitled to the grant. The Board considers that “the applicant” here can only mean the person entered on the register as applicant. The Board considers that a decision establishing that the third party rather than the former applicant, or indeed some other person, was entitled to the grant would not be sufficient for this purpose. It seems to the Board that if Allergan was correctly registered as the applicant, it was indeed necessary for Ferring to bring proceedings against Allergan, with all the increased costs which that involved. There would then also be nothing to prevent the application being subsequently transferred and registered in the name of another applicant. It follows that if the registered applicant can be freely changed while proceedings for grant are stayed, the third party’s attempts to obtain the remedies available under A 61(1) could be repeatedly frustrated.

[6.3] The LD originally took the view that following the registration of Allergan as applicant it was necessary for Ferring to bring proceedings against Allergan […]. In its decision, however, the LD changed its view: “… it is not necessary to institute separate entitlement proceedings before a competent court against the now registered applicant after a transfer of the application has taken place from the then registered applicant to the actual registered applicant.” […]. However, the Division does not appear to have taken into account in this context the significance of the reference to the “applicant” in A 61(1). The statement was also in fact made by way of introduction to the point that the entitlement proceedings had been brought against the person who was at the time registered as applicant (Reprise) and this was sufficient to entitle Ferring to a stay of the grant proceedings. As to this point, the LD was clearly correct.

[6.4] Allergan argued that the Board’s reading of A 61(1) is not correct: a final decision which establishes that Ferring is entitled to the grant will necessarily mean that no one else is entitled. It would in effect be a decision in rem. The Board disagrees with this argument. It would mean that a decision against a straw-defendant would oblige the EPO to implement the machinery of A 61. It is not even necessary to go to such an extreme example; it is not difficult to imagine non-collusive national proceedings in which a judgement on entitlement was obtained against some person other than the applicant.

[6.5] Allergan did not in fact argue in the alternative that a final decision obtained against a person who once was the applicant would, so far as the EPO is concerned in the application of A 61(1), be binding against a transferee from this applicant and who had since been registered as applicant. The Board considers that Allergan was correct not to do so. The effect of a final decision on any successors in title to the applicant would be a matter of national law. Rather, Allergan argued that if a transfer of the application was registered during the national entitlement proceedings, or even after a final decision was obtained, the third party could simply institute fresh entitlement proceedings and obtain a decision against that new applicant. It seems to the Board that this is the opposite of protecting the interests of the third party, given the expense and delay involved, and taking into account the fact that such proceedings would have to be brought in whatever was the appropriate jurisdiction according the Protocol on Recognition. A similar point arose in J 20/05, where it was argued, in the context of a divisional application being filed during suspension of the parent grant proceedings, that a third party could simply bring entitlement proceedings in respect of such divisional application, and apply to stay grant proceedings on that divisional application. The Board said:

“It has to be noted that it is not possible for the claimant third party to apply to the EPO for an automatic and immediate suspension of the divisional application proceedings by way of an extension of the suspension of the parent application proceedings. On the contrary, in order to have the divisional application proceedings suspended the third party would first have to bring (“open”) new national proceedings against the applicant in which it sought a judgment that it is entitled to the grant of a patent on the divisional application. The third party would then have to provide evidence that it had brought such proceedings and finally the matter would have to be decided by the EPO. All this would clearly put an additional heavy and undue burden on the third party and would be contrary to the objective of the suspension of the parent application proceedings, which is to protect its interests.”

See also J 9/12 [7].

[6.6] Allergan argued that it was important in the public interest that the register should reflect the true position so that, for example, if someone wished to acquire a licence in this case they would know that they should apply to Allergan and not Reprise. The Legal division also considered this informational role of the register to be an important factor. However, quite apart from the fact that anyone wishing to obtain a licence would presumably be re-directed by Reprise to Allergan, there is nothing to stop the filing, during the suspension of grant proceedings, of a request to transfer the application. The effect of a stay in the light of the Board’s decision will simply be that no action will be taken on the request during the suspension. While the fact of the transfer may not be apparent from the register, it will be apparent from an inspection of the public file, as will the decision to stay the grant proceedings itself. The public will therefore be sufficiently informed.

[6.7] The Board can accept that when it comes to implementing the mechanism of R 14 and R 15 it seems appropriate to consider the interests of the person who prima facie has the real interest in the application (here Allergan) rather than the interests of someone who prima facie no longer has any real interest in the application (here Reprise). However, for the reasons given below (point [8.4]), the Board considers that on such a request it would be appropriate to consider all the relevant circumstances, including the fact that the application had been transferred to a party with commercial interests in pursuing the remedies under A 61(1).

[6.8] Hence, the Board concludes, on the one hand, that the registration of Allergan as applicant while the grant proceedings were stayed failed to protect Ferring’s legitimate interests under A 61(1) as a third party and, on the other, that there are no sufficient practical or procedural objections against the suspension of any action to be taken on the request to register the transfer while proceedings are suspended.

Registration of transfer: referral of a question to the Enlarged Board of Appeal (EBA)

[7.1] In the light of the Board’s conclusion that the registration of Allergan as applicant should be reversed, Allergan requested that a question be referred to the EBA as follows:

“Can a transfer of a patent application be registered during a suspension of proceedings under R 14?”

[7.2] Allergan argued that a point of law of fundamental importance within the meaning of A 112(1) arises. Whether or not this is the case, the Board sees no need to refer the question. The Board has been able to come to a conclusion applying what it considers to be the established principles. It is also not in any doubt about the result and is not aware of any legal view-points expressed either in national case law or in legal commentaries which might cast doubt on the conclusion reached (see J 5/81 [11]).

The procedural consequence of reversal of registration

[8.1] The consequence of the Board’s decision that the registration of Allergan as applicant must be reversed now has to be considered. The LD, having decided that Allergan had been correctly registered as applicant, went on to deal with the competing requests arising out of the suspension of the grant proceedings, in the end reaching a decision not to make any order in this respect. This second part of the decision was also the subject of both appeals. In its communication sent to the parties on 15 July 2013 in preparation for the oral proceedings (OPs), the Board pointed out that if the decision on registration was wrong it would mean that the wrong parties had been before the LD and now the Board in these appeal proceedings.

