T 0796/12 - Dissolved opponent

Key points

• " The Proprietor, for the first time in a letter [] that reached the Board at 16.30 hours on the day before the oral proceedings, raised the objection that the company [Opponent] GmbH, which was registered as the Appellant, had been dissolved as a result of a bankruptcy procedure before the appeal was filed. " 
• The Board can refer to G 1/13 (about restoration of existence of UK Ltd. company which was opponent), for the summary of German company law therein. The Board concludes that the Opponent as GmbH had continued to exist because it would have at least one asset, namely the opponent status.  
• " the Board therefore holds that the Appellant-Opponent keeps being a party to these proceedings, and the appeal is thus admissible." 

Summary of Facts and Submissions

VIII. The arguments of the parties insofar they are relevant for the decision can be summarized as follows:

(a) On the admissibility of the appeal

The Proprietor, for the first time in a letter of 25 October 2017 that reached the Board at 16.30 hours on the day before the oral proceedings, raised the objection that the company Zenergy Power GmbH, which was registered as the Appellant, had been dissolved as a result of a bankruptcy procedure before the appeal was filed. Hence, the Opponent had ceased to exist as a legal person before the filing of the appeal and could not file the appeal or be the appealing party in the opposition-appeal proceedings. This was further argued during the oral proceedings. Further, the Proprietor based on information available on the internet alleged that the relevant department of the opponent that dealt superconductors had been taken over by the BASF New Business GmbH and would thus not be entitled to further pursue these proceedings.

The Opponent stated that it had become aware of these issues on the day of the oral proceedings and was not in a position to respond.

Reasons for the Decision

1. Admissibility of the appeal

The inadmissibility of the appeal as argued by the patentee in its last submission dated 25 October has two prongs: either because the opponent was no longer registered at the date the appeal was filed, or because the opponent was subsequently taken over by a different entity without this change having been notified.

Whether an opponent to an ongoing opposition/appeal case can validly be regarded as a legal entity and act in these proceedings is a matter of national law of the state where the company is incorporated, see decision G 1/13 (OJ EPO 2015, A42) at point 6 of the reasons:

"The Enlarged Board considers that the starting point should be the clearly established principle under the EPC that national law should be referred to in order to determine whether a legal entity exists or has ceased to exist, and has capacity to act."

In the case at issue, that state is Germany. Under German law, even a company extinguished from the company register can validly perform procedural acts such as file a lawsuit in case where such dispute is related to any form of economic interest (Münchener Kommentar zur ZPO, 5. Auflage 2016, § 50 margin note 15; also German Federal Supreme Court, decision of 8 October 2013, II ZR 281/12). This was recognised by the Enlarged Board of Appeal in the above-mentioned decision G 1/13, point 2.3.4 of the reasons:

"Thus the Enlarged Board understands that if a company established under German law is removed from the register it only ceases to exist if also it is without assets ("vermögenslos"), these two conditions being known as "Doppeltatbestand". If this latter condition is not satisfied, a later restoration of the company to the register where a further need to wind up the company or its affairs becomes apparent does not have retroactive effect but rather is of a declaratory nature as to the continuing existence of the company: the company is deemed to have always continued in existence. See the submissions of the President, point 2.4. The Enlarged Board understands also that the status of opponent which a company enjoys in opposition proceedings before the EPO before being removed from the register would be considered as an asset for these purposes or as part of its affairs which would be considered as not having been wound up ("Auswirkungen auf laufenden Prozesse"): see Hachenburg/Ulmer GmbHG, 8. Aufl., § 74, Rdn 27. Further, although a company which has not ceased to exist but which has been struck off the register is incapable of acting, an authorization given to a representative while the company was still capable of acting remains valid (see again the submissions of the President, point 2.4)."

The existence of a patent, as well as its possible revocation, are of economic interest both to the patentee, as well as to potential competitors. For this reason, raising an appeal with the request to have a patent revoked is of economic interest to both parties involved in such dispute. The Board thus holds that the opponent could file a valid appeal even after its extinguishment from the company register. The appeal was filed by the representative who had acted on behalf of the opponent during the opposition, and there is no allegation that the representative in filing the appeal acted without proper mandate.

Also the allegation that the relevant department of the opponent dealing with superconductors had meanwhile been transferred and that the appeal should therefore be continued by the acquiring company has not been properly substantiated. In view of the fact that the position of an opponent cannot be freely transferred (decision G 2/04, OJ EPO 2005, 549, headnote), any transfer has to be proven by proper evidence, see decision T 960/08 of 1 December 2011, reasons 2.2:

"It follows from this procedural principle that the procedural validity of a transfer of opponent status is dependent on the submission of a duly substantiated request and on production of documents providing evidence of legal succession within the proceedings ...Until evidence of the transfer has been provided, the original party to the proceedings continues to have the relevant rights and obligations."

In the case at issue, it would thus have been expedient to file appropriate references from the company register, or a contract of purchase. In the absence thereof, the Board must assume that the party that filed the opposition remains entitled to continue such proceedings.

In the absence of any evidence to the contrary, the Board therefore holds that the Appellant-Opponent keeps being a party to these proceedings, and the appeal is thus admissible.