13 Jun 2018

T 1415/16 - Takeover of opponents

Key points
  • In this opposition appeal, Opponent 1 was taken over by Opponent 2 during the first instance proceedings. Both opponents had appealed the OD's decision. The Board considers it proven that Opponent 1 continued to exist as legal entity and that therefore the appeal was admissible.
  • The respondent [patentee] had argued that [opponent 1]'s appeal should be held inadmissible because [opponent 2] had gained control over [opponent 1] and, thus, could pursue two oppositions. The further question therefore arose whether appellant I had lost its status as opponent." 
  • The Board "Is is true that a person is not allowed to pursue two or more oppositions. This was also confirmed in decision T 9/00 [] According to this decision, a legitimate interest can also not be inferred from the fact that the later opposition has been filed on behalf of a different department of the company without legal personality, having its own economic interest and being subsequently transferred to a third party. The circumstances of the present case are, however, quite different because the two oppositions had actually been filed by separate legal persons and these legal persons were still in existence when the appeal case was about to be decided by the board at the oral proceedings." 
  • The Board also considered it not proven that  Opponent  had control over Opponent 1 during the oral proceedings before the Board.


EPO T 1415/16 - link
Summary of Facts and Submissions
I. Both opponents (opponents 01 and 02 are hereinafter referred to as "appellant I" and "appellant II", respectively) filed appeals against the decision of the opposition division to reject the oppositions filed against the European patent No. 1 926 496.


Reasons for the Decision
Admissibility of the appeals and appellant I's status as party and opponent
1. The appeal of opponent 02 (appellant II) is admissible since it complies with the requirements of Articles 107 and 108 and Rule 99 EPC. Admissibility of this appeal had also not been contested by the respondent.
2. The respondent [patentee] contested, however, the admissibility of the appeal of opponent 01 (appellant I). Even though the objection had been raised very late, namely at the beginning of the oral proceedings before the board, the board considered this issue since this is one which can and has to be examined ex officio at every stage of the appeal proceedings (see e.g. decision T 15/01, OJ EPO 2006, 153, point 1 of the reasons). The appellants' objection against the late introduction of this issue could therefore not succeed.
3. The requirements of Articles 107 and 108 and Rule 99 EPC for the filing an admissible appeal were met by appellant I [opponent 01] upon expiry of the relevant time limits. This had not been questioned by the respondent.
4. In order for the board to consider on the merits an appeal that had been duly filed by a party, it is, however, a procedural pre-condition that the party has capacity to be a party to the proceedings when the decision terminating the appeal proceedings is taken. It is a generally recognised principle of national law and also under the EPC that legal entities which do not exist cannot bring or take part in proceedings (see decision G 1/13 of the Enlarged Board of Appeal, OJ EPO 2015, A42, point 5.2 of the reasons).
5. In the present case, while it was argued that a transfer of all business assets was agreed upon between appellants I and II [i.e. from opponent 1 to opponent 2], the respondent [patentee] confirmed that the continued existence of appellant I [opponent 1] as a legal entity on the date of the oral proceedings was not denied. According to the respondent's [patentee's] own submissions, the evidence available to it proved the conclusion of a contractual agreement on a transfer of business assets but did not prove that the transfer, or a universal succession, had already taken place. The representative of appellant II [opponent 2] likewise confirmed the existence of appellant II as a legal person and stated in this context that appellant II also continued to have employees.
6. In view of these concordant statements of the parties, the board had no doubt that appellant I existed as a legal entity at the date of the oral proceedings, i.e. on the date on which the board intended to take a final decision on the appeals. There was thus no need for the board to make further investigations on its own on the issue of the existence of appellant I.
7. The respondent [patentee] had argued that appellant I's appeal should be held inadmissible because appellant II had gained control over appellant I and, thus, could pursue two oppositions. The further question therefore arose whether appellant I had lost its status as opponent.
8. Article 99 EPC provides that a notice of opposition can be filed by "any" person. No particular interest in instituting opposition proceedings has to be demonstrated by an opponent. With the filing of a notice of opposition the person acquires the status as opponent.
9. It is established case law that the status as an opponent cannot be freely transferred (see decision G 2/04 of the Enlarged Board of Appeal, OJ EPO 2005, 549, Order I.(a)). Apart from the case of universal succession, in which case the opponent status would be automatically acquired from the date of the effective succession (see T 6/05, point 1.7 of the reasons), the procedural status as opponent may only be transferred together with the opponent's business assets in the interests of which the opposition had been filed (see also decision G 2/04, supra, point 2.2.1).
10. This does, however, not imply that a legal person that has the status of an opponent would automatically loose this position or would, contrary to its intention, be obliged to give up this position if the business assets, in the interest of which the initial opposition had been filed, are transferred to a different legal entity. To the contrary, the original opponent may continue the opposition proceedings (see also decision T 6/05, point 1.6.4 of the reasons). Accordingly, a transfer of the status as opponent, together with the transfer of business assets, from one legal entity to another to be valid in the proceedings before the EPO requires an explicit request to the EPO to this effect. Such a request is not on file for the present case.
11. Is is true that a person is not allowed to pursue two or more oppositions. This was also confirmed in decision T 9/00 (OJ EPO 2002, 275), cited by the respondent, in which the second filing of an opposition by the same legal person, after a first admissible opposition, was considered inadmissible for lack of a general legitimate interest (see point 2(c) of the reasons). According to this decision, a legitimate interest can also not be inferred from the fact that the later opposition has been filed on behalf of a different department of the company without legal personality, having its own economic interest and being subsequently transferred to a third party.
12. The circumstances of the present case are, however, quite different because the two oppositions had actually been filed by separate legal persons and these legal persons were still in existence when the appeal case was about to be decided by the board at the oral proceedings.
13. Moreover, from the mere circumstance that a transfer of all business assets from appellant I to appellant II, or a universal succession, was contractually agreed upon, the board could not derive that appellant II had control over appellant I at the date of the oral proceedings. The documents referred to by the respondent allegedly proved that a transfer between the two companies had been agreed upon. The board had not to evaluate evidence as to whether or not appellant I was under control of appellant II or whether the transfer was already effective.
14. In view of the above considerations, the board decided that the appeal of appellant I is admissible, and that the appeal proceedings were continued with appellant I as a party to the proceedings.

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