T 1458/12 - Correction of address appellant

EPO  T 1458/12 - link - [C]

Key points

• In the notice of appeal, an incorrect address of the appellant had been given. The address can be corrected and the appeal is admissible.
• " The board is also satisfied that a "wrong address" may be corrected pursuant to Rule 139, first sentence, EPC (see e.g. G 1/12, reasons 34 and 35) and that the appellant requested faultlessly that its originally indicated address be changed due to an "objectively incorrect designation of this address" [] - regardless of whether it was considered incorrect before or after [the date of filing the notice of appeal]. In this context, the board adds that - although it is advisable that a party notifies an address change as quickly as possible - there is no provision in the EPC prescribing a specific time period for indicating a party's address change, whether or not the corresponding representative is aware of that change.

Summary of Facts and Submissions

I. The appeal is against the decision of the opposition division to revoke the present European patent [...]

III. The notice of appeal of the appellant (patent proprietor) indicated that an appeal was lodged "in the name and on behalf of our client Innovative Sonic Limited; P.O. Box 957; offshore incorporations centre Road Town, Tortola BRITISH VIRGIN ISLANDS". [...]

V. With a letter of reply, the respondent (opponent) requested that the appeal be rejected as inadmissible or that the appeal be dismissed, and provided arguments in support of those requests. With regard to the purported inadmissibility of the appeal, it further filed two documents, namely a letter from the appellant's then representative of 27 February 2012 (document A8) and an excerpt from the British Virgin Islands Business Companies Act, 2004 (document A9) as evidence that, at the time the appeal was filed, the appellant had ceased to exist due to discontinuation of the company Innovative Sonic Limited in BVI.

VI. In response to a communication of the board under Rule 100(2) EPC inviting the appellant and its representative to assist in clarifying the particular circumstances of the discontinuation and to file an authorisation under Rule 152(1) EPC, the appellant requested by letter dated 16 April 2014 that the "patentee's address" be changed in two steps, firstly "from

INNOVATIVE SONIC LIMITED; P.O. Box 957; offshore incorporations centre; Road Town, Tortola; British Virgin Islands

to INNOVATIVE SONIC LIMITED; 4**(th) Floor, Unicorn Centre; 18N Frere Felix De Valois Street; Port Louis; Mauritius"

and then, in a second step (as of February 2014), "to INNOVATIVE SONIC LIMITED; 2nd Floor, The Axis, 26 Cybercity, Ebene 72201, Mauritius".

This registration of an address change was requested because the original address given in the notice of appeal had been incorrect since 20 October 2010. In addition, the appellant filed, besides the authorisation of its then representative, a "certificate of discontinuance" (from the authorities of the British Virgin Islands) and a "certificate of registration by continuation" (from the authorities of the Republic of Mauritius) as evidence that the above change constituted a mere change of address.

Reasons for the Decision

1. Admissibility of the appeal

The respondent requested that the appeal be rejected as inadmissible based on three reasons:

1) The appellant's change of address from the British Virgin Islands (BVI) to Mauritius did not constitute a "mere change of address" but also implied a change of the State of the company's residence and thus a change in the corresponding laws of incorporation from BVI to Mauritian law. This corresponded to a "cross-border transfer of jurisdiction". Such a transfer of jurisdiction was to be indicated within the two-month time limit for filing an appeal under Article 108, first sentence, EPC as the State of the appellant's residence was in particular decisive for the application of Articles 14(4) and 133(2)(3) EPC according to G 1/12, reasons 21. Even if such a transfer of jurisdiction were performed in a way that it did not create a new legal entity, this did not mean that the legal entity might be satisfactorily identified in the notice of appeal if the State of residence (and thereby the laws of incorporation) indicated in the notice of appeal no longer applied. Therefore, the appeal did not comply with Article 107, first sentence, EPC in conjunction with Rule 99(1)(a) EPC, and was to be rejected as inadmissible under Rule 101(1) EPC.

2) The notice of appeal was filed with the "wrong address" although the appellant's representative was aware of the change of address and in particular of the cross-border transfer of jurisdiction as evidenced by A8. Furthermore, the representative had failed to inform the EPO about it in due time. Thus, it could not be established that it was the appellant's true intention to properly identify itself as "Innovative Sonic Limited based in Mauritius" within the two-month time limit for filing an appeal under Article 108, first sentence, EPC. Hence, the appeal failed to comply with Article 107, first sentence, EPC, and was therefore to be rejected as inadmissible under Rule 101(1) EPC.

