T 1081/06 10-10-2008

1. As is apparent from the foregoing, the admissibility of the appeal has been challenged on behalf of the respondent/patent proprietor by a professional representative whose authorisation to act has in turn also been challenged. Accordingly the first matter to be considered is the entitlement of Mrs. K to act for the respondent/patent proprietor.

2. Authorisation of Mrs. K to act for the respondent/patent proprietor

2.1 The applicant and later the patent proprietor has been represented since the filing of the underlying PCT application by the same firm of professional representatives, namely BBM. This is apparent from the data on the front page of the PCT publication, the information on the EPO Form "1200 12.96" on file, dated 20 May 1999 concerning entry into the regional phase before the EPO and the remaining correspondence during the examination and opposition procedures. The aforementioned form "1200 12.96" named Mr. M of BBM as the professional representative, who also signed the first submission of the patent proprietor, dated 20 December 2001 during the opposition proceedings. The last written submission of the patent proprietor during the opposition proceedings, dated 16 May 2005, was signed by representative Mr. B, also of the firm BBM. This letter was accompanied by an "Enclosure 6" (see section XI.(a).(i) above), a letter signed by aforementioned representative Mr. M, sub-authorising Mr. B, and containing the text: "Please enter this sub-authorisation into the files of the above case, so that [Mr. B] may act for this case as well as I do." The first substantive submission of the respondent/patent proprietor in the appeal procedure, dated 9 March 2007, was signed by the same representative, Mr. B.

The aforementioned letter of 9 September 2008 (see section IX above), from the same firm and also signed by Mr. B requested that a sub-authorisation in favour of Mrs. K be entered on the file. As noted in section IX above, this letter contained the text: "Please enter this sub-authorisation into the files of the above case, so that [Mrs. K] may act for this case as well as I do.".

2.2 It is conspicuous to the Board in this connection that:

(i) There is no signed authorisation of the firm BBM on the file beyond the statement on EPO Form 1200 12.96 concerning "Entry into the regional phase before the EPO as designated or elected Office", signed by Mr. M and dated 19 May 1999 that BBM in the person of Mr. M is the representative and the subsequent submissions informing the EPO of "sub-authorisations" of further professional representatives;

(ii) All the persons mentioned in these subsequent submissions, namely Mr. B and Mrs. K are European professional representatives.

2.3 The requirements of the EPO in relation to the filing of authorisations are contained in the "Decision of the President of the European Patent Office dated 19 July 1991 on the filing of authorisations" (OJ EPO 1991, 489), to which, incidentally reference is made in part 4.4 of the reasons of the aforementioned decision T 382/03, cited by the representative of Akzo Nobel N.V. (see section XI.(a).(iii) above). This decision of the President sets out the applicable legal provisions relating to authorisations to act before organs of the EPO under R. 101 EPC 1973. According to Article 1(1) of the cited decision of the President of the EPO, a professional representative is required to file a signed authorisation only in the circumstances set out in Art. 1(2) and 1(3) of said decision, i.e. specifically in the cases that:

- Art 1(2): If the European Patent Office is informed of a change of representative involving professional representatives who are not members of the same association, without being notified that the previous representative's authorisation has terminated, the new representative must file […] an individual authorisation […] or a reference to a general authorisation already on file. […]

- Art 1(3): The European Patent Office may require that an authorisation be produced if the circumstances of a particular case necessitate this, particularly in case of doubt as to the professional representative's entitlement to act. (emphasis in each case of the Board).

2.4 Thus it must be concluded, to the extent that the circumstances set out in Art. 1(2) or Art. 1(3) of the aforementioned Decision do not arise, that there was no requirement for a specific authorisation (let alone a sub-authorisation) in favour of a member of the firm BBM to be filed at all.

2.4.1 As regards the "sub-authorisation" by Mr. M of Mr. B of BBM, it is clear to the Board that "Enclosure 6" is in the nature of an information to the EPO concerning which professional representative in the firm of BBM would be dealing with the case. In particular it is clear:

(a) that the change does not involve a professional representative who is not a member of the same association and

(b) that the effect of the phrase "Please enter this sub-authorisation into the files of the above case, so that [Mr. B] may act for this case as well as I do." (emphasis of the Board) is that no change of representative, i.e. no termination of representation by Mr. M has occurred. Nor does any doubt arise as to the sub-authorised professional representative's entitlement to act.

