T 1426/13 - Opposition and straw man

EPO T 1426/13

For the decision, click here (stated publication date 23.07.2015)

Key points

• The opposition was filed by a German "Gesellschaft bürgerlichen Rechts" (GbR). An issue was whether this was a legal entity capable of being opponent. According to the Board, this is possible, even though a GbR is not registered in a public register. 
• Another issue was that the (notice of) appeal was filed with a different name as used in the notice of opposition. Evidence of the name change was filed only later during the appeal procedure.
• The Board: "The board concludes that the appeal was filed by the same legal entity as the opposition. Consequently, the appeal was admissible when it was filed. In view of the name change from "[X] GbR" to "[X] Patent- und Rechtsanwälte", the appellant was correctly identified when the appeal was filed and there is no need to correct its name."

Reasons for the Decision

1. Representation

The patent proprietor had raised an objection concerning the opponent's representation during the written appeal proceedings which was withdrawn at the oral proceedings before the board. The board did not see any reason to pursue the issue of its own motion. The opponent/appellant has, throughout the whole opposition and appeal proceedings, always been represented by Mr. [S] who may, as a professional representative, represent any party in any proceedings before the EPO. The board has not seen any reason to request an authorisation in view of the decision of the President of the EPO dated 12 July 2007 on the filing of authorisations (OJ EPO Special edition No. 3/2007, 128). It is irrelevant whether Mr. [S] could also act for the legal entity "Isarpatent GbR" by virtue of his role in this legal entity. It is equally irrelevant whether Mr. [S] was or is a member of any association of representatives (Rule 152(11) EPC) which may be related to the opponent/appellant.

2. Admissibility of the opposition

2.1 Identity of the opponent when the notice of opposition was filed

2.1.1 The notice of opposition was filed on 23 December 2011 on behalf of "Isarpatent GbR" (see above point II), said denomination appearing as "isarpatent GbR" on Form 2300E and as "Isarpatent GbR" on the accompanying letter explaining the grounds on which the opposition was based. Any "Gesellschaft bürgerlichen Rechts" ("GbR") may, under German law, be a party to legal proceedings, both actively (e.g. as a plaintiff or claimant) and passively (e.g. as defendant or respondent), even though a GbR is not registered in any public register (see patent proprietor's letter of 6 March 2015, pages 6/7). It has not been contested that a "GbR" existing under German law may act as an opponent in proceedings before the EPO. An opposition under Article 99 EPC may be filed by "any body equivalent to a legal person by virtue of the law governing it" (G 3/99, OJ EPO 2002, 347, point 9).

2.1.2 The board notes that the lack of public registration may contribute to some uncertainty or even confusion about the name (including its spelling) and/or the identity of a GbR at specific points in time. However, the EPO has to accept the fact that such unregistered legal entities lawfully exist and may be a party in any proceedings before the EPO. Any evidence provided with respect to the details of the GbR relevant to the present case had to be evaluated in accordance with the principle of free and unfettered consideration of evidence (see e.g. T 482/89, OJ 1992, 646).

2.1.3 The patent proprietor argued that it was not clear whether Isarpatent GbR or Reinhard Skuhra Weise & Partner GbR as a legal entity or even a group of natural persons was acting as opponent. It also argued that it was not clear who was a member of Isarpatent GbR when the opposition was filed.

2.1.4 When the opposition was filed, "Isarpatent GbR" (or "isarpatent GbR") - and no other person or legal entity - appeared as opponent on all documents filed (above point 2.1.12.1.1 ). From these references, it must have been concluded at the time of filing the opposition that a legal entity using the name "Isarpatent GbR" was the opponent.

2.1.5 The reference to "Reinhard Skuhra Weise & Partner GbR" on the letterhead was explained by the opponent as a reference to the former name of the same GbR. The board is convinced that this is correct. As there is no official registration of the GbR that could be used to verify the details of such legal entity, the board has to rely on the parties' assertions and the documents issued by the opponent. The documents filed with the opponent's letter dated 2 April 2015 [...] clearly show that the members of Reinhard Skuhra Weise & Partner GbR (RSW) intended to continue and continued the GbR as "Isarpatent GbR" without changing the identity of the GbR (see, in particular, the reference "vormals RSW" in Annex 4, preamble). The name change occurred before the opposition was filed (Annex 3 dated 9 December 2011). However, even if "Reinhard Skuhra Weise & Partner GbR" was another entity than Isarpatent GbR, it would still be clear from the documents filed on 23 December 2011 that only "Isarpatent GbR" could be the opponent because it was easy to distinguish between the references to the opponent and the letterhead of the opponent's representative (which is irrelevant for the identification of the party represented).

2.1.6 Under these circumstances, it is clear to the board that no other entity than Isarpatent GbR could have been the opponent. The opposition was therefore admissible when it was filed.

2.2 Identity of the opponent during the proceedings before the opposition division

2.2.1 Subsequent facts, in particular the admission of new members to the legal entity Isarpatent GbR, did not change the identity of said entity either. It is very common for a GbR to have changes in its membership, subject to the terms and conditions set forth by the contracts establishing the GbR. From the extracts from the "Sozietätsvertrag" (Annexes 1 and 4 to the letter of 2 April 2015) the board understands that the members of Isarpatent GbR wished to continue the identity of the GbR regardless of the retirement or admission of individual members. In particular, the preamble of the "Sozietätsvertrag" of 23 March 2012 (Annex 4) refers to the admission of a new member to the GbR (not to the establishment of a new GbR) and indicates that the contracts of 2005 and 2006 - establishing the GbR - were still valid. It must be concluded that the identity of the GbR did not change when Mr. Hecht joined the GbR.

