Tuesday, 17 June 2014

T 1486/10 - No room for asking "who is who"



This is an appeal wherein the patent proprietor  argued that the opposition was not admissible because the opponent could not be clearly and unmistakably identified before expiry of the time limit for opposition. The board considered that the indication of the opponent as given in the notice of opposition does not fairly allow room for speculation as to the identity of the opponent.

This appeal was lodged by the proprietor against the decision of the opposition division revoking European patent No. EP 1319299 on the grounds that the opposition was admissible and that the subject-matter of claim 1 of the granted patent lacked an inventive step (Article 100(a) EPC in combination with Articles 52(1) and 56 EPC) having regard to the disclosures of the two prior art  documents considered in combination.

The patent proprietor had argued that the opposition was not admissible because the opponent could not be clearly and unmistakably identified before expiry of the time limit for opposition.

Reasons for the Decision
1. Admissibility of the opposition

1.1 The appellant contends that the opposition should be rejected as inadmissible pursuant to Article 99(1) and Rules 55 and 56(1) EPC 1973 [editor's note: corresponds to R. 76 and R.77(1) EPC], because the erroneous designation of the opponent meant that the opponent could not be correctly identified.

1.2 The appellant's arguments can be summarised as follows:
The opposition was filed with the following wording: "Hiermit wird namens und im Auftrag der Harry Graf Software GmbH, Mainzer Strasse 36, 55411 Bingen am Rhein, Einspruch gegen ... eingelegt.". The designation of the opponent thus corresponds neither to the natural person Harry Graf nor to the legal person Graf Software GmbH, both mentioned in the telephone directory at the address indicated in the notice of opposition (cf. documents A1 and A4 cited during the opposition procedure). As a result, the opponent cannot be clearly and unmistakably identified, since the opponent could be the natural person "Harry Graf", the legal person "Graf Software GmbH", or the natural and legal persons jointly ("Harry Graf und Graf Software GmbH").
The appellant referred in particular to G 3/99, which states that the opponent has to be determined before expiry of the time limit for opposition (cf. G 3/99, point 12 of the reasons and T 25/85, point 6 of the reasons). The appellant argued that a notice of opposition must be objectively clear, ie it must not require speculation to establish which part of the notice was wrong and what the true intention [of the opponent] was. In the appellant's view, the reasons given in the impugned decision were based purely on speculation. In particular, the decision was partly based on the ground that it was a well-known practice in Germany to include the name of an associate in the company name. However, it could not be assumed that this would be known to persons resident outside Germany such as the present appellant. The appellant submitted also that the board in its preliminary opinion concerning admissibility (cf. point 1 of the communication accompanying the summons) had not correctly applied the test that the opponent must be clearly and unmistakably identifiable.
Accordingly, the decision of the opposition division should be set aside and the opposition be found inadmissible.

1.3 The board notes that it is not in dispute that the designation "Harry Graf Software GmbH" is erroneous, because no company of that name existed at the address provided in the notice of opposition.

1.4 Further, the board agrees with the appellant that the identity of the opponent must be clear from the notice of opposition without having to speculate as to the true identity of the opponent.

1.5 However, in the present case, the board considers that the indication of the opponent as given in the notice of opposition does not fairly allow room for speculation as to the identity of the opponent. In particular, the board considers that the erroneous name "Harry Graf Software GmbH" would not plausibly lead to the opponent's designation being construed as either the natural person "Harry Graf" or as joint opponents "Harry Graf und der Graf Software GmbH" instead of the corrected version "Graf Software GmbH".

1.6 In this respect, the wording used in the notice of opposition "Hiermit wird namens und im Auftrag der Harry Graf Software GmbH, Mainzer Strasse 36, 55411 Bingen am Rhein, Einspruch gegen ... eingelegt" (board's underlining) would in the board's view lead the reader to immediately conclude that the opponent is a company (GmbH). This is corroborated by the presence of the word "der" (= the) which is grammatically associated with the feminine noun "GmbH" as the genitive case of the definite article. In the board's view, it is implausible that the opponent is not a company, since then both the beginning and the end of the opponent's designation would have been erroneous. In this respect, filing an opposition in the name of a natural person according to the rules of the German grammar would have resulted in wording which would not include the word "der": "im Auftrag von Harry Graf", or less likely "des Harry Graf".