[8.2] Neither party filed any response to this observation. However, during the OPs before the Board, and after the Board had announced its conclusion that the registration of Allergan as applicant had to be reversed, Allergan for the first time advanced a submission that the appeal proceedings could then and there be continued because even though Allergan was now known not to be the applicant, it was entitled under R 14(3) as an interested party to request continuation of the grant proceedings. As to the absence of Reprise from the proceedings, Allergan’s representatives said that they also represented Reprise, so that there was no obstacle to the appeal being continued on this basis.

[8.3] As to this point, the Board makes the following observations:

(a) The essential purpose of appeal proceedings is to decide whether the decision under appeal was correct. In the present case the essential issues decided by the LD and the issues which then became the subject matter in the appeal proceedings were whether the registration of Allergan as applicant should be reversed, and whether the grant proceedings should be resumed on the request of the applicant and, if so, when. Whether grant proceedings should be resumed on the application of another party, being the transferee of the application, was never an issue in the first instance proceedings. Nor until the afternoon of the OPs before the Board was it raised in the appeal proceedings.

(b) In reality, Allergan’s argument amounted to a request for the Board to exercise its discretion to allow Allergan to amend its case at a very late stage of the appeal proceedings by reconstituting the entire proceedings and continuing with the appeal on that basis (see Articles 13(1) and (3) RPBA).

(c) This request was a response to a state of affairs that had been a clear possibility for over three years, namely from 3 August 2011, the date when Ferring first filed its request to reverse the registration of Allergan as applicant […]. However, Allergan at no time took any steps to guard against this possibility by filing auxiliary requests on behalf of Reprise in the proceedings before the LD or in the appeal proceedings. That it is open to a party to guard against such procedural uncertainties is demonstrated by G 2/04:

“... it is an accepted principle in proceedings before the EPO that a party may file auxiliary requests. When used appropriately, such requests do not impede the course of proceedings. Rather, they make clear at an early stage what the fallback positions of a party are and give the adversary and the deciding body the opportunity to be prepared as soon as the respective request becomes relevant. This is the case when the preceding preferred request turns out not to be allowed by the deciding body.” (Point [3.2] of the Reasons)
“If, when filing an appeal, there is a justifiable legal uncertainty as to how the law is to be interpreted in respect of the question of who the correct party to the proceedings is, it is legitimate that the appeal is filed in the name of the person whom the person acting considers, according to his interpretation, to be the correct party, and at the same time, as an auxiliary request, in the name of a different person who might, according to another possible interpretation, also be considered the correct party to the proceedings.” (Point II of the Order)

(d) The Board would not wish to allow purely formal procedural requirements to get in the way of dealing with the substantive issues. However, the correct constitution of proceedings is not a matter of pure formality. It is important that the correct persons are parties to the proceedings so that they are bound by the decision as a matter of res judicata and can, for example, if appropriate, be made the subject of an order to pay costs. Even though Allergan’s representatives stated that they had power of attorney to act also on behalf of Reprise, no formal application in the name of Reprise to join the proceedings was made. In T 1178/04 [46] the decision was reached that the wrong parties were present in the appeal proceedings (a transfer of the opposition status was held by the Board to have been invalid), with the result that the Board felt compelled to remit the case. In T 1982/09, the factual situation was similar in that the Board decided that the opponent status had not been validly transferred but the Board nevertheless felt able to continue the appeal proceedings. But there the representative had reacted appropriately at an earlier stage of the appeal proceedings to this possibility and both parties wanted the Board to go on and decide the substantive issues. The correct opponent was “deemed to have acquired the appellant status” from the wrong opponent as a consequence of the Board having decided that the opponent status was not validly transferred (point 2.2 of the reasons). That is not the position here.

(e) All these considerations point away from allowing Allergan’s request.

[8.4] The Board is in any event not convinced by the central plank of the Allergan’s argument based on the construction of R 14(3). This states:

“Upon staying the proceedings for grant, or thereafter, the EPO may set a date on which it intends to resume the proceedings for grant, regardless of the stage reached in the national proceedings instituted under paragraph 1. It shall communicate this date to the third party, the applicant and any other party. …”

Allergan argues that since this rule refers to “the third party, the applicant and any other party” (“Beteiligte” in the German version of the rule), it must mean that any person may apply for a resumption of the grant proceedings. As to this, the opening wording of the rule (“Upon staying the proceedings for grant, or thereafter, the EPO may set a date on which it intends to resume the proceedings for grant …”) is in fact perfectly general, and indeed appears to contemplate that the EPO may act on its motion (as happened in T 146/82. The Board is not sure who is intended by the reference to “any other party” (see also the reference to “the applicant and any other party” in R 14(2)). In this the Board was not helped by the fact that Allergan’s submission came out of the blue. But it is not necessary to reach any conclusion because it does not follow from this statement about the parties who must be informed about the date of resumption of the grant proceedings that any person has the right to apply for such resumption, and certainly not in the absence of the applicant as party. It also does not mean, as Allergan argued, that the interests of a party such as Allergan (a contractual transferee of the application) will never be taken into account when considering whether to resume grant proceedings: the Board sees no reason why it should not be relevant for the EPO to take such interests into account if it becomes appropriate to weigh up the various interests. (In this respect it should be noted that Ferring reserved the right to argue that it is never appropriate to weigh up the competing interests).

[8.5] For all of these reasons, therefore, and even on the assumption that Allergan’s amendment to its case were to be admitted […], the Board refused to continue the appeal proceedings with the hearing of Allergan’s request, as a “third party”, for immediate resumption of the grant proceedings.

Referral of further questions to the EBA

[9.1] In reaction to the Board’s indication that it did not intend to continue with the appeal proceedings by hearing Allergan’s request to resume the grant proceedings, Allergan filed a request to refer two further questions to the EBA, as follows:

“Can a party other than the applicant (Beteiligter) make a R 14(3) request? 

If the answer to question 2 is no, then if a patent application is transferred during stay of proceedings for grant how are the interests of a good faith recipient of the patent application to be heard by the EPO?”