3) The appellant's statement setting out the grounds of appeal comprised in total thirty-two claim requests, where complex procedural declarations made it impossible for the public to ascertain clearly and concisely in which order the appellant's requests were to be considered, contrary to Article 12(2), second sentence, RPBA. Hence, the number of auxiliary requests presented was excessive, amounted to an unallowable "pick and mix" approach and impeded the course of the proceedings as a whole due to the unclear requests. Therefore, the appeal did not comply with Article 108, third sentence, EPC in conjunction with Rule 99(2) EPC as well as Article 12(2) RPBA, and was thus to be rejected as inadmissible under Rule 101(1) EPC.

1.1 Admissibility under Article 107 and Rule 99(1)(a) EPC

1.1.1 Reason 1)1) is concerned with the question whether the party affected by the decision of the first-instance department is the same as the legal entity having filed an appeal against that decision in order for the appeal to comply with Article 107, first sentence, EPC in conjunction with Rule 99(1)(a) EPC.

The board is satisfied, in applying the principle of free evaluation of evidence (see e.g. G 1/12 of 30 April 2014, reasons 31), that the appellant provided sufficient evidence to prove that the appellant "Innovative Sonic Limited" had not changed its legal identity by moving from BVI to the Republic of Mauritius and that therefore the requested change of address represents a change of address only. This conclusion is moreover in agreement with the finding in cases T 786/11 of 12 June 2014 (cf. reasons 2) and T 2330/10 of 19 November 2014 (cf. reasons 1) where the factual situation is almost identical. In particular, the respondent failed to conclusively and cogently contest the authenticity of the corresponding certificates presented by the appellant as regards the discontinuance of the company in BVI and its continuation in the Republic of Mauritius.

As to the issue of "cross-border transfer of jurisdiction", the board refers to decision G 1/13 of 25 November 2014, according to which the EPO has to recognise that matters relating to the incorporation of a legal entity such as its existence or cessation are governed exclusively by national law (cf. reasons 5.1). By analogy, in the present case the board, in view of the evidence provided, has to regard as a fact the appellant's discontinuation and continuation across jurisdiction borders (i.e. the laws of BVI and Republic of Mauritius). Furthermore, the provisions of Article 14(4) EPC (i.e. residence-dependent provisions as regards the language of documents filed) and Article 133(2),(3) EPC (i.e. residence-dependent requirements as to representation) have no bearing on the present case, since BVI is just as less an EPC contracting state as the Republic of Mauritius. Accordingly, the notice of appeal was filed on behalf of a legal person that was party to the first-instance proceedings within the meaning of Article 107, first sentence, EPC.

1.1.2 Reason 2) is concerned with the question whether the appellant was identifiable according to Rule 99(1)(a) EPC within the two-month period for filing an appeal under Article 108, first sentence, EPC, whether the address of the appellant given in the notice of appeal was wrong due to an error and whether it could be corrected at the appellant's request in response to a communication of the board under Rule 101(2) EPC.

The board is satisfied that the notice of appeal indicated the appellant's name ("INNOVATIVE SONIC LIMITED"), its address ("P.O. Box 957; offshore incorporations centre; Road Town, Tortola"), its nationality and the State in which its residence or principal place of business is located ("BRITISH VIRGIN ISLANDS") in compliance with Rules 99(1)(a) and 41(2)(c) EPC, without giving rise to the remedy of any deficiency within the meaning of Rule 101(1) and (2) EPC. Thus, the appellant was identifiable within the two-month period under Article 108, first sentence, EPC. The board is also satisfied that a "wrong address" may be corrected pursuant to Rule 139, first sentence, EPC (see e.g. G 1/12, reasons 34 and 35) and that the appellant requested faultlessly that its originally indicated address be changed due to an "objectively incorrect designation of this address" (cf. appellant's letter dated 16 April 2014, section 2; see point VI above) - regardless of whether it was considered incorrect before or after 20 October 2010. In this context, the board adds that - although it is advisable that a party notifies an address change as quickly as possible - there is no provision in the EPC prescribing a specific time period for indicating a party's address change, whether or not the corresponding representative is aware of that change. Also, the correspondence with the appellant was not affected since it was still in place via the address of the then representative. Hence, the notice of appeal was filed on behalf of a legal person that was clearly identifiable within the two-month period for filing an appeal under Article 108, first sentence, EPC and Rule 99(1)(a) EPC.

1.2 Admissibility under Article 108 and Rule 99(2) EPC

[...]

1.3 In view of the above, the board concludes that the appeal is admissible.