T 1872/11 - Proprietor is also opponent

Key points

• In this opposition appeal, patent proprietor is a company, files an appeal against revocation of the patent, and is then taken over by the opponent. This does not affect admissibility of the appeal.
• Moreover, the admissibility is neither effected by an assignment of the patent, because that assignment was to another company, because that assignment was filed with the EPO only the day after the filing of the appeal. Only after that the filing of the assignment, the new company was the proprietor, as far as the EPO was concerned (Rule 22(3) EPC). 

Reasons for the Decision

Admissibility of the appeal

1. The former respondent-opponent 02 challenged the admissibility of the appeal: first upon the basis that the wrong party was named as the appellant in both the notice and statement of grounds of appeal; and second upon the basis that the current proprietor and appellant is a former opponent and hence cannot be adversely affected by the decision under appeal. These issues were taken up by the board in a communication.

Wrong party as appellant

2. The board notes that the notice and grounds of appeal were filed on time, the grounds of appeal being filed on 8 November 2011, the last day for doing so. At the time of filing of the above, the EPO's records showed that the proprietor of the patent was Royal Nedalco BV.

One day later, on 9 November 2011, an assignment of the patent in suit from Royal Nedalco BV to C5 Yeast Company BV was filed with the EPO (document D53). On the same day the fee for registering the transfer was paid.

Rules 22 and 85 EPC govern the registration of such transfers - see also Rule 100(1) EPC and T 128/10 of 10 December 2010. These rules also apply during appeals. Rule 22(3) EPC provides that such transfers shall have effect vis-à-vis the EPO only at the date when and to the extent that the documents referred to in Rule 22(1) EPC have been produced. These documents were produced on 9 November 2011, hence it is from 9 November 2011 that the EPO is to consider C5 Yeast Company BV as the owner of the patent. Prior to this date the owner was Royal Nedalco BV as far as the EPO was concerned. The board therefore concludes that the appellant was correctly named in both the notice and grounds of appeal (cf. T 128/10, supra, point 3 for application of Rule 22 EPC).

Adversely affected

3. The board notes that the EPO's records show that DSM IP Assets BV, the former opponent 01, is now the proprietor of the patent and the appellant in this case.

The former respondent-opponent 02 argued that the appellant is not adversely affected by the opposition division's decision, and hence, under Article 107 EPC is not entitled to appeal as the appellant can be considered to be the opponent, who is clearly not adversely affected by the opposition division's decision.

The board is unable to find any support in the EPC or the case law of the boards for such an interpretation of "adversely affected" under Article 107 EPC. C5 Yeast Company BV, (and its predecessor in title), was the proprietor of the patent in suit, and hence, adversely affected by the opposition division's decision. DSM IP Assets BV, a former opponent, is now the owner of the patent and is also adversely affected by this decision. Such changes of position are an entirely normal and unobjectionable aspect of commercial life.

4. All other formalities having been complied with, the board therefore finds the appeal to be admissible.