EPO – Appeal not filed in the name of the true party: Can the deficiency be remedied? Referral to EBA

Posted: February 16th, 2012

EPO, Technical Board of Appeal 3.3.07, decision of January 30, 2012, to be published in OJ EPO   – Zenon Technology Partnership v. Siemens Industry, Inc.

In these times of mergers and acquisitions, representatives in proceedings before the EPO sometimes lose track of who is the true party to the proceedings. A good example is the patent portfolio of the former Hoechst Group. In 1999, Hoechst AG merged with parts of Rhône-Polenc to become the French Aventis Group and after a further merger Sanofi-Aventis. The industrial property rights were moved from company to company, from parent companies to subsidiaries and vice versa. It is no surprise that in many proceedings problems arose who the true party was at a given time.

Illustrative are two cases decided recently, i.e. T 261/08 of September 22, 2010 and T 1421/05 of January 18, 2011. In these cases a Hoechst subsidiary was the original opponent. Within seven years, the business to which the opposition was related was transferred three times and the names of the companies concerned were changed four times. The appeal was filed on behalf of the original opponent (with a changed name) who had ceased to exist two respectively 5 years before the appeal proceedings. Eventually, the appeals were held admissible. Decision T 1421/05 comprises 94 pages and the major part deals with the status of the opponent. 

In many cases in which the appellant indicated in the notice of appeal was not the true party to the proceedings, it was contested whether the deficiency could be rectified either on an invitation from the Board pursuant to Rule 101(2) in conjunction with Rule 99(1) a) EPC to correct the required indications on the appellant or on a request by the appellant to correct an obvious error in accordance with Rule 139(1) EPC. Board 3.3.07 concluded that the available case law is not uniform. Referring 4 points of law to the Enlarged Board of Appeal the Board wants to obtain clarification if and on the basis of which objective or subjective criteria such deficiencies may be rectified. In any case, users of the European patent system should be aware that negligence in respect of the formal requirements of an appeal may easily result in a loss of rights.

Read the decision (in English) here.

Reported by: Rudolf Teschemacher

Leave a Reply