G 0002/04 (Transfer of opposition/HOFFMANN-LA ROCHE) of 25.5.2005 - #84

Citation rank: 84
No. of citations: 61

G 2/04 deals with the question of whether and under which circumstances the procedural status of the opponent can be transferred.

In the referring appeal case, T 1091/02, two oppositions had been filed in the name of Akzo Nobel N.V and Vysis Inc., respectively. After rejection of the oppositions, an appeal had been filed in the name of bioMérieux B.V. It was submitted that bioMérieux B.V. now owned the diagnostic activities of Akzo Nobel N.V. in the interest of which the opposition was filed. 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 filed in the name of Akzo Nobel N.V.

The question arose, whether the appeal was admissible. The Board in T 1091/02 thought the situation was unclear and referred corresponding questions to the Enlarded Board of Appeals.

The Enlarged Board took the standpoint that, generally, the status as an opponent could not be freely transferred. This view was based on previous case law (i.a., G 3/97, T 659/92, T 670/95, T 298/97 cited). The Enlarged Board saw no reason to deviate from this position.

The Enlarged Board further specified that 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." In the underlying case, this meant that the opponent status was not transferred from Akzo Nobel N.V. to bioMérieux B.V. when selling the subsidiary. It was a concous choice to file the original opposition in the name of Akzo Nobel N.V. and not in the name of the (then already existing) subsidiary. Since the opponent status did not transfer from Akzo Nobel N.V. to bioMérieux B.V., the appeal filed in the name of bioMérieux B.V. was in the name of the wrong person and thus inadmissible.

However, with a view to the auxiliary request of the appellant that the appeal be treated as being in the name of Akzo Nobel N.V, if the appeal was otherwise inadmissible, the Enlarged Board found that in such situations, where it is not clear in which name an appeal is to be filed, it is appropriate and admissible to file the appeal in the name of one of the candidate appellants, and - as an auxiliary request - in the name of the candidate.

The appeal was thus admissibly filed by Akzo Nobel N.V..

Remark:
The situation in G 4/88 was different, in that there the opposition was filed by a company in the interest of one of its business units, and the business unit had no legal personality at the time of filing the opposition. Hence, the opposition could not have been filed in the name of that business unit. Under these circumstances, the Enlarged Board found in G 4/88 that the opponent status could be transferred from the selling company to the receiving company, together with the business assets of that business unit, by analogy to the (accepted) transfer of opponent status way of universal succession in law.

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Order:

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.

The full text of the decision is accessible here.