Key points
- A company requests that “the party status as opponent be transferred to it - and with it the opponent's procedural status as appellant in the appeal proceedings”. The Board rejects the request.
- The Board first gives a concise but very useful review of established case law regarding the transfer of opposition.
- “The requirements for a transfer of party status as appellant-opponent [of G4/88] are not met since the board considers it not sufficiently proven that all relevant business assets in the interests of which the opposition had been filed had been transferred to Benuvia Therapeutics Inc., nor that the opposition was transferred.”
- “The board considers that it is on the opponent or the third party seeking the party status as opponent to prove that all assets had been transferred in the interest of which the opposition had been filed. ”
- “Schedule 5.8(a) [of the agreement] lists various patent filings made by the appellant-opponent or its affiliated companies and patents under which licence rights had been granted to them. According to D44, the transfer of any patent-related asset was dependent upon execution of the Patent Assignments. ... While the two Patent Assignments D46 and D47 show that all the listed patent filings had indeed been assigned to Fresh Cut Development, LLC or Benuvia Therapeutics Inc., respectively, no evidence was provided in relation to the licence rights.”
- “On the basis of the submissions and evidence filed, the board could not establish that the licence rights listed in Schedule 5.8(a) as part of the CBD business assets had indeed been transferred by the appellant-opponent, and it thus had to conclude that these business assets remained with the appellant-opponent, i.e. Insys Therapeutics, Inc. ... Where only part of the assets in the interests of which the opposition had been filed - here the CBD business assets - were transferred, the requirements set by the Enlarged Board of Appeal in its decision G 4/88 (cited above) cannot be considered to be met. In such a case, the original opponent remains party to the proceedings.”
- “the board likewise does not consider it proven that the opposition was transferred under the Agreement D44. ... The board does not agree with the main line of argument of Benuvia Therapeutics Inc. that the opposition, in case of a transfer of all business assets in the interest of which the opposition had been filed, is transferred with the transfer of these assets under all circumstances. The board takes the view that this does not occur automatically.”
- This may be an important point. The present Board 3.3.01 here follows T 0234/18 of Board 3.5.02.
- The Board, explaining the point: “where a company contractually transfers the business assets in the interests of which an opposition had initially been filed, it is a matter of the parties' agreement whether or not the opposition - i.e. the party status as opponent - is transferred together with these business assets.”
- The Board, in further explanation: “To the contrary, the wording chosen by the Enlarged Board of Appeal [in G 4/88] ("may be transferred" and "transferable or assignable") makes it clear that the decision specifies the conditions under which a transfer of the opponent status is possible. Thus, decision G 4/88 does not envisage an "automatic" transfer of the opponent status in cases of a contractually agreed transfer of the business assets in the interests of which the opposition was filed (see also T 1911/09, Reasons 2.1.2 and T 1421/05, Reasons 3.2 ff).”
- The two referenced decisions deal with the point that in case of a transfer of an opposition with business assets, i.e. not by universal succession, the party status of opponent only changes after filing a request with the EPO and sufficient evidence. This is a different point than decided here (as the present Board seems to acknowledge in fact).
- “The oral proceedings took place in the absence of the appellant-opponent, Insys Therapeutics, Inc. Even though professional representatives attended the oral proceedings for the appellant-opponent, they were not entitled to act on behalf of the appellant-opponent because they had not submitted an authorisation, despite the board's earlier invitation to do so.”
- The professional representatives were allowed to argue that the invitation to submit an authorization was not proper under Article 1(1) of the Decision of the President of the EPO dated 12 July 2007 on the filing of authorisations (OJ EPO 2007, Special edition No. 3, 128. The Board rejects the arguments for the reason that the appellant-opponent was in liquidation so the Board had doubts.
- “In the communication dated 6 July 2021, in the sections preceding the board's invitation to file an authorisation, the board explained its doubts that the appellant-opponent, being a company in the process of liquidation, was able to act without the involvement of the liquidator. The board therefore saw the need to ascertain that the professional representative was indeed empowered to act and thus invited the professional representative to file, within two months of notification of the communication, a signed authorisation in which, in particular, the capacity of the person signing should be stated.”
- Interruption of proceedings, Rule 142, does not apply to opponents of course.
- “ Regarding to whom notifications are to be addressed under Rule 130(1) EPC, the legal situation on the date of issuance of the communication is relevant (see J 19/92, Reasons 4 and T 247/98, Reasons 1). While Rule 152(6) EPC creates the legal fiction that if a required authorisation is not filed in due time, any procedural steps taken by the representative are, as a rule, deemed not to have been taken, this does not relate to the steps taken by the EPO.”
- “the appellant-opponent had to be considered as not being represented at the oral proceedings. In order to avoid any further procedural delays, the board decided, in accordance with Rule 115(2) EPC and Article 15(3) RPBA 2020, that the proceedings be continued in the appellant-opponent's absence, and the party was treated as relying on its written case”
- “The request of the appellant-opponent's representatives, submitted at the oral proceedings, that the proceedings be postponed so that the appellant-opponent could file an authorisation was rejected.”
- The appellant-opponent was in liquidation.
- “The board takes the view that in the circumstances of the current case in which the board had to conclude that the appellant-opponent no longer has capacity to act in the appeal proceedings and where this issue had been a contentious one, albeit in the context of a transfer of party status, a decision is to be taken on the admissibility of the appeal (similar to in T 2136/11, Reasons 4 to 6). Thus, based on the findings above, the board holds that the appeal is to be rejected as inadmissible.”
- Also interesting: “Communication by the board dated 6 July 2021 indicating that the determination whether a legal entity existed or had ceased to exist and had capacity to act was a matter of national law and that in cases such as this where the answer was to be found in laws foreign to the EPC and its contracting states, it was for the parties to provide evidence of the legal provisions which they considered relevant. ”
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/02/t-000717-transfer-of-opposition-and.html
