J 0006/23 - Non-existent proprietor

Key points

• In J 12/19,  the patentee went bankrupt during the first instance opposition proceedings and the proceedings were interrupted under Rule 142(1)(b). After some time, the Legal Division announces the intention to resume the proceedings under Rule 142(2). The opponent disagrees, arguing that the insolvency proceedings were terminated by the patentee's dissolution, which is now non-existent. The opponent submits accordingly to the Legal Division. The Legal Division is of the opinion that the opponent is not a party to the proceedings in this respect, disregards the opponent's submissions, and issues a Communication to the opponent stating so. The opponent then files an appeal."
• That decision of the Legal Board of Appeal was issued on 28.04.2021. 
• The Legal Division took a new decision almost two years later, issued on 01.02.2023. That decision was: "rejecting the opponent's request that opposition proceedings be resumed pursuant to Rule 142 EPC with the opponent as the sole party. " The LD intended to resume the procedure with the proprietor as a party. 
• The opponent appealed. The Legal Board issued the present decision on 05.06.2023.
• Meanwhile, the patent has lapsed in all states. 
• On the admissibility of the appeal: "the refusal in the decision under appeal to intend resumption with the opponent alone has no immediate legal consequence either. However, it creates the threat that the LD will proceed to set a date for resumption with the proprietor as well. The opponent strongly disagreeing with the latter way to proceed, it would be required to appeal such a future decision. Due to this threat, a legitimate interest in the present appeal cannot be denied."
• I don't know whether this requirement for a legitimate interest is additional to Article 106 and 107 EPC, or whether it is a way to test "adversely affected" (or "decision")
• At issue is the (releatively new) second sentence of Rule 142(2) EPC: "If, three years after the publication of the date of interruption in the European Patent Bulletin, the European Patent Office has not been informed of the identity of the person authorised to continue the proceedings, it may set a date on which it intends to resume the proceedings of its own motion."
• The LBA clarifies that "intends" should be read as: the EPO may set a date on which the proceedings are resumed.
•  " on the basis of the capacities that Transito NV has under Belgian law, it must be concluded that it fails both prongs of the "legal personality" test of G 3/99."
• G 3/99 r.9: "The legal personality of a named entity under the EPC is decided on the same basis as before national courts, namely the capacity to sue or to be sued in its own name and on its own account." (hello DABUS, by the way, see here)
• "It follows that Transito NV no longer exist under Belgian law."
• "It is a generally recognized principle of national law and also under the EPC that legal entities which do not exist cannot bring or take part in proceedings. Transito N.V. is thus not able to take part in resumed opposition proceedings. 
• "The only way to reconcile the spirit of Rule 142(2), 2nd sentence, EPC, which aims to avoid endless interruptions of proceedings in cases where no person authorized to represent the affected party can be identified, with the aforementioned principle that legal entities which do not exist cannot take part in proceedings, appears to be a resumption of the proceedings without the affected party. 
• "The Legal Board concluded above that, if the present opposition proceedings are to be continued, then they must be continued with the opponent only. The Board must therefore set aside the LD's decision expressing the view that the proceedings are to be continued with both the opponent and the registered patent proprietor Transito NV that has ceased to exist.

  It will be for the LD to exercise its discretion pursuant to Rule 142(2), second sentence, EPC in respect of a possible resumption of the opposition proceedings. If the LD exercises its discretion by resuming the proceedings, then the proceedings will take place with the opponent only until the opposition division in turn subsequently exercises its discretion pursuant to Rule 84(1) EPC. If the opposition division does so by maintaining the continuation of those proceedings, then the opposition division will be bound by the LD's decision to continue them with the opponent only."

• I don't think the LD can arbitrarily keep the procedure interrupted, but we may have to see if the opponent has to appeal on that point as well. 

• I assume the opponent has requested that the proceedings be continued under Rule 84. We will have to see if the OD accedes to this request, or if the opponent will have to file an appeal on that point as well. 

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/j230006eu1