[9.2] It was said that answers to these questions were needed because a point of law of fundamental importance arose. As to the first question, the issue has arisen not only in the context of the exercise by the Board of its discretion as to the handling of the appeal proceedings but also in the particular and unusual circumstances of the case. As already pointed out, these have arisen partly because the precautionary step of filing auxiliary requests in the name of Reprise was never taken. The Board does not need the answer to such a question in order to deal with this procedural situation. The same answer can be given in relation to the second question which Allergan asks to be referred, which essentially is a rhetorical question in support of its argument on the first question. As stated above (point [8.4], at the end), the refusal to register a transferee as applicant while the proceedings are stayed does not mean that the economic interests of the transferee cannot be taken into account. It is also no undue burden for the transferor to make the transferee’s interests heard while the grant proceedings are stayed. The Board would also point out that (a) it is not the purpose of a reference under A 112(1) for the EBA to give answers to open procedural questions framed in this way and (b) the question is in any event hypothetical since the status of Allergan as “a good faith recipient of the patent application” (whatever this may mean) is not established and is clearly a matter of dispute so far as Ferring is concerned.

Order […]

 The registration of Allergan as applicant is ordered to be reversed. […]

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J 4/10 – Back And Forth

The application under consideration was filed as an international application on April 10, 2002, by Korea Microbiological Laboratories (“KML”), which later became “Komipharm”. The international application mentioned this applicant for all designated states except for the USA, and Messrs Sang Bong Lee and Yong Jin Yang as applicants for the USA only.

In the Power of Attorney dated May 7, 2002, for the representation before all competent authorities KML and Messrs Lee and Yang were indicated as applicants. The written authorisation for the common representative was signed by both Mr Lee and Mr Yang; the latter also signed on behalf of KML in his capacity as President.

With letter dated November 11, 2004, the representative submitted to the EPO two Forms PCT/IB/306 from the International Bureau (hereinafter “IB”) dated 9 November 2004, one of them giving notice of a change regarding the applicant by the IB pursuant to Rule 92bis.1 PCT. According to this notification the two inventors and applicants for the US, Mr Lee and Mr Yang, were now also recorded as applicants for all designated states.

In a letter dated November 27, 2008 a representative appointed by Mr Lee requested the EPO to “update” the EPR entry by adding Messrs Lee and Yang as co-applicants. A copy of the relevant bibliographic data on file at the IB indicating Komipharm, Mr Lee and Mr Yang as applicants, as well as a copy of the Form PCT/IB/306 already submitted to the EPO were attached.

The EPO then notified Komipharm, also having appointed a new representative, of the corrected entries concerning the applicant now including Mr Lee and Mr Yang as co-applicants.

In a letter dated December 3, 2008, Komipharm asserted that a transfer of rights in this patent application had never taken place and requested to revert to entering Komipharm as sole applicant.

The representative of Mr Lee contended that the international patent application was filed mistakenly in the name Komipharm as the sole applicant. He submitted a copy of a contract between the three co-applicants dated May 16, 2005, as well as a translation of the contract as proof of the co-ownership of the two newly added co-applicants.

The Legal Division informed Mr Lee’s representative that the documents submitted as proof for the co-ownership of Mr Lee had not been duly signed by Komipharm.

In his answer, the representative informed the EPO that the contract was stamped by the parties to the contract and that the seal rather than the signature was generally used for formal legal documents in Korea.

By decision of the Legal Division dated 11 August 2009 the request of Komipharm to reverse the entry into the EPR was rejected.

Komipharm filed an appeal against this decision.

In the course of the proceedings before the Board the parties also filed evidence related to a law suit before Korean jurisdictions.

Here is what the Legal Board had to say on this topic:

[4] With its main request the appellant seeks in essence that the entry of Mr Lee and Mr Yang into the European Patent Register (EPR) as co-applicants be reversed. This request is allowable if the registration of Mr Lee and Mr Yang as co-applicants in the EPR as conveyed in the communication of the Legal Division dated 28 November 2008 was contrary to law (points [4.1-6] below), or, if after the entry in the EPR and during the European/Regional phase of the patent application a legal basis for the correction of that entry became apparent (point [5] below).

[4.1] The registration in the EPR of the change concerning the applicants was based on a copy of the Form PCT/IB/306 from the IB dated 9 November 2004, giving notice of the recording of a change concerning the applicant by the IB pursuant to Rule 92bis.1 PCT, whereby Mr Lee and Mr Yang were now recorded as inventors/applicants for all designated states. It was also backed up by a copy of the relevant bibliographic data on file at the IB of the international patent application at issue indicating Komipharm, Mr Lee and Mr Yang as applicants. Both copies were filed with the letter dated 27 November 2008 of the representative of Mr Lee requesting the respective “update” of the EPR.

[4.2] Pursuant to Article 39(1)(b) PCT, A 153 EPC, R 159(1) EPC the present international patent application entered the European phase on 10 November 2004, i.e. 31 months from its international filing date of 10 April 2002. R 159 EPC applies instead of R 107 EPC 1973 according to Article 7 of the Revision Act of 29 November 2000 (OJ EPO 2001, Special Edition No. 4, 50), Article 1(6) of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Revision Act of 29 November 2000 (OJ EPO 2007, Special Edition No. 1, 197) and Article 2 of the Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the EPC 2000 (OJ EPO 2007, Special Edition No. 1, 89).

[4.3] The recording of Mr Lee and Mr Yang as co-applicants by the IB as notified and evidenced by the Form PCT/IB/306 dated 9 November 2004 as well as by the copy of the relevant bibliographic data on file at the IB had therefore still been performed during the international phase of the PCT application and hence before the international application entered the European phase on 10 November 2004.

[4.4] No other information can be obtained when looking at the EPO-Form 1200 “Entry into the European phase (EPO as designated or elected Office)”, signed by the then common representative of Komipharm, Mr Lee and Mr Yang and received by the EPO on 8 October 2004. This Form displays under “1. Applicant: Indications concerning the applicant(s) are contained in the international publication or recorded by the International Bureau after the International publication.” The International Publication took place on 23 October 2003. In the International Publication only KML (predecessor to Komipharm) was indicated as applicant. However, at the time of entry into the European phase on 10 November 2004 Mr Lee and Mr Yang were already recorded as co-applicants as shown by the above-mentioned IB-Form PCT/IB/306 dated 9 November 2004 and by the copy of the relevant bibliographic data on file at the IB. This situation did not change by the 28 November 2008, when the EPO performed and communicated the correction of the applicants as recording Mr Lee and Mr Yang as co-applicants in the EPR.

