T 0874/18 - Discharging burden of proof and counter-proof

Key points

• This decision is about a correction of an error in the specified name of the opponent under Rule 139. The Board also recalls the general principle that:  “Once a party has submitted conclusive proof of its allegations, it has complied with the requirement of the burden of proof. The evidence need not prove the facts with absolute certainty in order to be deemed conclusive; it suffices that it proves that they are highly probable. If a party has discharged its burden of proof, the counterparty seeking to refute the conclusively established facts by way of counter-arguments bears the burden of proving the alleged facts” ( verbatim in CLBA 10th ed. III.G.5.2.1)
• As a comment, the part in italics can be a bit confusing.  The German original is T 1162/07 and differs in the part in italics: " Hat eine Partei ihrer Beweislast genügt, so trägt die Gegenpartei, die die so überzeugend belegten Tatsachen durch Gegenargumente zu entkräften versucht, für diese die Beweislast". "Diese" may refer to "Gegenargumente".
• As a comment, I think that the counterparty has the burden to disprove the alleged facts, i.e. to provide counter-evidence.
• The Notice of opposition was filed with a different name in Form 2300E than in the Notice. The opponent requests a correction of an error under Rule 139, the name in Form 2300E being incorrect.
• G 1/12 requires that the request for correction is filed "without delay".
• The Board: " It is clear that such delay can only start once a party has become aware of its error." 
• Still, the opponent's statement as to when it became aware of the error, is checked for objective evidence: "In view of the above, the Board has no reason to doubt the opponent's submission that it only became aware of the incorrectness of the name indicated on Form 2300E on 13 October 2016, when checking the European Patent Register. The Board thus concludes that the request for correction under Rule 139 EPC was filed without delay." 

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/t180874eu1.html

Reasons for the Decision

1. Admissibility of the opposition

The opposition is admissible. Only a single opposition has been filed. The correct opponent's name at the time of filing the opposition was "Babcock Noell GmbH". The request for correction under Rule 139 EPC was submitted without delay. The formalities section was competent to decide on this request.

1.1 The proprietor's argument, that it was not clear whether the name "Schmitz Cargobull AG" in the text field "opponent" on form 2300 was an error or whether it was intended to file two oppositions, is not accepted, as explained below. It further argued that the burden of proof was shifted to the opponent and that this was a heavy one. This does not however alter the Board's findings, for the reasons also set out below.

As argued by the opponent, the notice of opposition, together with the electronic form 2300E and the payment of the opposition fee, establish a complete set of all necessary acts to file an opposition against a European patent. For the sake of completeness, it is noted that the filing of joint oppositions by the filing of one notice of opposition and the payment of one opposition fee is also accepted in the case law (cf. G 3/99, Headnote point I). Thus, even if there had been the intention of filing the opposition on behalf of two opponents, as argued by the appellant, this would not necessarily have led to the inadmissibility of the present opposition. In its letter dated 28 November 2016 the opponent submitted arguments and evidence supporting its contention that the indication of "Schmitz Cargobull AG" as the opponent was erroneous.

In summary, the opponent argued therein that the notice of opposition was submitted in the name and on behalf of Babcock Noell GmbH and that it was signed in handwritten form, whilst the electronic form was only filed because this was required by the EPO whenever an opposition is filed by electronic means. In the assessment of the opponent's true intention, the notice of opposition thus outweighed the electronic form. Furthermore, Babcock Noell GmbH operated in the same area of business and was a direct competitor of the proprietor, whilst Schmitz Cargobull AG was a company producing trailers for commercial vehicles, which was remote from the technical field of the contested patent.

As evidence, the opponent submitted a copy of the file in the opponent's own patent management system, from which it was apparent that Babcock Noell GmbH was the client ordering the opposition and to which the draft thereof was sent. A further letter was submitted as proof that the filing of the opposition was reported to Babcock Noell GmbH.

These arguments and the evidence provided were subsequently accepted by the EPO, first when allowing the request for correction by the formalities section in its communication of 12 January 2017, and later by the opposition division in the contested decision, where it found that the opposition was admissible. Also, the Board indicated in its communication that it considered that the true intention was to file an opposition on behalf of Babcock Noell GmbH (see item 3, first paragraph).

