2.1. Entitlement to file an opposition

Abstract

In T 846/22 the respondent (patent proprietor) questioned the status of the appellant as a legal person in the context of Art. 99(1) EPC, according to which "any person may give notice to the European Patent Office of opposition [ ... ] in accordance with the Implementing Regulations". "Any person" is to be interpreted in line with Art. 58 EPC as "any natural or legal person, or any body equivalent to a legal person by virtue of the law governing it" (G 3/99, OJ 2002, 347; G 1/13, OJ 2015, 42).

The respondent had submitted that the appellant, a UK company, had been a "dormant company" under UK law at the time of filing the opposition and had never changed this status. The respondent argued that this meant that the appellant was not entitled to conduct any business and could not be equated to a legal person.

The board noted that the status of a legal person as such, i.e. the question as to whether they had the capacity to sue or be sued, was a matter of national law. The right to bring opposition proceedings, to take part in such proceedings, to file an appeal and to take part in appeal proceedings was, by contrast, a matter of procedural law governed by the EPC (G 1/13, point 5.3 of the Reasons with reference to G 3/97, OJ 1999, 245, point 2.1 of the Reasons). Hence, it had to be established whether the appellant, in particular at the time of filing the notice of opposition and the notice of appeal, had the status of a legal person.

The board referred to Section 1169 of the (UK) Companies Act 2006, according to which a company is dormant during any period in which it has no significant accounting transactions. Although inactive, a dormant company was not struck off, but remained on the Companies House register. This meant that a dormant company maintained the status of a legal person. The board thus agreed with the conclusion drawn to this effect in T 184/11.

It followed therefore that the appellant had the status of a legal person at the time of filing the notice of opposition and throughout the opposition and appeal proceedings. The respondent's argument in this respect was therefore not convincing.

Whether the appellant had engaged in transactions which could have led to the loss of its dormant status went beyond the assessment of its status as a legal person. The assessment of potential financial relationships between a dormant company and an appointed representative was of no relevance to establishing the legal status of the company as a legal person either. Moreover, the opponent's representative was appointed in accordance with the requirements of the EPC. Hence, there was no reason for the board to doubt that the representative was duly authorised. The remaining provisions under the EPC for the admissibility of the opposition and appeal, including the payment of the relevant fees, were also complied with.

As regards the contention that the appellant had been acting on behalf of a third party with the intention of avoiding any liability for possible costs apportioned to the appellant under Art. 104 EPC, the board noted that acting on behalf of a third party could not be seen as a circumvention of the law unless further circumstances were involved and there was no requirement under the EPC that a party be equipped with sufficient financial means to comply with a merely hypothetical costs order. Moreover, the EPC did not offer the patent proprietor any kind of guarantee that an opponent would be able in fact to reimburse costs awarded against them (G 3/97, point 3.2.6 of the Reasons).

For these reasons, the board did not see any abuse of procedure by the appellant which might render the opposition and/or the appeal inadmissible.

The board thus refused the respondent's requests that the decision under appeal be set aside and the opposition be held inadmissible or that the appeal be held inadmissible.

Abstract

In T 1893/22, the proprietor-appellant had requested an enlargement of the board due to the case potentially setting a precedent regarding proper representation in proceedings established by the EPC. The board held that the case did not go beyond what might be handled by a board with an ordinary composition. Mr N, the representative of the opponent, a French company in the form initially of a SASU (société simplifiée unipersonnelle), was the President of the SASU and also a professional representative.

The proprietor had contested the admissibility of the opposition relying on the following points: (i) the opponent's professional representative could not represent the company since he was simultaneously managing the legal entity he represented; (ii) the identity of the opponent was not unequivocally determined; (iii) the opponent carrying out activities reserved to professional representatives without the necessary qualifications circumvented the principles of representation; (iv) the opponent's change of name; (v) the reference in the notice of opposition to the German translation of the claims.

Concerning the representation, the board stated that – contrary to the proprietor's allegations – Art. 133 and 134 EPC together with R. 152 EPC and the Decision of the President of the EPO of 12 July 2007 on the filing of authorisations (OJ SE 3/2007, 128) indeed constituted a complete and self-contained set of rules on representation in proceedings established by the EPC (a request in this respect to refer the question to the Enlarged Board was also submitted by the proprietor). A legal person having its seat in an EPC contracting state is not obliged to be represented by a professional representative (Art. 133(1) EPC). Furthermore, persons whose names appear on the list of professional representatives are entitled to act in all proceedings established by the EPC (Art. 134 EPC). A legal person having its seat in an EPC contracting state can act in proceedings before the EPO through its legal representatives. At the time the opposition was filed, Mr N in his capacity as President of the SASU was entitled to represent the SASU since under French law (Art. L. 227 Commercial Code) he was entitled to act on behalf of the legal person in all circumstances. Mr N as a professional representative would have been entitled to act not only as the president of the SASU, but also as a professional representative appointed by that legal person.

For the sake of completeness, the board detailed why neither the references to French law (Civil Code) nor German law, nor the reference to general principles under Art. 125 EPC could, in its view, prevent the company from appointing Mr N as its professional representative before the EPO.

Regarding the identity of the opponent, the board held that the opposition was clearly filed on behalf of SARL Cabinet NÜ (see the notice of opposition which mentioned the initial legal form of the company "SASU Cabinet NÜ"). The only uncertainty, based on the submissions of the proprietor itself, concerned whether Mr N was representing the opponent as a European patent attorney or in his capacity as the president of that company. Nonetheless, this alleged ambiguity could not raise any doubt about the identity of the opponent.

The alleged circumvention of the law was also rejected by the board, which observed first that this would occur if a person not entitled to act as a professional representative performed all the activities typically carried out by professional representatives while assuming the role of a party, in order to circumvent the prohibition on unqualified representation, but Mr N was a qualified professional representative.

As regards the change of the opponent's name, the board endorsed the analysis set out in the contested decision (Art. 15(8) RPBA). A change of legal form of the company (SASU to SARL) had taken place, which indicated a change of name and not a transfer of assets to a different entity. The use of the old legal form on the company stationery in a submission filed close to the date of change of the legal form did not undermine this. The reference to the German version of the claims did not make the respective attacks incomprehensible. In conclusion, the opposition was admissible and the request for a referral was rejected. The appeal was also dismissed.