[4.5] The requirements set out in Rule 92bis.1(a) PCT, the provision governing the recording of a change of i.a. the applicant, have obviously been met. The recording of the change of applicants on 9 November 2004 was requested also on behalf of the registered applicant Komipharm, i.e. of its predecessor Korea Microbiological Laboratories, Ltd., since the request was filed at the IB by the then common representative on record of Korea Microbiological Laboratories, Ltd., Mr Lee and Mr Yang. This prerequisite being met Rule 92bis.1 (a) PCT does not require proof of entitlement regarding the change of applicants in the form of submitting documents.

[4.6] Considering these facts and evidence and in the absence of any clear indication giving rise to considerable doubts that Mr Lee and Mr Yang, from a legal point of view, should not be registered as co-applicants, it was reasonable for the Legal Division to rely on the correctness of the IB Register and the bibliographic data at the IB as submitted by Mr Lee’s representative with the letter dated 27 November 2008. Therefore the correction of the EPR on 28 November 2008 is not to be impugned on that account.

[5] Pursuant to Article 27(2)(ii) PCT, Rule 51bis.1(a)(ii) PCT once the processing of the international application in the national/regional phase has started the designated office may require assignments and additional documents relating to the entitlement to apply for or be granted a patent, provided that the national law provides for a respective legal basis. With regard to the European phase of an international application and the EPO as designated office as in the case at issue R 20 EPC 1973, R 22 EPC respectively, constitute the pertinent legal provisions thereby implementing A 71 and 72 EPC 1973, A 71 and 72 EPC respectively. In the present case R 20 EPC 1973 rather than R 22 EPC applies according to Article 7 of the Revision Act of 29 November 2000 (OJ EPO 2001, Special Edition No. 4, 50), Article 1(1) of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Revision Act of 29 November 2000 (OJ EPO 2007, Special Edition No. 1, 197) and Article 2 of the Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the EPC 2000 (OJ EPO 2007, Special Edition No. 1, 89), albeit these Rules as well as A 71 and 72 EPC are almost identical as regards the substance.

Contract dated 16 May 2005

[5.1] After Komipharm had objected to the entry of Mr Lee and Mr Yang as co-applicants in the EPR arguing that there was no legal basis for the registering of either of the additional parties as co-applicants Mr Lee submitted with letter dated 19 December 2008 a copy and a translation of a contract dated 16 May 2005 between Komipharm, Mr Lee and Mr Yang as evidence of the co-ownership of the two newly added co-applicants.

[5.2] There is still reasonable doubt whether the seal, which according to Mr Lee’s submission is generally used rather than the signature for formal legal documents in Korea, and whether the filing of a translation of the notarization of the stamps by a public notary law firm as part of the contract are sufficient to the requirements of A 72 EPC 1973 (assignments in writing and signature of the parties) at all. However, this does not need to be decided by the Board in the present case, since the contract dated 16 May 2005 cannot be regarded as adequate proof of the entitlement of Mr Lee and Mr Yang to be registered as co-applicants of the patent application at issue by virtue of their original status nor by transfer of rights. On the contrary and thereby for the moment leaving out of consideration the fact that the Seoul High Court Civil Court held with judgement of 30 June 2011 that the agreement of 16 May 2005 was null and void […] this document apart from the reasons given in that judgement raises such serious doubts as to the entitlement of Mr Lee and Mr Yang to be recorded as co-applicants that the entry in the EPR should have been reversed.

[5.3] First of all the contract of 16 May 2005 cannot per se serve as evidence of the request for registration as co-applicants directed to the IB in November 2004, since it was apparently concluded only six month later without any discernible retroactive effect.

[5.4] Neither can the contract substantially be regarded as a legally valid basis for a subsequent transfer of rights to Mr Lee and Mr Yang nor as an entitlement to be registered as co-applicants of the patent application at issue. R 20 EPC 1973 requires that the documents produced as evidence of a transfer of rights must directly verify the transfer which already took place (J 38/92 and J 39/92 [2.3-4]). Documents only establishing the obligation to assign rights but not constituting the assignment itself do not comply with Rule 20 EPC 1973 (J 12/00 [2,14]).

Regarding the contract of 16 May 2005 as filed by Mr Lee’s letter dated 19 December 2008 the respective chapter “C. (Co-ownership …) 2.” (No. 2 of annexes Catalog of applied patent indicating the PCT application at issue) at most constitutes a legal obligation to transfer rights concerning the PCT application where, as in the case under consideration, the application was filed only by one of the contracting parties. A direct transfer of rights from Komipharm to Mr Lee and Mr Yang as required by Rule 20 EPC 1973 cannot be inferred from this passage of the contract.

Korean Judgements

[5.5] Considering the comments in Mr Lee’s letter dated 13 June 2011 on the inconsistencies and contradictions between the submissions of the parties and the judgements of the Seoul Central District Court of 20 May 2010 with regard to the Co-Ownership Agreement as set out in the Board’s communication dated 21 April 2011 the Board has no occasion to change its opinion. However, this issue finally is quite immaterial for the present decision of the Board for the reasons given below (points [5.6, 5.8]).

[5.6] The letter dated 13 June 2011 was filed by Mr Lee himself rather than by his professional representative. As correctly argued by the appellant in its letter dated 1 August 2011 according to A 133(2) EPC a natural or legal person without a residence or principal place of business within the territory of one of the contracting states must act through a professional representative in all proceedings established by this Convention with the exception of filing the European patent application. Mr Lee’s address is in Korea, thus not within the territory of one of the contracting states. Therefore, the requests and arguments contained in Mr Lee’s the letter of 13 June 2011 would have had to be submitted by the professional representative. As these submissions were made neither by Mr Lee’s representative nor endorsed by him, the Board following the jurisprudence of the Boards of Appeal cannot take them into consideration (see T 213/89 [2]; T 717/04 [1]).