2.2.2 Consequently, the admissibility of the opposition was not affected by any changes in the composition of the GbR after the opposition had been filed. The board agrees with the patent proprietor that it was not possible to find out who was a member of the GbR at a specific point in time, either from any letterhead or from any public register. However, the opposition was filed by a legal entity in its own right, and the legal entity (GbR) may be held liable for its obligations, including costs which might be awarded to another party in opposition proceedings before the EPO (see the patent proprietor's letter of 6 March 2015, pages 6/7), which means that it is not necessary to determine the individual members should this party be liable for costs. The present case therefore differs from the facts underlying decision T 482/02, where it remained unclear whether the party was a legal entity or a group of natural persons.

3. Admissibility of the appeals

3.1 Appeal of the patent proprietor

That the patent proprietor's appeal is admissible has not been contested(see above point V).

3.2 Appeal of the opponent

3.2.1 The admissibility of the opponent's appeal has been contested by the patent proprietor, on the ground that the appellant was not identical to the opponent who was adversely affected by the decision under appeal.

3.2.2 The decisive issue is whether the party filing the appeal was identical to the opponent. If the appellant was not identical to the opponent, this party could not be adversely affected by the decision under appeal and the appeal would be inadmissible.

3.2.3 The appeal was filed on behalf of "ISARPATENT Patent- und Rechtsanwälte" whereas the decision under appeal concerned "isarpatent GbR" (patent proprietor's letter of 6 March 2015, page 14). The denomination "ISARPATENT Patent- und Rechtsanwälte" already appeared on Form 2300E when the opposition was filed under the heading "Representative", together with the name of the representative (Mr. S) and the reference to the association of representatives No. 73 who may have been registered under the name "Isarpatent" or "Isarpatent Patent- und Rechtsanwälte". In any case, as a legal entity may not act as a representative, the reference on Form 2300E can only mean that the opponent was represented by Mr. S or any other professional representative in association No. 73. It does not contain any information on the relationship between "Isarpatent GbR" and "Isarpatent Patent- und Rechtsanwälte".

3.2.4 The notice of appeal and the statement setting out the grounds of appeal referred to "ISARPATENT Patent-Rechtsanwälte" as "Opponent and Appellant". The documents filed by the opponent with its letter dated 2 April 2015 show that the GbR formerly named "Reinhard, Skuhra Weise & Partner GbR" ("RSW") had called itself "isarpatent Patent- und Rechtsanwälte" at least since March 2012 (see Annex 2, § 1(1) and Annex 4, preamble and § 1.2). It appears that the Oberlandesgericht München has accepted that the two entities are identical (Annex 2).

3.2.5 It may well be that the denomination "Isarpatent" or "Isarpatent Patent- und Rechtsanwälte" has been used for different groups of natural persons (e.g. group of persons listed on the letterheads, group of professional representatives registered as association No. 73) and even as a trademark. However, it is clear from the documents filed with the patent proprietor's letter of 2 April 2015 that "Isarpatent Patent- und Rechtsanwälte" was also the name of the GbR formerly called "Reinhard, Skuhra Weise & Partner GbR" (see above point 3.2.43.2.4 ). There is no support for the argument that the appeal may have been filed on behalf of a group of natural persons, and there is no indication for the co-existence of two legal entities (GbRs) at any time. On the contrary, the fact that the professional business had to be carried out exclusively with in the framework of the GbR (Annex 1, § 2(1)) supports the argument that there was only one GbR at any time.

3.2.6 From the above, the board concludes that the appeal was filed by the same legal entity as the opposition. Consequently, the appeal was admissible when it was filed. In view of the name change from "Isarpatent GbR" to "ISARPATENT Patent- und Rechtsanwälte", the appellant was correctly identified when the appeal was filed and there is no need to correct its name.

3.2.7 In the meantime, the opponent/appellant has been converted into a registered "Partnerschaftsgesellschaft mit beschränkter Berufshaftung" while keeping its identity ("identitätswahrender Formwechsel"). The signatories of the decision establishing "isarpatent - Patentanwälte Behnisch Barth Charles Hassa Peckmann und Partner mbB" are identical to the signatories of the "Sozietätsvertrag" of 23 March 2012 (Annexes 4 and 5 to the patent proprietor's letter of 2 April 2015).

3.2.8 As the identity of the opponent/appellant did not change at any time during the entire opposition and appeal proceedings, the admissibility of the opposition and the appeal was not affected by the name changes and there was no transfer of the opposition or other event requiring additional procedural steps. Since the opponent/appellant has not requested the registration of its latest name change and since it is clear that the present decision is binding for "isarpatent - Patentanwälte Behnisch Barth Charles Hassa Peckmann und Partner mbB" even though it refers to "Isarpatent Patent- und Rechtsanwälte", the board does not see a need to take any further steps as a consequence of this name change.