G 0004/88 - Transfer of opposition I - #55

Citation rank: 55
No. of citations: 87

G 4/88 is the first of two G-decisions which looked at the question of whether the status of the opponent can be transferred, and under which circumstances (the other decision being G 2/04.)

In the underlying case, a company X had filed the opposition in the interest of a part of its business. X assigned that part of its business (in the interest of which the opposition was filed) to another company, Y. The original opponent, X, subsequently merged with yet another company to form a company Z.

Z was the universal successor of X and, as such, admissibly lodged an appeal. At the same time, Z requested that the opposition be transferred to Y, which by then held the part of the business, in the interest of which the opposition was filed.

The Technical Board in charge wondered whether such a transfer of the opposition was possible, and referred a corresponding question to the Enlarged Board of Appeals.

The Enlarged Board firstly observed that R. 60(2) EPC1973 (now R. 84 EPC) implicitly acknowledges that the opponent status can be transferred by way of "universal succession", in that case from a deceased to its heir.

The Enlarged Board then considered the case where the opposition was filed in the interest of a part of the opponent's business and that part of the opponents business was sold or transferred. The Enlarged Board stated:

"The Enlarged Board considers that, in such a situation, the opposition constitutes an inseparable part of those assets. Therefore, insofar as those assets are transferable or assignable under the applicable national laws, the opposition which is part of them must also be regarded as transferable or assignable in accordance with the principle that an accessory thing when annexed to a principal thing becomes part of the principal thing." (point 6 of the reasons)

The transfer of the opposition from Z to Y was therefore possible.

Remark: It is important to note that in G 4/88 the "parts of the business" (in the interest of which the opposition was filed) did not have "legal personality" at the time the opposition was filed. Hence, it was initially not possible to file the opposition in the name of those "parts". The situation was different in G 2/04, where the entity to which the opposition was to be transferred had legal personality at the time of filing of the opposition, but the opposition was nevertheless filed in the name of its mother company. In that case, the opposition could not (freely) be transferred from mother company to its former subsidiary.

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Headnote:

An opposition pending before the European Patent Office may be transferred or assigned to a third party as part of the opponent's business assets together with the assets in the interests of which the opposition was filed.

The full text of the decision can be found here.