[5.7] The same legal consequence applies with regard to the contention of Mr Lee in his letter of 13 June 2011 that the agreement of 16 May 2005 was submitted “as an evidence of co-applicant” and not “as an evidence of transfer of patent rights” and that a transfer of rights had never happened. For the sake of argument only the Board points out that if the agreement of 16 May 2005 was submitted “as an evidence of co-applicant” and a transfer of rights had never happened this allegation as far as proceedings before the EPO are concerned could only be relevant with respect to a procedure pursuant to A 61 EPC, R 14 EPC. However, entitlement procedures according to A 61 EPC, R 14 EPC have not yet been initiated with regard to the patent application at issue.

[5.8] Finally the appellant has put forward another serious reason why the agreement of 16 May 2005 cannot be regarded as appropriate and sufficient proof of a legally valid transfer of rights in terms of the patent application underlying the present appeal proceedings and thus of an entitlement of Mr Lee and Mr Yang to be registered as co-applicants. With letter dated 1 August 2011 the appellant filed a certified translation of the judgement of the Seoul High Court Civil Court of 30 June 2011 which is a judgement on the appeals from the judgements of the Seoul Central District Court of 20 May 2010 […]. This appeal judgement materially altered the first instance rulings, particularly in holding that the agreement of 16 May 2005 was null and void due to the fact that the Joint Ownership Agreement was not approved by the board of directors. The Seoul High Court Civil Court further stated that the claims which are based on the effectiveness of the Joint Ownership Agreement are groundless.

[5.9] Consequently, this agreement which was the only document submitted that, by itself, met the requirements of Article 27(2)(ii) PCT and Rule 20 EPC 1973 and which also formed the main legal basis of the judgements of the Seoul Central District Court of 20 May 2010, can no longer be regarded as evidence in favour of Mr Lee and Mr Yang for any rights to the present patent application nor as entitlement to be recorded as co-applicant in the EPR.

[6] For the time being the EPO was correct in recording Mr Lee and Mr Yang as co-applicants on 28 November 2008 relying on the documents issued and provided by the IB and available at that time.

However, the documents, i.e. the agreement of 16 May 2005 and the judgements of the Seoul Central District Court and the Seoul High Court Civil Court filed subsequently during the regional phase before the EPO according to Article 27(2)(ii) PCT, R 20 EPC 1973 do not provide evidence that a transfer of rights in favour of Mr Lee and Mr Yang actually occurred nor that they were co-owners of the present patent application. This applies even more considering that the Seoul High Court Civil Court as the final instance held that the agreement of 16 May 2005 is null and void and of no effectiveness. Therefore the recording of Mr Lee and Mr Yang as co-applicants in the course of the proceedings before the EPO has proved to be unsustainable. Consequently the request of the appellant to reverse the entry in the EPR of Mr Lee and Mr Yang as co-applicants and to revert to Komipharm as sole applicant is allowable. […]

The case is remitted to the […] Legal Division with the order to delete the entry of Mr Lee and Mr Yang as co-applicants from the EPR.

Should you wish to download the whole decision, click here.

The file wrapper can be found here.

T 2232/08 – An Error With Consequences

This decision deals with an appeal against the decision of the Opposition Division (OD) to revoke a patent belonging to the MS Development (“MS”) company. In the notice of appeal, the professional representative indicated that the Zurflüh Feller (“ZF”) company was the new patent proprietor and requested its entry into the European Patent Register, based on the enclosed deed of assignment (acte de cession). This deed concerns the transfer of 201 shares representing the total capital (capital social) of the MS company.

The question arose as to whether the appeal was admissible.

The appellant argued that the intention clearly was to file the appeal in the name of ZF. The entry of the transfer had been notified to the professional representative on December 17, 2008, indicating November 25, 2008, i.e. the date on which the request for entry into the Register and the notice of appeal were received at the EPO, as the effective date.

The opponent submitted that the deed of assignment only concerned the shares (parts sociales) of the MS company and did not prove that the patent had been transferred because the legal entity (personne morale) of the patent proprietor still existed on the date on which the appeal was filed. Therefore, according to the opponent, the appeal was filed by a company different from the patent proprietor and had to be declared inadmissible.

What did the Board conclude?

*** Translated from the French ***

Admissibility

[1] It is established and undisputed that the appeal was filed in the name of ZF on November 25, 2008.

From on the deed of assignment and the copy of the excerpt from the commercial register, which have been filed by the parties, one can see that the assignment concluded between the proprietors of the totality of the shares of the MS company on the one hand and the ZF company on the other hand only concerned the shares of the patent proprietors, i.e. the control of the company, but that the legal entity of the patent proprietor still existed at the date on which the notice of appeal was filed. There was no other document providing evidence for the transfer of the patent.

As a consequence, the Board is of the opinion that the entry of the change of proprietor should not have been made and has to be cancelled.

Hence it has to be examined whether the appeal filed in the name of ZF is admissible.

A 107 provides, inter alia, that only parties to the proceedings that have led to the impugned decision can validly file an appeal. In this context, “party” is to be understood as meaning a person that has taken part in the proceedings before the EPO. Although a party may cease to be a party if it is decided that it is not entitled to take part in the proceedings, this does not mean it never was a party, only that it is no longer entitled to take part in the proceedings. In other words, its position cannot change retrospectively from that of having been a party to that of never having been a party (T 1178/04 [3] and T 1081/06 [3]).

In the present case, the entry of the transfer of the patent from the original patent proprietor MS to the appellant ZF has become effective on November 25, 2008, the day on which the notice of appeal was filed.

Consequently, the appellant was a party to the proceedings within the meaning of A 107 when it filed the notice of appeal. The fact that the transfer was entered into the Register erroneously (sur base erronnée) cannot mean that ZF was not party to the proceedings on the day on which it filed its notice of appeal (T 1178/04 [4] and T 1081/06 [3]).

Thus the Board considers that the appeal is admissible.