1.7 It is true that when looking up in the official documents ("Gemeinsames Registerportal der Länder"; cf. document A1 cited in the opposition procedure) in order to check the identity of the opponent one would notice a discrepancy. But irrespective of German naming practices and assuming for the reasons given above that the opponent is a company (GmbH), it would be immediately noticed that a GmbH existed at the given address with almost the same name, ie "Graf Software GmbH". Hence, it would be concluded, without any need to speculate, that the opponent was actually "Graf Software GmbH" (which in the above-cited German sentence would read "... der Graf Software GmbH" following the clause "im Auftrag" (i.e. in the name of) and that the discrepancy (ie the presence of the additional word "Harry") was the result of an error, which is all the more plausible considering that document A2 cited in the opposition procedure indicates Harry Graf as being the founder of the Graf Software GmbH.

1.8 The other possible identity of the opponent proposed by the appellant, ie jointly "Harry Graf und der Graf Software GmbH", in the board's view is simply too far-fetched to be seriously contemplated by the reader.

1.9 The board notes in passing that the European Patent Register gives the opponent's correct designation whereas in the file there is no mention of an amended entry in this respect. Thus the board cannot exclude that the opponent's correct name, ie without "Harry", had been entered into the register by the EPO when the opposition was filed, which underscores the obviousness of the correction. In its decision, the Opposition
Division noted that "Errors in a designation can be corrected pursuant to Rule 88 EPC 1973 [editor's note: R. 139 EPC], first sentence, at any time (T 828/98)" and held that the correct name of the opponent was "Graf Software GmbH" (cf points 2.4 and 2.10). The board additionally notes that the error in question is of the kind which could also have been dealt with under Rule 56(2) EPC 1973 (Rule 77(2) EPC), if the Opposition Division had noted the deficiency and had issued an invitation to remedy it (cf T 219/86, point 8 of the reasons).

1.10 The board concludes that there is no reason to set aside the opposition's division on the basis of this matter. The opposition is therefore admissible, since the other requirements concerning admissibility are met, which is in any case not in dispute.


2. Main request - claim 1 - novelty and inventive step
[...]

3. Remittal
3.1 The primary purpose of these appeal proceedings, as pointed out in board's communication accompanying the summons, is to examine the correctness of the opposition division's decision. In particular, this concerns the questions of admissibility of the opposition, novelty with respect to the disclosure of E6, and inventive step with respect to the disclosures of E6 and E44.

3.2 In view of the board's finding that these matters do not prejudice the maintenance of the patent, the decision under appeal has to be set aside. However, the board notes that the notice of opposition mentions a large number of other documents not considered in the decision of the opposition division in respect of the ground of opposition under Article 100(a) EPC. The ground of opposition based on Article 100(b) EPC also has not been considered by the opposition division.
In order that these matters, insofar as deemed necessary, can be considered by the opposition division, the board decides to remit the case for further prosecution (Article 111(1) EPC).

4. Auxiliary request
[...]


5. Costs
[...]

6. Admissibility of E50 and E51
[...]

7. Conclusion
The opposition is admissible. However, the ground of opposition under Article 100(a) EPC, insofar as based on lack of novelty with respect to E6 or lack of inventive step with respect to E6 combined with E44, does not prejudice the maintenance of the patent. The decision under appeal is therefore to be set aside and the case to be remitted for further prosecution.

Order
For these reasons it is decided that:
- The decision under appeal is set aside.
- The case is remitted to the opposition division for further prosecution.

- The requests for a different apportionment of costs are rejected.

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T148610.20140320. The whole decision can be found here. The file wrapper can be found here. Photo by Ernesto obtained via Flickr.


1 comment :

  1. Sure will be interesting to see what the outcome will be.

    ReplyDelete

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