EPLAW PATENT BLOG

EPO – The effect of death and resurrection on opposition and appeal clarified by the Enlarged Board of Appeal (EBA)

Posted: December 19th, 2014

EPO, G 1/13, EBA, decision of 25 November 2014 – Fischer-Tropsch Catalysts/SASOL TECHNOLOGY II

The contested patent was opposed by Formalities Bureau Limited (FBL). The opponent’s representative appears in the UK Company Register in the Section “Directors and Secretaries” of FBL. During the opposition proceedings FBL was struck off the Register. The opposition proceedings were continued without anyone noticing the deletion in the Register. The Opposition Division held that the patent could be maintained in a limited version. FBL appealed. Shortly before the oral proceedings, the proprietor discovered that FBL had ceased to exist. On FBL’s request, the UK High Court made an order restoring the name of FBL to the Register of Companies. The Technical Board of Appeal referred questions relating to the admissibility of the opposition and the appeal to the Enlarged Board of Appeal.

Under the EPC, any natural or legal person, or anybody equivalent to a legal person by virtue of the law governing it may be a party to the proceedings. Thus, the EBA notes as a starting point that legal entities exist only by virtue of the national legal system which governs their incorporation, subsequent existence and cessation. Therefore, the Board recognizes that FBL existed and had capacity to act before it ceased to exist and that the same applied after it was restored to existence.

Since the appeal, had been filed at a time when FBL was deleted in the Register, the next question was whether national was also to be followed as regards the deemed retrospective existence of LBL as provided for in UK law. The EBA states that there are limits on the extent to which the EPO should follow national law and mentions as an example the free transfer of an opposition which may be valid under national civil and is not accepted under the procedural law of the EPC. In the absence of any relevant provision of the Convention, the EBA weighs the interests of the parties to the proceedings and of the general public and concludes in summary that national law is to be applied with the consequence that opposition and appeal are to be considered admissible.

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The answers given by the EBA to the referred questions read as follows:

1. Where an opposition is filed by a company which subsequently, under the relevant national law governing the company, for all purposes ceases to exist, but that company is subsequently restored to existence under a provision of that governing national law, by virtue of which the company is deemed to have continued in existence as if it had not ceased to exist, all these events taking place before a decision of the Opposition Division maintaining the opposed patent in amended form becomes final, the European Patent Office must recognize the retroactive effect of that provision of national law and allow the opposition proceedings to be continued by the restored company.

2. Where, in the factual circumstances underlying Question 1, a valid appeal is filed in due time in the name of the non-existent opponent company against the decision maintaining the European patent in amended form, and the restoration of the company to existence, with retroactive effect as described in Question 1, takes place after the expiry of the time limit for filing the notice of appeal under Article 108 EPC, the Board of Appeal must treat the appeal as admissible.

Read decision G 1/13 here.

Reported by Rudolf Teschemacher

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