Universal Successor: T1421/05 and T0261/08
The circumstances in which the transfer of an opposition to a patent at the European Patent Office (EPO) can or should take place is an area where care is needed, particularly where an appeal is involved. The risk of getting a transfer wrong is that you lose your chance to knock out a troublesome patent. For the patentee it provides a useful way of getting rid of a challenge to its IP on formal grounds alone.
Two recent Board of Appeal decisions (T1421/05 – 3.3.09 and T0261/08 – 3.3.04) provide welcome, further guidance in this area, and show that the EPO is reluctant to throw out a case on the ground that the opponent filed its appeal in the 'wrong' name. D Young and Co represented the patentee in T 0261/08.
The Headnote of T 1421/05 states:
1. Where the business assets in relation to which an opposition was filed have been transferred and at the same time the transferor has contractually agreed to transfer the opposition to the transferee, the status of opponent remains with the transferor in the absence of there being filed with the Office (a) evidence sufficiently evidencing the transfer and (b) a request to recognise the transfer of opponent status.
2. Where in such a case the transferor subsequently ceases to exist but has a universal successor, the status of opponent is capable of passing to that successor.
3. The mere possibility of abuse (in the sense of G 3/97) arising out of such events does not prevent opponent status passing in this way; it is for the proprietor to prove relevant acts of abuse.
Previous cases cited
In G 4/88 the Enlarged Board of Appeal decided:
An opposition pending before the European Patent Office may be transferred or assigned to a third party as part of the opponent's business assets together with the assets in the interests of which the opposition was filed.
In G 3/ 97 and 4/97 the Enlarged Board of Appeal decided:
1(a): An opposition is not inadmissible purely because the person named as opponent according to Rule 55(a) EPC is acting on behalf of a third party.
1(b): Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process.
The facts of both cases are the same. The patentee in both cases was Martek Biosciences Corporation and both patents (EP 0 515 460B and EP 0 512 997B) were opposed by inter alia Aventis Research & Technologies GmbH & Co KG (hereafter Aventis R&T). The patents relate to commercial production methods for food products containing beneficial microbial fatty acids.
Evidence was submitted that in 2003, ie, after the oppositions had been filed, but before the appeal stage, Aventis R&T had ceased to exist. The assets and obligations were transferred to another partner who eventually merged into Sanofi-Aventis Deutschland GmbH.
Evidence was also submitted in the form of an agreement of 2000 in which Aventis R&T agreed that business assets relating to inter alia fatty acids were transferred to Axiva GmbH and oppositions, including the subject oppositions, were referred to in the agreement. The agreement also provided that if formal transfer of an opposition might not be possible, Axiva GmbH was permitted to continue to conduct the oppositions in the name of Aventis R&T. Axiva GmbH and its successors in business dealt with the oppositions, and subsequently the appeal proceedings, they gave the representative instructions and settled her charges, but the oppositions continued in the name of the original opponent. Subsequent appeals were filed in the name of Aventis R&T.
The patentee objected to the admissibility of the appeal. It was argued that (1) the correct appellant was Axiva GmbH following the principles set out in G 4/88, and (2) Aventis R&T could in any event not file a valid appeal since it no longer existed.
On the first point the Boards reviewed G4/88 and highlighted the use of the word 'may' in its headnote, as emphasised above. Although G4/88 decided that an opposition could be transferred in limited circumstances where the opposition had been instituted in the interests of the transferred business; the Boards in the present cases noted that such a transfer was not mandatory. It was also noted that G4/88 did not say that the opposition was automatically transferred with the business assets. They also pointed out that the status of an opponent stays with the transferor until a request to transfer the opposition has been validly filed at the EPO.
As regards any possible legal uncertainty or abuse of the opposition proceedings, the Boards acknowledged that the result may have been that the opponent was a purely nominal opponent. However, they said this was no different from a strawman opposition which is permissible following G3/97 and 4/97, cited above.
Regarding point (2), ie, that the appellant in fact no longer existed, the Boards applied the principle of universal succession.
Thus the Boards found that as there was no transfer from Aventis R&T to Axiva GmbH, the opposition remained in the name of Aventis R&T as long as that company existed. The opposition was then transferred by way of universal succession eventually to Sanofi-Aventis Deutschland GmbH.
Curiously the remedy in each case was different. In T1421/05 the Board allowed for the appellant’s name to be corrected to Sanofi-Aventis Deutschland GmbH. In T0261/08 the Board thought that the correct remedy was to record the name of the new appellant as a result of transfer by universal succession.
Although both appeals were ruled to be validly filed, they were ultimately dismissed as the patents were found to be valid; the written decision in T0261/08 issuing after the patent had expired.