2.4.2 Consequently the circumstances set out in Art. 1(2) and Art. 1(3) of the above Decision do not arise in relation to the entitlement of Mr. B of BBM to act for the respondent.

2.5 As regards the sub-authorisation of Mrs. K of the firm B&B it is true that this involved a professional representative who was not a member of the same association as Messrs. B and M.

2.5.1 It is however clear to the Board that the letter of 9 September 2008 from the professional representative Mr. B who was, for the reasons given above, entitled to act for the respondent, informed the EPO that a further authorisation ("sub-authorisation") in favour of Mrs. K of the firm B&B was in effect.

2.5.2 Whilst it is conceivable that some doubt could, perhaps, have arisen as to the entitlement of one or other of the named professional representatives to act for the respondent, such doubt is precluded by the existence in the letter of 9 September 2008 of the sentence "Please enter this sub-authorisation into the files of the above case, so that [Mrs. K] may act for this case as well as I do." (emphasis again by the Board). It is clear from the phrase "may act…as well as I do." that there has been no change of representative in the sense of Art. 1(2) of the above Decision of the President because there has been no termination of the previous entitlement. Consequently the effect of the letter of 9 September 2008 is that Mrs. K acquires entitlement to act for the respondent in the prosecution of this case. There is thus no doubt as to the entitlement of the professional representative Mrs. K to act on behalf of the respondent.

2.5.3 Consequently it is conspicuous to the Board that the circumstances set out in Art. 1(2) and 1(3) of the above Decision of the President do not arise in relation to the sub-authorised professional representative Mrs. K either.

2.6 The arguments of the representative of Akzo Nobel N.V. regarding the admissibility of these sub-authorisations were two-fold:

- firstly that they were not supported by general legal principles and that explicit statements to such effect were required, e.g. by crossing boxes on forms (see section XI.(a).(ii) above) and

- secondly that the findings of decision T 382/03 rendered such granting of sub-authorisations invalid (see section XI.(a).(iii) above).

2.6.1 Regarding the first argument, it is conspicuous to the Board that the representative of Akzo Nobel N.V. did not further specify any such legal principle in support of his allegation. Nor, in the Board's view was it necessary or appropriate to seek recourse to unspecified "general legal principles" since the applicable law is explicitly set out in the above mentioned Decision. As explained in sections 2.3 - 2.5 above, neither of the sets of the circumstances under which according to said Decision it is required that a signed authorisation be filed arise in relation to the sub-authorisations of either Mr. B or of Mrs. K. Therefore according to the applicable legal provisions it was not necessary in the present case for either Mr. B or Mrs. K to submit a signed authorisation. Thus the argument of the representative of Akzo Nobel N.V. that an explicit statement relating to the power to grant sub-authorisations was required is irrelevant.

2.6.2 Regarding the further aspect of this argument of the representative of Akzo Nobel N.V. namely that it is required to indicate the right to give sub-authorisations by crossing a box on a - non-identified - form (see section XI.(a).(ii) above) it is observed that the EPO form "1200 12.96" entitled "Entry into the regional phase before the EPO as designated or elected Office" present on the file (see section 2.2.(i) above) contains no such box. The representative of Akzo Nobel N.V. neither argued that an incorrect form had been employed, nor for example that some other form should instead or additionally have been submitted. Accordingly this argument of the representative of Akzo Nobel N.V. is likewise not supported by the facts. Moreover it is recalled that the use of that kind of form is optional. Further, the failure to cross such a box would not preclude the possibility of the party fulfilling the same requirement, i.e. conveying the same information, by some other means.

2.6.3 Regarding the second argument (see section XI.(a).(iii) above), it is noted that the decision cited, T 382/03, related to one of the sets of circumstances covered by the aforementioned Decision of the President of the EPO, namely the situation where there was a doubt regarding the status of the representative of an opposing party. The present case however concerns the representative of the patent proprietor (emphasis of this Board). Specifically, T 382/03 concerned the situation where there had been an announcement of a change of representative without it having been established whether the first named, i.e. original representative had withdrawn (T 382/03 reasons 5.4). This case law is not relevant here because, as explained in sections 2.4.1 and 2.5.2 above, there was no such "change of representative" in the sense of Art. 1(2) of said Decision of the President and there are consequently no such doubts. Accordingly the situation in the case in suit is different from that underlying decision T 382/03 and accordingly the findings of T 382/03 are not relevant to the present case.

