Oppositions at the EPO provide an effective way of mitigating
disadvantageous patent grants. However, although effort should
primarily be spent focusing on argumentation, it is also important
to avoid clerical errors before submission. One error that can
occur, particularly when an opposing party has multiple divisions
and/or subsidiaries, is inconsistency between documents with
regards to the name of the opposing party.
In decision T 0615/14, the EPO Board of Appeal applied the
principles established in G 1/12 to a case where correction of an
opponent's name on a notice of opposition was requested. A
notice of opposition was filed by a professional representative
against European Patent No. 1 605 772 comprising a completed form
2300.1 (Notice of Opposition) and a document entitled "Facts
and Arguments". The form named NV Nutricia as the opponent
whilst the "Facts and Arguments" document named Campina
Nederland Holding as the opponent. Following the expiry of the
opposition period another representative from the same law firm
wrote to the EPO requesting the correction of the designation of
the opponent on form 2300.1 to Campina Nederland Holding BV under
Rule 139 EPC.
The Opposition Division reasoned that, as established by T 25/85,
it was a fundamental principle that the identity of the opponent
had to be established at the expiry of the opposition period in
order to be a party to the opposition proceedings as laid down in
Article 99(3) EPC. Remediable deficiencies and omissions in
information concerning the opponent, which could be remedied on
invitation under Rule 77(2) EPC, included details relating to the
correct designation of the natural or legal person or to postal
requirements in respect of the opponent's address. Rule 139 EPC
could not be used in order to subsequently provide, once the
opposition period had expired, information needed to identify an
opponent for the first time. Where the state of the file on the
last day of the opposition period did not allow the identification
of the opponent, a correction was not possible. The Opposition
Division therefore rejected the opposition as inadmissible.
The opponent appealed this decision, arguing that in view of G 1/12
the request for correction under Rule 139 EPC should be allowed.
Rule 139 EPC, first sentence, states that "Linguistic errors,
errors of transcription and mistakes in any document filed with the
European Patent Office may be corrected on request". In G
1/12, issued after the Opposition Division's ruling, the
Enlarged Board of Appeal held that the general procedure for
correcting errors under Rule 139 EPC was available for the
correction of an appellant's name in a notice of appeal
provided that, in line with established case law on the application
of the rule, the correction reflected what was originally intended,
did not give effect to a change of mind or development of plans,
and represented the party's actual rather than ostensible
intention.
In the present case the Board of Appeal held that G 1/12, as far as
Rule 139 EPC is concerned, was equally applicable to a request to
correct an opponent's name in a notice of opposition.
Furthermore, although it was not clear on the basis of the
documents on file at the expiry of the opposition period in whose
name the representative originally intended to file the opposition,
it was directly derivable from G 1/12 that evidence submitted later
in proceedings could be used in order to establish this fact.
E-mail evidence showed that the representative was instructed to
file the opposition by the IP manager of DMV-International, which
at the time of filing the opposition was a sub-division of Campina
Nederland Holding. Therefore of the two companies named in the
notice of opposition, NV Nutricia and Campina Nederland Holding, it
could only be the latter in whose name the representative
originally intended to file the opposition. The Board of Appeal
therefore allowed the request for the opponent's designation in
form 2300.1 to be corrected under Rule 139 EPC and ruled the
opposition to be admissible. The opposition was remitted to the
opposition division for further prosecution.
So, where are we left after G 1/12 and T 0615/14? Of course,
European practitioners should always strive to ensure that all the
correct details are included at the first time of asking. However,
there will be circumstances, maybe resulting from a
miscommunication, when the incorrect details are given for key
information such as the opponent's identity. These decisions
tell us that maybe all is not lost. However, it is essential that
in such circumstances strong evidence can be provided as to the
true intention of the party involved.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.