Once a party has submitted conclusive proof of its allegations, it has complied with the requirement of the burden of proof. The evidence need not prove the facts with absolute certainty in order to be deemed conclusive; it suffices that it proves that they are highly probable. If a party has discharged its burden of proof, the counterparty seeking to refute the conclusively established facts by way of counter-arguments bears the burden of proving the alleged facts (see Case Law of the Boards of Appeal, 9th edition 2019, III, G 5.2.1). In the present case, the proprietor did not allege any such facts which could cast doubt on the opponent's statement that the indication of the opponent's name on form 2300E was erroneous. It merely referred to the "heavy burden of proof" as required by case law, without indicating which of the opponent's arguments and which of the provided evidence did, in the proprietor's view, not meet this heavy burden. The mere possibility that Schmitz Cargobull AG could theoretically have had an interest in a (separate) opposition against the patent is no more than an unsubstantiated allegation of the proprietor.

As there is no objective reason to doubt any of the opponent's arguments or evidence, the Board concludes that it is sufficiently proven that an error had occurred on the opponent's side when the electronic form 2300E was filled in with the name of "Schmitz Cargobull AG" and that the true intention had been to file the opposition in the name of "Babcock Noell GmbH".

1.2 The proprietor's argument that the request for correction was not filed without delay and that the opponent should have become aware of the error already when receiving the confirmation of receipt of the opposition by the EPO, indicating "Schmitz Cargobull AG" as the opponent, is also not accepted.

The boards of appeal have developed a large amount of case law as to when a request for correction under Rule 139 EPC (or Rule 88 EPC 1973 respectively) is allowable. In G1/12, the Enlarged Board of Appeal summarised this in four principles (a) to (d), see G1/12, Reasons 37. Principle (d) reads as follows:

"The request for correction must be filed without delay."

It is clear that such delay can only start once a party has become aware of its error. This was also not contested by the proprietor in the present case. However, the proprietor argued that the opponent should have noticed its error when receiving the confirmation of receipt of the opposition by the EPO, indicating "Schmitz Cargobull AG" as the opponent. The Board does not share that view for the following reasons:

The acknowledgement of receipt contains the basic information on the opposition, in particular the patent number, the filing date, a list of the documents filed and also the name of the opponent. In this context, it must be taken into account that the opponent's representative (or their assistant) received the acknowledgement of receipt immediately after the electronic transmission of the documents. It can therefore be assumed that when having received the acknowledgement of receipt they still had in mind the opponent's name erroneously entered on Form 2300E. Thus, it would be overstretching the due diligence standards to require the error to be detected by the representative (or their assistant) at that point in time, since the opponent's name indicated in the acknowledgement of receipt was identical with the name entered on Form 2300E.

Furthermore, according to the proprietor, the error should have been detected due to the opposition division's communications informing the parties of the filing of a notice of opposition. The Board does not share that view for the following reasons: The patent proprietor was informed of the filing of a notice of opposition by "Schmitz Cargobull AG" according to Rule 79(1) EPC by communication of 12 August 2016. This communication was sent to the opponent only as an annex to the communication according to Rule 79(2) EPC informing the opponent that no further opposition has been filed. In view of the fact that the communication according to Rule 79(2) EPC was of no procedural significance for the opponent in the present case, there was also no reason for the opponent's representative to check the correctness of the opponent's name indicated in the annex to that communication.

In view of the above, the Board has no reason to doubt the opponent's submission that it only became aware of the incorrectness of the name indicated on Form 2300E on 13 October 2016, when checking the European Patent Register. The Board thus concludes that the request for correction under Rule 139 EPC was filed without delay.

1.3 The proprietor further argued that the receiving section was not competent to decide on the request for correction under Rule 139 EPC. This argument was refuted by the Board in its communication in preparation for the oral proceedings (see item 3., second paragraph), where the Board stated the following:

"[I]t is the formalities officer of the opposition division who is entrusted with "decisions concerning the correction of errors in documents filed with the European Patent Office, with the exception of the description, claims and drawings (Rule 139 EPC)", as laid out in Article 2, point 21 of the "Decision of the President of the European Patent Office dated 12 December 2013 concerning the entrustment to non-examining staff of certain duties incumbent on the examining or opposition divisions" (cf. OJ 2014, A6). In that regard it is noted that the formalities officer did not take a decision on the admissibility of the opposition in the present case. On the contrary, the opposition division decided on the admissibility of the opposition (reference is made to points 2.1.1 and 2.1.3.2 of the impugned decision)."

The Board thus considered that both allowing the request for correction and the decision that the opposition was admissible were made by the respective competent authority. The proprietor did not challenge this finding after the Board's communication. The Board thus has no reason to deviate from its preliminary opinion and confirms same herewith.