Enlarged Board of Appeals - Decision G 1/13 – Status of an opponent

 

The Enlarged Board of Appeals recently rendered its decision G1/13 which deals with the status of an opposition filed by a company which ceases to exist before the decision of the opposition division becomes final.

 

I. In the referral case, the company which filed the opposition, FBL, was dissolved during the opposition proceedings. The authorized professional representative, however, continued the opposition proceedings as if FBL still existed, and even filed an appeal in the name of FBL against the interlocutory decision of the opposition division. During the appeal proceedings, FBL was restored to the UK register of companies and was therefore deemed, under the relevant national law (UK law), to have continued in existence as if it had not been dissolved.

 

II. In view of this situation, the following questions were referred to the Enlarged Board of Appeal:

 

1. Where an opposition is filed by a company which is dissolved before the Opposition Division issues a decision maintaining the opposed patent in amended form, but that company is subsequently restored to the register of companies under a provision of the national law governing the company, by virtue of which the company is deemed to have continued in existence as if it had not been dissolved, must the European Patent Office recognize the retroactive effect of that provision of national law and allow the opposition proceedings to be continued by the restored company?


2. Where an appeal is filed in the name of the dissolved company against the decision maintaining the patent in amended form, and the restoration of the company to the register of companies, with retroactive effect as described in question 1, takes place after the filing of the appeal and after the expiry of the time limit for filing the appeal under Article 108 EPC, must the Board of Appeal treat the appeal as admissible?


3. If either of questions 1 and 2 is answered in the negative, does that mean that the decision of the Opposition Division maintaining the opposed patent in amended form automatically ceases to have effect, with the result that the patent is to be maintained as granted?

 

III. The Enlarged Board of Appeals decided as follows:

 

1. Where an opposition is filed by a company which subsequently, under the relevant national law governing the company, for all purposes ceases to exist, but that company is subsequently restored to existence under a provision of that governing national law, by virtue of which the company is deemed to have continued in existence as if it had not ceased to exist, all these events taking place before a decision of the Opposition Division maintaining the opposed patent in amended form becomes final, the European Patent Office must recognize the retroactive effect of that provision of national law and allow the opposition proceedings to be continued by the restored company.


2. Where, in the factual circumstances underlying Question 1, a valid appeal is filed in due time in the name of the non-existent opponent company against the decision maintaining the European patent in amended form, and the restoration of the company to existence, with retroactive effect as described in Question 1, takes place after the expiry of the time limit for filing the notice of appeal under Article 108 EPC, the Board of Appeal must treat the appeal as admissible.


3. Not applicable.


IV. Although relating to a very specific context, this decision evidences the importance, for the opponent himself but also for the patent proprietor, of keeping track of any change in the social structure of the opponent, including mergers, sale of subsidiaries or other portions of the company, acquisitions, dissolutions, etc., during the entire duration of the proceedings before the European Patent Office.

 

In particular, since the opposition is not assignable and since, moreover, the European Patent Office is entitled to examine the status of the opponent at all stages of the proceedings, it is important to keep the company having formed the opposition, or its successor in rights, alive for the entire duration of the proceedings before the EPO, including during possible appeal proceedings.

 

The complete decision is available here.

 

If you have any questions concerning this newsletter, please contact Anne Francastel.

 

This IP Alert is for information purposes only and does not constitute legal advice.

 

Publication date : May 2015

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