Decision G02/04 - Transfer of opposition
26.08.2005
On 25/05/2005, the Enlarged Board of Appeal of the EPO has rendered a decision G 2/04 on the possibility of transferring an opposition from an opponent to another party.
Decision G02/04 - Transfer of oppositionOn 25/05/2005, the Enlarged Board of Appeal of the EPO has rendered a decision on the possibility of transferring an opposition from an opponent to another party.The factsIn the proceedings giving rise to the referral, an opposition was filed in the name of Akzo Nobel N.V. After rejection of the opposition, an appeal was filed on 25/10/2002 in the name of bioMérieux B.V. It was submitted that bioMérieux B.V. now owned the diagnostic activities of Akzo Nobel N.V. to which the opposition pertained. As a precautionary measure in case the appeal in the name of bioMérieux B.V. was considered inadmissible, it was requested that the appeal be treated as being in the name of Akzo Nobel N.V.In an accompanying declaration it was explained that the diagnostic activities of Akzo Nobel had been concentrated in its subsidiary Organon Teknika B.V. As a result of restructuring within Akzo Nobel N.V., an agreement effective as of 30/06/2001 had been reached to transfer the diagnostic activities of Organon Teknika B.V. from Akzo Nobel N.V. to bioMérieux S.A. The opposition had been instituted by Akzo Nobel N.V. in the interest of its European diagnostic business as conducted on its behalf by its business unit Organon Teknika B.V. All the shares of Organon Teknika B.V. had been transferred to bioMérieux S.A. which was now 100% the owner of Organon Teknika B.V., now called bioMérieux B.V.The decision of referralAccording to the interlocutory decision of the Technical Board of Appeal, the conditions required for a transfer of the opponent status were not fulfilled, according to Rule 60(2) EPC and decision G 4/88 – point 4, because even if the sale and assignment of the shares of a legally independent entity by a holding company could be regarded as the business exercised by this entity, the transferee would have been bioMérieux S.A. and not Organon Teknika B.V., later named bioMérieux B.V., which had filed the appeal.The decision G4/88 cannot be applied on this case because the opposition was filed in the name of the holding company and not in the name of the affiliated company.Reasons for the DecisionQuestion 1(a) : Can opponent status be freely transferred?This question was already answered by the Enlarged Board of Appeal in its decision G3/97 according to which “opponent does not have a right of disposition over his status as a party”.Question 1(b) : If question 1(a) is answered in the negative : Can a legal person who was a 100%-owned subsidiary of the opponent when the opposition was filed and who carries on the business to which the opposed patent relates acquire opponent status if all its shares are assigned by the opponent to another company and if the persons involved in the transaction agree to the transfer of the opposition?In order to avoid any problem of transfer of activities, the Enlarged Board of Appeal underlined that it was possible to file the opposition both in the name of the holding and in the name of the affiliate. Then, in case of transfer, the holding could have withdrawn its opposition and the opponent would have been the purchaser of the affiliate.As this solution exists, the opponent cannot complain that procedural law does not meet his needs.Question 2(a) and (b) was not answered because question 1(a) and (b) is answered in the negative.Question 3 : If question 1(a) and (b) is answered in the negative : Is an appeal admissible if, although filed on behalf of a person not entitled to appeal, the notice of appeal contains an auxiliary request that the appeal be considered filed on behalf of a person entitled to appeal?As the declaration of appeal, filed in the name of the holding, was clearly done in conformity with the true intentions of the appellant, there is no deficiency which may be remedied in accordance with Rules 64(a) and 65(2) EPC (see T 97/98) nor an error which might be corrected in accordance with Rule 88 EPC (see T 964/98).The Enlarged Board of Appeal has studied several cases were it is unclear for legal reasons who the correct party to the proceeding is.For example, in case when a request of transfer of the opposition has been submitted but not yet registered, or in case of uncertainty of the application of the national law;In the cited examples, the question of party status has to be decided by the competent body of the EPO on the basis of the file as it stands.The Enlarged Board of Appeal had considered that in those cases, it was unuseful to file two different appeals and that an auxiliary request could be filed indicating the name of another party, which could be considered as the correct one, according to another interpretation.OrderFor these reasons, the Enlarged Board of Appeal has decided that:I. (a) The status as an opponent cannot be freely transferred. (b) A legal person who was a subsidiary of the opponent when the opposition was filed and who carries on the business to which the opposed patent relates cannot acquire the status as opponent if all its shares are assigned to another company.II. If, when filing an appeal, there is a justifiable legal uncertainty as to how the law is to be interpreted in respect of the question of who the correct party to the proceedings is, it is legitimate that the appeal is filed in the name of the person whom the person acting considers, according to his interpretation, to be the correct party, and at the same time, as an auxiliary request, in the name of a different person who might, according to another possible interpretation, also be considered the correct party to the proceedings.
