OPPONENT STATUS CAN'T BE TRANSFERRED

This came to the IPKat via two of his friends, Darren Smyth (who directed his attention to it) and Caroline Williams (who prepared it). It's a note on an EPO Enlarged Board of Appeal, Case G 2/04, Transfer of opposition/Hoffmann-La Roche, 25 May 2005 .

In its decision T 1091/02 (OJ EPO 2005, 14 - Methods for detection/Hoffmann-La Roche), Technical Board of Appeal 3.3.4 referred a number of questions to the Enlarged Board of Appeal.

"In the proceedings giving rise to the referral, two opposition were filed in the name of Akzo Nobel NV and Vysis Inc respectively. After rejection of the oppositions, an appeal was filed on 25 October 2002 in the name of bioMérieux BV. It was submitted that bioMérieux BV now owned the diagnostic activities of Akzo Nobel NV to which the opposition pertained. As a precautionary measure in case the appeal in the name of bioMérieux BV was considered inadmissible, it was requested that the appeal be treated as being in the name of Akzo Nobel NV.

In an accompanying declaration it was explained that the diagnostic activities of Akzo Nobel had been concentrated in its subsidiary Organon Teknika BV. As a result of restructuring within Akzo Nobel NV, an agreement effective as of 30 June 2001 had been reached to transfer the diagnostic activities of Organon Teknika BV from Akzo Nobel NV to bioMérieux SA. The opposition had been instituted by Akzo Nobel NV in the interest of its European diagnostic business as conducted on its behalf by its business unit Organon Teknika BV. All the shares of Organon Teknika BV had been transferred to bioMérieux SA which was now 100% the owner of Organon Teknika BV, now called bioMérieux BV."

The questions referred were as follows:

1.(a) Can opponent status be freely transferred? Held: The status as an opponent cannot be freely transferred.

(b) If question 1(a) is answered in the negative: Can a legal person who was a 100% owned subsidiary of the opponent when the opposition was filed and who carries on the business to which the opposed patent relates acquire opponent status if all its shares are assigned by the opponent to another company and if the persons involved in the transaction agree to the transfer of the opposition? Held: A legal person who was a subsidiary of the opponent when the opposition was filed and who carries on the business to which the opposed patent relates cannot acquire the status as opponent if all its shares are assigned to another company.

[...]

3. If question 1(a) and (b) is answered in the negative: Is an appeal admissible if, although filed on behalf of a person not entitled to appeal, the notice of appeal contains an auxiliary request that the appeal be considered filed on behalf of a person entitled to appeal? If, when filing an appeal, there is justifiable legal uncertainty as to how the law is to be interpreted in respect of the question of who the correct party to the proceedings is, it is legitimate that the appeal is filed in the name of the person whom the person acting considers, according to his interpretation, to be the correct party, and at the same time, as an auxiliary request, in the name of a different person who might, according to another possible interpretation, also be considered the correct party to the proceedings.

Darren adds:

"Enlarged BoA Decisions are usually eagerly awaited and of particular interest. However, this Decision relates to a very particular set of circumstances and, apart from, as expected, confirming that Opponent status is not freely transferable (it can only be transferred along with the sale of the whole of the business of the Opponent), little in the Decision appears to be a general relevance".

The IPKat thanks Darren and Caroline for their kindness. Merpel wonders why opponent status can't be transferred. If a granted patent shouldn't have been granted, why should shifts in the legal status of an opponent give it protection?

Things that can be transferred here, here and here
Things that can't be transferred if you're English here and here