Continuation of the proceedings

[2] In the present case the transfer has been entered into the Register during the appeal proceedings only. Thus the entry did not affect the decision of the OD and a remittal to the first instance on this basis is not justified (as opposed to T 1178/04 [43-47]).

As far as the appeal proceedings are concerned, they have been initiated and pursued by the professional representative having taken part in the whole proceedings starting with the filing of the patent application, and who has also declared in his letter dated November 9, 2010, that he also represented the interests of the MS company. This assertion has not been contested by the [opponent] and the Board has no reason to challenge it.

In the light of these elements, the Board considers itself able to continue the proceedings dealing with substantive matters (au fond), including the arguments submitted by the professional representative of the [patent proprietor].

The situation is somewhat weird. Had the EPO refused to enter the transfer into the Register, as it should have, the appeal would have been inadmissible. But as it did enter it, the appeal was found admissible. Once the entry is canceled, who is party to the proceedings? MS again? What if it does not exist any more? This could have raised difficult questions had the Board decided to remit the case.

This being said, in the end all those considerations had no practical consequences because the appeal was finally dismissed: the claimed subject-matter had been found to lack novelty.

To download the whole decision (in French), click here.

The file wrapper is found here.

NB: Laurent Teyssèdre also comments this decision (here).

T 128/10 - No Money No Transfer

This decision deals with the revocation of a patent - owned by XIRING - by the Opposition Division (OD) and the subsequent appeal, filed on behalf of Gemalto SA (hereinafter referred to as “alleged appellant”). The appeal fee was paid on January 22, 2010. An assignment document signed by Gemalto SA as transferee and XIRING as assignee was produced with the notice of appeal.

On February 16, 2010 the EPO drew attention to deficiencies in the “request dated 23 January 2010” for entry of a change in the European Patent Register (EPR) concerning the name of the patent proprietor. In particular, the administrative fee pursuant to R 22(2) had not yet been paid. It was requested to remedy the deficiency within a period of two months from notification of the communication.

The administrative fee was paid on February 25, 2010.

A statement setting out the grounds of appeal was filed on March 10, 2010.

The opponent submitted that the appeal should be held inadmissible as Gemalto SA was not entitled to file the appeal.

On September 21, 2010 correction of the name of the appellant was requested. Moreover, an accordingly amended notice of appeal was filed on behalf of XIRING against the decision of the OD.

During oral proceedings before the Board, the alleged appellant requested that the appeal be found to be admissible. According to it, paragraphs 1 and 2 of R 22 concerned the registration of a transfer in the EPR, thus information for third parties. Conversely, paragraph 3 related to the effect of a transfer vis-à-vis the EPO. R 22 thus dealt with the conditions for recording a transfer in the EPR so that the transfer became available to the public and, moreover, the condition for a transfer having effect vis-à-vis the EPO. These two situations were different and should not be mixed up.

As an auxiliary request, the alleged appellant that the following point of law be referred to the Enlarged Board of Appeal (EBA):

“Is it sufficient to provide documentary evidence in relation to the transfer of a patent under appeal which was in fact submitted before the expiry of the period for filing the notice of appeal, according to R 20(3) [EPC 1973] or 22(3) [EPC], so that a transfer shall have effect vis-à-vis the EPO? If yes, is the appeal receivable? If No, should the Board of Appeal have drawn attention of the appellant on incorrect designation of the Appellant and have invited the representative to modify the incorrect designation of the Appellant?

Is there in EPC 1973 or 2000, a Rule stating that to be an entitled-Appellant you should be recorded on the Register of European Patent, and in such case what is the utility of R 22(3) [EPC]?”

The opponent requested that the appeal be rejected as inadmissible or, as an auxiliary request, that the following point of law be referred to the EBA:

“Can the unambiguous identification of a non-party as the appellant in a notice of appeal be considered an error for which correction under R 101(2) or R 139 is available, if said non-party is a purported transferee of the European patent for which, at the expiry of the period for filing the notice of appeal, documentary evidence had been submitted but the requirements of R 22(2) had not been fulfilled?”

Here is what the Board had to say:

Preliminary remarks

[1] According to the European Patent Bulletin 2005/32 of 10 August 2005 and the decision of the opposition division of 27 November 2009, XIRING was the patent proprietor. The notice of appeal of 23 January 2010, however, was filed on behalf of Gemalto SA. [...]

R 22

[3.1] The procedure for recording the transfer of a European patent in opposition appeal proceedings is defined by R 22 in connection with R 85 and R 100(1).

[3.2] According to R 22(1) in conjunction with R 85 the transfer of a European patent shall be recorded in the EPR “at the request of an interested party, upon production of documents providing evidence of such transfer.”

It should be noted that the request of the party and the production of documents are conditions sine qua non for recording the transfer. However, paragraph 1 does not require that the request be filed and the documents be produced at the same date.

In the present case, on 24 January 2010 the alleged appellant filed the notice of appeal dated 23 January 2010, produced an assignment document at the same time, but failed to file a request for transfer of the patent as required by R 22(1). The official communication of 16 February 2010, however, includes the mention of a “request dated 23 January 2010”. In view of the fact that the only document on file bearing the date of 23 January 2010 is the notice of appeal, the Board assumes that the Client Data Registration considered the production of the assignment document with the notice of appeal as an implicit request for recording a transfer of the patent in the EPR. Since A 22(1) does not require a particular form of the request, the Board has no reason to disagree with the view of the Client Data Registration.

[3.3] According to R 22(2) “The request shall not be deemed to have been filed until an administrative fee has been paid.”

It is not required that the request for transfer be filed and the administrative fee be paid on the same date. In the case that these actions are performed on different dates, the date of payment of the fee prevails over the date of filing the request.

In the present case, the administrative fee was paid on 25 February 2010. It follows that the request implicitly filed on 24 January 2010 with the notice of appeal was not deemed to have been filed until 25 February 2010.

[3.4] Pursuant to R 22(3) “A transfer shall have effect vis-à-vis the EPO only at the date when and to the extent that the documents referred to in paragraph 1 have been produced.”

