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Friday, 6 September 2013

I think (I'm a company), therefore I am? EPO Enlarged Board seeks comments on resuscitated companies

The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has just announced that it is seeking from third parties written statements on case G 1/13, referred to the EBA by Technical Board of Appeal (TBA) 3.3.7 with interlocutory decision of 21 June 2013 in case T 22/09.

So what is going on?  Well, in a decision reminiscent of the quandaries of Marty Mcfly in Back to the Future, the members of a Technical Board of Appeal referred three questions to the Enlarged Board of Appeal.

First, (Marty) we’ve got to go back… to the original application, which was opposed in the name of a UK company, Formalities Bureau Limited. The Opposition Division (OD) allowed an amended version of the patent. An appeal to the decision was filed, but this time in the name of Formalities Bureau Bawden & Associates.

The patent proprietor smelt a catrat, and objected that the appeal was inadmissible, on the basis that Formalities Bureau Limited had ceased to exist 3 years before the decision of the OD.

Fortunately for the proprietor, one might think, the Boards of Appeal pf the EPO had some clear case law on matters such as this; T525/94 and T353/95 led the TBA to declare [at para 3 of the Reasons of the interlocutory decision]:
When an opposition is filed by a company, that company must not only exist at the moment when the opposition is filed but must continue to exist throughout the opposition proceedings and, in the event of an appeal, throughout the appeal proceedings.”
Case closed, let’s go home… What’s that? There’s more?! Great Scott!

The appellant provided details of a successful application to the Chancery Division of the High Court of Justice (of England and Wales) to restore Formalities Bureau Limited under section 1029 of the UK Companies Act 2006, which ruled that the company was “thereupon to be deemed to have continued in existence as if its name had not been struck off”.

This all got a bit too much for the poor TBA and they had to turn to the Enlarged Board with a few questions:
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?
The European Patent Convention was drafted with the intention of, insofar as possible, bringing entitlement out of the jurisdiction of the EPO and leaving it to the national courts, at least so far as applicants are concerned (see Articles 60 and 61 EPC and Rules 14 to 18).  But the EPO does not seem entirely to be able to stay out of these matters, particularly in relation to opponents and appellants, as it testified by the still-pending G 1/12 (reported by the IPKat here) and the now well-established G2/04 (reported by the IPKat here, where this Kat is surprised to find his name mentioned - he has no recollection of any involvement whatsoever).

The Enlarged Board is willing to review any third party opinions on this matter that are received by the end of December 2013 at the Registry of the Enlarged Board of Appeal, quoting case number G 1/13. The IPKat is confident there will be a healthy mix of competing views.

And so, we are left with a cliffhanger ending: will the EPO allow a peculiar feature of UK company law that allows companies to be resurrected to prevail before the EPO? Will Marty be able to convince his parents to get together? (Spoiler - TBC and yes).

This Kat would like to thank Paul Beynon (again!) for his assistance in preparing this post.


Roufousse T. Fairfly said...

The EPC was drafted with the intention of, insofar as possible, bringing entitlement out of the jurisdiction of the EPO and leaving it to the national courts, at least so far as applicants are concerned [...]. But the EPO does not seem entirely to be able to stay out of these matters, particularly in relation to opponents and appellants.

Which I feel to be something of a double standard.

Anonymous said...

It may be a peculiar feature of UK law, but the UK is not the only European country to allow such possibilities.

Surely under treaties of mutual recognition etc. the EPO should just accept the UK court's decision to deem the company to have never been dissolved and move on?

What next?

Ron said...

It's not as if bringing dead applications back to life is alien to procedure under the EPC: one well-known and well-used example, further processing, is a procedure by which a legally dead application can be resurrected.

Myshkin said...

Does anyone know how English law goes about this?

Suppose a non-existing company appeals some decision (all under UK law). It is noticed immediately that the company does not exist. The appeal is supposedly rejected as inadmissible or something similar to that. Case closed.

Some time later, the company is retroactively brought back to life. Does the appeal suddenly become pending again? I would be mildly surprised.

In the present case, it was only noticed that the company had ceased to exist after it had been brought back to life, but I'm not convinced it should matter that a formal declaration of inadmissibility had not yet been made.

Anonymous said...

I find it perfectly correct that the board poses the question to the EBA. In this way a (hopefully) clear position may be found that settles such cases in the future.

Anonymous said...

Clearly the EPO should fully accept national law relating to judical bodies/entities and natural persons. The EPO, the board of Appeal and the enlarged board of appeal are simply not qualified for these matters, and national laws and courts in most EPC-member states provide more than a hundred years of legal evolution and case law regarding these matters.

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