T 1992/15 - New patentee

Key points

• The OD revokes the patent. The written decision is dated 10.08.2015. On 05.08.2015, a valid request for registration of a transfer of the patent was filed. The registration under Rule 85  was made on 14.08.2015 with effect as of 05.08.2015. 
• On 08.10.2015, a Notice of appeal was filed in the name of the first patentee.
• The Board decides that this appeal is inadmissible under Article 107.
• "Am 8. Oktober 2015 war die Clariant Finance (BVI) Limited daher nicht mehr Patentinhaberin und konnte demgemäß auch keine rechtswirksame Beschwerde einreichen."
• A second appeal was filed on 26.11.2015 in the name of the new patentee. This date is clearly outside the two-month period when calculated from 20.08.2015.
• However, here we enter EQE paper D territory. Namely, the question is whether the written decision of 10.08.2015 was validly notified to the patentee. Without a valid notification, the period for filing an appeal does begin (but a Notice of appeal can already be filed before the notification).
• "Die Zulässigkeit dieser Beschwerde hängt davon ab, ob die angefochtene Entscheidung der Einspruchsabteilung einer beschwerdeberechtigten Partei mindestens zwei Monate und 10 Tage vor Beschwerdeerhebung, das heißt vor dem 16. September 2015 (vgl. Artikel 108, Regel 126(2) EPÜ), wirksam zugestellt wurde - in diesem Fall wäre die Beschwerde vom 26. November 2015 verspätet und damit unzulässig - oder ob eine wirksame Zustellung später oder gar nicht erfolgt ist - in diesem Fall wäre die Beschwerde rechtzeitig eingelegt und damit zulässig. "
• The decision of the OD was notified to a professional representative. The question is if the representative was an authorized representative of the party that was the patentee, at the relevant date.
• The transfer of the patent was effective 05.08.2015, such that the decision could not be notified to the representative. Moreover, the request of 05.08.2015 mentioned a new representative for the new patentee.
• Hence, the second appeal was timely filed.
• For the admissibility of the Main Request, the Board applies Art. 13 RPBA 2007 because the first summons was issued before 01.01.2020.

 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t151992du1.html

Machine Translation

Reasons for decision

1. Admissibility of Complaints

The contested decision is dated August 10, 2015 and was served on PA Gillen on August 13, 2015, according to the acknowledgment of receipt received.

There are two separate complaints, namely a complaint dated October 8, 2015 by Clariant Finance (BVI) Limited and a complaint dated November 26, 2015 by Clariant International LTD, both filed by PA Gillen.

1.1 Complaint of October 8, 2015

Clariant Finance (BVI) Limited's appeal of 8 October 2015 is inadmissible as, as a result of the transfer of the patent, the appellant was no longer the patent proprietor at the time the appeal was lodged and was therefore no longer aggrieved, Article 107 and Rule 101(1) EPC .

The transfer to Clariant International Ltd. was notified to the EPO on 5 August 2015 in accordance with Rule 22 EPC, enclosing a declaration of assignment and payment of the corresponding fee, and a transfer was requested. In a letter dated August 14, 2015, the EPO confirmed the transfer of rights to the newly appointed representative of the new patent proprietor. The effective date is August 5, 2015.

As a result, on October 8, 2015, Clariant Finance (BVI) Limited was no longer the patentee and consequently could not file a valid appeal.

This has already been expressed in the Chamber's preliminary opinion; the complainant then made no further submissions.

1.2 Complaint of November 26, 2015

1.2.1 The admissibility of this appeal depends on whether the appealed decision of the opposition division of a party entitled to appeal was received at least two months and 10 days before the appeal was filed, i.e. before 16 September 2015 (cf. Article 108, Rule 126(2) EPC) , was effectively served - in which case the complaint of 26 November 2015 would be delayed and therefore inadmissible - or whether effective service was later or not at all - in which case the complaint would have been filed in good time and would therefore be permissible. This in turn depends on whether PA Gillen was an authorized recipient of the person who owned the patent at that time on 13 August 2015, the date on which the decision was actually served on him.

1.2.2 In this context, the board points out that entries in the patent register have no constitutive effect, but only declaratory effect (cf. T 799/97 of 4 July 2001, point 3.2 a) and T 194/15 of 9 March 2016, Section 2.2).

1.2.3 Against this background, Rule 22(3) EPC appears not to bring forward the effectiveness of the transfer (i.e., as an exception, making it valid before it is entered in the Register), but rather to make the transfer effective postponed to the date of receipt of the change request. This means that it is not the date of the legal transaction regarding the transfer that applies to the European Patent Office, but only the date of the notification to the office. This is made clear by the wording of Rule 22(3) EPC "only becomes valid". The fact that Rule 22(3) EPC does not apply to the appointment of a representative is therefore not a valid argument for the view that the appointment of a representative only becomes effective with Entry in the register takes effect.

1.2.4 From this, the board concludes that the transfer of the patent to Clariant International Ltd. and the appointment of PA Mikulecky as their representative became effective vis-à-vis the European Patent Office no later than August 5, 2015, the date on which the European Patent Office received the relevant notices. The decision could therefore no longer be effectively served on August 13, 2015 to PA Gillen, who at that time only represented the previous patent proprietor. There was no further delivery. The delivery to Clariant International Ltd. can for this reason be regarded as effected on October 26, 2015 at the earliest, when PA Gillen also appointed himself as her representative.

1.2.5 The effectiveness of the delivery to PA Gillen cannot be justified by the fact that PA Gillen's power of representation had an effect beyond the notification of the change of ownership and the appointment of PA Mikulecky. An analogy with Rule 152(8) EPC is out of the question because in the present case it is not a question of a change of representative (one and the same party changes the representative), but a change in the person of the party who has its own, the means bringing new representatives into the proceedings.

1.2.6 Appellant-opponent 3 submitted on this point that the request for transfer of the patent dated August 5, 2022 only concerned the transfer to a new patent proprietor and not the appointment of a representative. This is not clear from the application; at best, it can be inferred from the application that a new representative is responsible after the transfer has taken place. However, the rewriting only became legally effective when it was entered in the patent register, i.e. after the decision had been served on the old representative.

The Chamber does not consider this argument to be convincing. From the transfer request, an intended temporal separation between the transfer of the patent to Clariant International Ltd. and the representative appointment do not recognize. It is requested there to rewrite the patent and then to direct the correspondence to the new representative. It has already been explained above that the transfer becomes legally valid vis-à-vis the EPO on the date of the request for transfer.

1.2.7 Therefore, as stated above, service of the decision on PA Gillen on August 13, 2015 was not effective service on an agent who would have been authorized to represent the patent proprietor at that time. Effective service therefore did not take place at all, or at the earliest when PA Gillen was again notified as authorized to represent the new patent proprietor, namely on October 26, 2015. In both cases, the appeal was filed within the time limit.

1.3 In summary, it can therefore be stated that on November 26, 2015, a complaint was filed on behalf of Clariant International Ltd within the time limit.

The lack of further admission requirements was not reprimanded and is also not recognizable.

This complaint is therefore admissible.

1.4 The request for re-establishment of rights under Article 122 and Rule 136 EPC filed together with the filing of the appeal on 26 November 2015 is therefore irrelevant. The reinstatement fee paid will be refunded.