Paragraph 3 regulates the date on which the transfer becomes effective vis-à-vis the EPO. The wording “only at the date when and to the extent that the documents referred to in paragraph 1 have been produced” makes any earlier date mentioned in the assignment document obsolete from the viewpoint of the EPO. The earliest date on which the transfer may take effect vis-à-vis the EPO is the date on which the documentary evidence has been produced. Of course, a prerequisite for the transfer to become effective is that a request for recording the transfer has been made. This request is only deemed to have been filed when the requirement of paragraph 2 has been fulfilled.

[3.5] In summary, according to R 22 in conjunction with R 85, the procedural requirements to be fulfilled for recording the transfer of a patent consist in the filing of a request of the interested party, the production of documents providing evidence of the transfer, and the payment of an administrative fee. These requirements do not need to be fulfilled at the same time. If they are met on different dates, the transfer shall only have effect vis-à-vis the EPO at the date on which all the requirements mentioned above are fulfilled. Indeed, only at this date it is ensured that all the requirements of R 22 are met.

This interpretation of R 22 is commonly accepted in the legal literature (Singer/Stauder, Europäisches Patentübereinkommen, Fifth Edition, 2010, Art 71, margin No. 12; Visser, The annotated EPC, updated till 15 November 2009, R 22, page 404).

It is also consistent with the official line adopted by the EPO (Guidelines for Examination in the EPO, December 2007 and April 2010, E-XIII, 1) and the jurisprudence of the boards of appeal (Case Law of the Boards of Appeal of the EPO, December 2006, VII.D.5.2.2 and July 2010, VII.C.5.2).

[3.6] In the present case, this means that the provision of R 22(3) cannot lead to the conclusion that the transfer would have effect at the date, 24 January 2010, on which the notice of appeal with the enclosed copy of the assignment document was received. Rather, according to R 22(2), until the administrative fee has been paid, no request may be deemed to have been filed. Hence, despite the fact that the representative of the appellant Gemalto SA did not explicitly request the registration of the transfer of the patent in the notice of appeal, the Client Data Registration correctly concluded in the communication of 1 April 2010 that the registration had taken effect vis-à-vis the EPO on 25 February 2010, the date on which the administrative fee had been paid.

[3.7] The alleged appellant’s interpretation of R 22 is in evident disagreement with the commonly accepted construction of the legal norm from which there is no reason to depart.

Moreover, it is not convincing. Indeed, it is based on the artificial assumption that paragraphs 1 and 2 of R 22 should concern the effect vis-à-vis third parties, whereas paragraph 3 should be considered in isolation and have application vis-à-vis the EPO.

As the EBA stated in G 2/04 [2.1.2], 

“Legal certainty requires that it is clear at any given time who the parties to the proceedings are” (Reasons, [2.2.2(a)]). Moreover, “In the case of the proprietor, the industrial property right may be transferred and such transfer may have effect vis-à-vis the EPO if it is registered in accordance with R 61 in conjunction with R 20 EPC [1973]. This allows the new proprietor to defend his patent in opposition proceedings before the EPO. Hence, the procedural status of the proprietor cannot be transferred without the substantive title”.

Therefore, the EPO registers the transfer of a patent to a new proprietor during the opposition period or during opposition procedure (R 85) or a possible subsequent appeal procedure (R 100(1)). The EPO will regard the new proprietor as a party to the proceedings only if it is duly recorded as such, that is if the formalities as laid down in R 22 have been completed. If the new proprietor wishes to participate in proceedings before the EPO, the registration under R 22 is mandatory and allows a precise and simple determination of the parties, thus avoiding that the EPO is involved in complicated investigations as to the relations between a recorded party and an alleged successor.

The alleged appellant’s argumentation fails to appreciate this aim of R 22. Even if its view would be accepted, which it is not, and assuming for the sake of argument that the EPO could be considered as a “third party” in transactions between an assignee and a transferee, the provisions for having effect vis-à-vis third parties, thus paragraphs 1 and 2 of R 22 in the alleged appellant’s view, would have to be applied together with those of paragraph 3 with respect to the effect vis-à-vis the EPO, as the [opponent] submitted. This would lead to the conclusions drawn above by the Board.

[3.8] In conclusion, the Board is of the view that the effective date of transfer of the patent to Gemalto SA is the date of payment of the administrative fee pursuant to R 22(2), which falls outside the period for filing a notice of appeal as laid down in A 108. Thus, the appeal was not filed by a party to the proceedings which led to the decision under appeal. It follows that the [opponent’s] conclusion that the appeal filed on 24 January 2010 in the name of Gemalto SA should be rejected as inadmissible (R 101(1)) is correct.

[3.9] With regard to the amended notice appeal lodged on 21 September 2010 on behalf of XIRING, it must also be rejected as inadmissible (R 101(1)) because it was not filed within two months of notification of the decision of the opposition division (A 108). Moreover, on 21 September 2010 XIRING was no longer adversely affected by the decision under appeal (A 107) because the transfer of the patent to Gemalto SA became effective vis-à-vis the EPO on 25 February 2010.

The cited jurisprudence

T 656/98 

[4.1.1] In T 656/98 the board was confronted with the fact that the representatives on record for the patent proprietor Genencor Inc filed on 30 June 1998 a notice of appeal on behalf of “The proprietor: Genencor International Inc”. The appellant stated the patent had been transferred from Genencor Inc to its associated company, Genencor International Inc, before the appeal was filed. With a letter of 4 November 1998, received on 6 November 1998, a certified copy of the assignment of the patent from Genencor Inc to Genencor International Inc was filed. The transfer fee was also paid. The EPO recorded the transfer of the patent with effect from 6 November 1998. An opponent (respondent) objected that the appeal was inadmissible on the ground that at the time of filing the appeal the appellant was not a party to the proceedings. The board rejected the appeal as inadmissible.

[4.1.2] The alleged appellant held that the facts underlying T 656/98 and the present case were different.

First, in T 656/98 the document providing evidence of the transfer was not produced with the notice of appeal.

Second, Genencor Inc did not exist anymore at the date of the appeal in T 656/98, whereas XIRING still existed in the present case on 24 January 2010.

