T 0234/18 - Transfer of opposition

 

Key points

• The Board:  about the request for change of the opponent, due to the sale of the business unit to another company: “There is nothing in the agreement [about the sale of the business unit] that mentions the transfer of this procedural right. The board does not share [the opponent's] view that according to decision G 4/88 the opponent status is automatically transferred together with the business assets in the interest of which the opposition was filed. According to decision G 4/88 an opposition which is part of those business assets must "be regarded as transferable or assignable" (Reasons Nr. 6). The decision does not say that they are automatically transferred.
• G 4/88: “The Enlarged Board considers that, in such a situation [sale of a business unit] , the opposition constitutes an inseparable part of those assets. Therefore, insofar as those assets [i..e. the business unit] are transferable or assignable under the applicable national laws, the opposition which is part of them must also be regarded as transferable or assignable in accordance with the principle that an accessory thing [i.e. the opposition] when annexed to a principal thing [i.e. the business unit] becomes part of the principal thing.”
• emphasis added
• I find it difficult to reconcile the present decision with the above reasoning of  G4/88. The Board's reasoning could have benefited from some more detailed explanations. 
• I'm not sure if this decision will become established case law. 
• T 6/05 cited by the Board says that in case of a business unit transfer, the buyer does not automatically become the opponent and party to the EPO proceedings without submitting evidence to the EPO. However, this does not mean that an opposition does not follow the business unit  in case of sale of the business unit (G 4/88, r. 6, in the language of proceedings: "l'accessoire suit le principal"), the opposition here being the entitlement to become opponent, not the opponent status in the EPO Register as such. I acknowledge that the latter part of the previous sentence is a subtle distinction, but note that even if the contract between the buyer and the seller of the business unit had mentioned the opposition as being assigned / transferred, this would still not be identical to a change of the opponent status in the EPO Register. There appear to be two different things, the party status (being mentioned as opponent in the EPO Register) and the 'entitlement' to be the opponent. Yet it is a quite subtle point. 

T 0234/18- 

https://www.epo.org/law-practice/case-law-appeals/recent/t180234eu1.html

4. Party status

4.1 In a letter of 10 November 2020 respondent 1, Woodward Kempen GmbH, stated that they had transferred the business assets in the interest of which the opposition was filed together with the status as opponent to ConverterTec Deutschland GmbH. As evidence a purchase agreement was filed from which the board can deduce that the "Newton Business" was purchased by ConverterTec Deutschland GmbH from Woodward Kempen GmbH. According to the agreement, the intellectual property rights relating to the "Newton Business" have been transferred.

4.2 Being party to a pending opposition is however not a property right but a procedural right (G 4/88, Reasons Nr. 2). There is nothing in the agreement that mentions the transfer of this procedural right. The board does not share respondent 1's view that according to decision G 4/88 the opponent status is automatically transferred together with the business assets in the interest of which the opposition was filed. According to decision G 4/88 an opposition which is part of those business assets must "be regarded as transferable or assignable" (Reasons Nr. 6). The decision does not say that they are automatically transferred.

4.3 According to the case law of the Boards of Appeal, an automatic transfer only occurs in the case of a universal succession, but not where particular business assets are transferred from one party to another, as in the latter case the party status may either remain with the original opponent or be transferred to the new opponent. See in this respect e.g. T 6/05, Reasons Nr. 1.6.4, and T 1421/05, Reasons Nr. 3.3.

4.4 The request to register ConverterTec Deutschland GmbH as new opponent 01 in lieu of Woodward Kempen GmbH can therefore not be granted.