2.7 Professional representative Mrs. K was therefore entitled by the chain of sub-authorisations to make submissions on behalf of the respondent/patent proprietor and the submissions made by Mrs. K are admissible.

3. Admissibility of the appeal

3.1 It is not disputed between the parties that the transfer of the status of opponent from CIRS S.p.A. to Akzo Nobel N.V. was invalid (see section XI.(e) above). The Board concurs with this view. The letter of 11 November 2003 related to a sale of shares, i.e. a transfer of ownership only. There is no evidence that all assets or at least the assets in the interests of which the opposition was filed were transferred from CIRS S.p.A. to Akzo Nobel Chemicals International B.V. Hence this latter entity never acquired opponent status (following G 4/88, Order, cited supra). The second transfer of opponent status from Akzo Nobel Chemicals International B.V. to Akzo Nobel N.V. was invalid for the same reason and further by analogy with G 2/04 cited supra, since no transfer at all occurred between Akzo Nobel Chemicals International B.V. and Akzo Nobel N.V.

Accordingly Akzo Nobel N.V. never validly acquired the status of opponent.

3.2 Instead a dispute arose between the parties regarding the consequences of this invalid transfer of the status of opponent for the admissibility of the appeal and the appropriate further procedure (see sections XI.(e) and (f) above).

3.3 Decision T 1178/04, cited by the representative of Akzo Nobel N.V. at the oral proceedings (see section XI.(e) above) related to a case in which, during the opposition proceedings, a transfer of opponent status took place which, although initially admitted by the opposition division, was later found by the Board to be invalid (see sections III-VII of the facts and submissions and sections 6 to 43 of the reasons of T 1178/04 respectively, in particular the conclusions in section 43). Regarding the question of admissibility of the appeal - dealt with in sections 1 to 5 of the Reasons of T 1178/04 - it was held in section 3 of the Reasons that the term "party" simply meant someone who takes part in proceedings before the EPO. It was also held that a person was a party for this purpose even if the entitlement to take part in such proceedings was brought into question and such entitlement was the subject matter of a pending decision. Although this person may cease to be a party if it were decided that he was not entitled to take part in the proceedings, this did not mean that he never had been a party, only that he was no longer entitled to take part in the proceedings (emphasis of this Board). In particular T 1178/04 in section 3 of the reasons clarifies that the status cannot change retrospectively from that of being a party to that of never having been a party.

3.4 Following this view, the Board considers that Akzo Nobel N.V. was and is a party to these proceedings. The finding that the ruling of the Opposition Division on the issue of opponent status was incorrect (see section 3.1 above) does not prevent Akzo Nobel N.V. from having been a party at the date it filed its notice of appeal (cf T 1178/04, reasons, 4).

3.5 As it has not been disputed that the other requirements of Art. 107 and 108 EPC have been satisfied in this case, it follows that the appeal of Akzo Nobel N.V. is admissible (see also T 1178/04, reasons, 5).

4. The next steps

4.1 Following the findings of T 1178/04 (Reasons 44ff) the correct procedural consequence is to set aside the decision as a whole, and to remit the case to the first instance with the order to continue the opposition proceedings with the correct opponent (following T 1178/04 in particular Order, 3).

4.1.1 The respondent/patent proprietor has indicated that it disagrees with this course of action since the fate of the original opponent CIRS S.p.A. was not known, i.e. whether this entity still exists or, if it no longer exists, who was the legal successor (see section XI.(f) above).

4.1.2 It is correct that no information has been submitted by either party concerning this matter.

4.1.3 However the fact that the question of the identity of the legal successor to CIRS S.p.A. has not been finally established does not justify to distinguish in the present case from the conclusions reached in T 1178/04, namely that the correct course of action in this situation is to refer the case back to the first instance for continuation of the opposition proceedings. Nor can the uncertainty concerning the identity of the legal successor of the original opponent have an influence on the conclusions reached, with reference to T 1178/04, in respect of the status of Akzo Nobel N.V.

4.1.4 Therefore the Board considers that the case is to be remitted to the opposition division with the order to continue the opposition proceedings with the original opponent or its legal successor.