Moreover, in T 656/98 the representative of Genencor Inc received a communication from the board of appeal, dated 9 September 1998, querying the fact that the name and address on record at the EPO were not those stated for the appellant. The representative thus had an opportunity to clarify the situation and to confirm the intention to designate Genencor International Inc as the appellant. In the present case, however, the representative of the alleged appellant did not receive the Board’s communication dated 2 September 2010 until 8 September 2010 indicating a deficiency concerning the name of the appellant. A correction was then requested (R 101(2)).

[4.1.3] The mentioned differences are not sufficient for regarding T 656/98 as irrelevant. Quite on the contrary, in both the present case and T 656/98 a notice of appeal was filed designating as the appellant a patent proprietor who differs from the proprietor recorded in the EPR. Moreover, for a decision to be considered relevant, it is not mandatory that all the facts are identical.

[4.1.4] In T 656/98 [headnote] the board held that

“For a transferee of a patent to be entitled to appeal, the necessary documents establishing the transfer, the transfer application and the transfer fee pursuant to R 20 EPC [1973] must be filed before the expiry of the period for appeal under A 108 EPC [1973]. Later recordal of the transfer does not retroactively validate the appeal”.

In the present case, the Board has no reason to depart from these conclusions which, as already stated above, are consistent with the official line adopted by the EPO and the jurisprudence of the boards of appeal.

[4.1.5] As already mentioned above, the alleged appellant also submitted that, unlike in case T 656/98, the deficiency concerning the name of the appellant in the notice of appeal of 23 January 2010 had not been notified until the Board sent the communication of 2 September 2010.

This submission is not correct, as the [opponent] noted. Indeed, the Client Data Registration sent the communication of 16 February 2010 in which the alleged appellant was informed of a deficiency in the request under R 22 and was invited to correct it. The deficiency was identified as non-payment of the administrative fee under R 22(2). The alleged appellant reacted by paying the due fee on 25 February 2010.

Moreover, attention is drawn to the fact that the Client Data Registration sent the further communication of 1 April 2010 informing that the registration of the transfer had taken effect on 25 February 2010, i.e. after the expiry of the period for filing a notice of appeal under A 108. The alleged appellant did not reply to this communication, although it had been informed of the EPO’s interpretation of the requirements according to R 22 in the communication of 16 February 2010 and thus had been made aware of the legal consequences.

T 15/01 

[4.2.1] In T 15/01 the board distinguished between the situation where a party acquired a patent through a transfer and through a merger. It held that

“R 20(3) EPC [1973] does not apply in the context of universal successions in law. The universal successor of a patent applicant or patentee automatically acquires party status in proceedings pending before the EPO” [headnote, II].

[4.2.2] T 15/01, cited by the alleged appellant, does not apply to the present case because the document, produced with the notice of appeal of 23 January 2010, provides evidence of the transfer of the patent and its American and Canadian members of the same patent family from XIRING to Gemalto SA. There is no evidence of a merger behind this transfer.

[4.2.3] Therefore, the Board concludes that R 22(3) applies in the context of the present case.

Correction of the appellant’s name in the notice of appeal

[5.1] The alleged appellant submitted that it was its true intention to file the appeal of 23 January 2010 in the name of the patent proprietor, but it was neglected to indicate XIRING as the appellant until the registration of the transfer of the patent took effect vis-à-vis the EPO. In such a case, a correction of the appellant’s name in the notice of appeal should be possible.

[5.2] In T 97/98 an appeal in the name of Fresenius AG was lodged against a decision of the opposition division to maintain the patent in an amended form. Later on the appellant submitted that Fresenius AG was erroneously indicated in the notice of appeal as being the name of the opponent. The true intention was to file the appeal in the name of Fresenius Medical Care Deutschland GmbH. Correction of the appellant’s name was requested.

Thus, the situation was that on expiry of the time limit under A 108 EPC 1973 the appeal did not expressly indicate the true name of the person in whose name the appeal was intended to be filed. In the board’s view 

“What is required under R 64(a) and R 65(2) EPC [1973] 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” [1.3].

The board then concluded that “correction of the name of the appellant to substitute a natural or legal person other than the one indicated in the appeal is allowable under R 65(2) EPC [1973] in conjunction with R 64(a) EPC [1973], if it was the true intention to file the appeal in the name of said person and if it could be derived from the information in the appeal, if necessary with the help of other information on file, with a sufficient degree of probability that the appeal should have been filed in the name of that person” ([1.4; headnote]).

[5.3] It should be noted that the conclusions drawn in T 97/98 are endorsed by the EBA in G 2/04. In particular,

“Considering the overriding interest that a party must be identifiable”, the EBA saw “no reason for a broadening of the scope of application of R 65(2) or R 88, first sentence, EPC [1973]” ([3.1]).

[5.4] In the present case, the alleged appellant itself declared that it was its true intention to file the appeal of 23 January 2010 on behalf of Gemalto SA which in its view was the patent proprietor at the filing date of the appeal. According to T 97/98, in such a situation, there is no deficiency in the notice of appeal concerning the name of the appellant which may be remedied in accordance with R 99(1)(a) in conjunction with R 101(2) nor an error which may be corrected pursuant to R 139, first sentence. Thus, the Board agrees with the [opponent’s] submissions.

Auxiliary requests for referring points of law to the EBA

[6.1] Pursuant to A 112(1)(a), “in order to ensure uniform application of the law”, or “if a point of law of fundamental importance arises”, the Board of Appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required for the above purposes. If the Board of Appeal rejects the request, it shall give the reasons in its final decision.

[6.2] In the present case, the alleged appellant’s auxiliary request essentially concerns the interpretation of the requirements of R 22 and the correction of the designation of the appellant in the notice of appeal. Since the jurisprudence of the boards of appeal with regard to both issues is consistent, there is no need to refer a question to the EBA to ensure uniform application of the law. In view of this, the Board does not see that a point of law of fundamental importance arises, that would need a clarification by the EBA.

Therefore, the alleged appellant’s auxiliary request is not allowable.

[6.3] As the [opponent’s] main request is allowable, the [opponent’s] auxiliary request need not be considered. [...]

The appeal is rejected as inadmissible.

To have a look at the whole decision, just click here.

The file wrapper can be found here.

NB: This decision has been discussed on the Blog du droit européen des brevets.