Friday, 5 June 2015

T 445/08 - True intentions to be confirmed


This appeal is the referring case of G 1/12, and shows the Board applying the answers of G 1/12.

Catchwords:
  • If the notice of appeal is to be considered in the context of the file history, the true intention needs to be confirmed by external facts and evidence at least to prevent that requirements such as those of Article 107 EPC be circumvented (point 9).
  • In applying Rule 139 EPC to a party's request to correct a mistake in the notice of appeal in respect of the identity of the appellant, the principle of legal certainly needs to be taken into consideration (point 10).
Background / Summary of Facts and Submissions
I. The appeal lies from the decision of the Opposition Division, posted on 28 December 2007, revoking European patent No 1140330.

II. The (registered) patent owner was Zenon Technology Partnership, The Corporation Trust Company Corporation Trust Centre 1209 Orange Street, Wilmington, DE 19801/US (the patent had been acquired from Zenon Environmental Inc, 845 Harrington Court Burlington Ontario L7N 3P3 Canada, by an assignment registered by the EPO on 30 May 2006).

III. A notice of appeal, dated 8 February 2008 but received on 15 February 2008, was filed, reading:

"European Patent No 1140330 (99955620.2-062)

Zenon Technology Partnership

We hereby give Notice of Appeal (underlined by the Appellant) against the decision of the Examination Division [sic] dated 28 December 2007 to refuse the above patent application [sic]. Cancellation of the decision in its entirety is requested so that the patent may be maintained?.

The name, address and nationality of the Appellant is (emphasis by the Board):

ZENON ENVIRONMENTAL INC

845 Harrington Court

Burlington

Ontario L7N 3P3

Canada

ZENON ENVIRONMENTAL INC is a Canadian Corporation.

In the event that the Board of Appeal wishes to make a decision detrimental to the Applicant's [sic] rights at any time, it is hereby requested that Oral Proceedings be held to discuss the matter."

The procedural steps after the filing of the notice of appeal

IV. On a communication dated 7 March 2008 notifying the parties of the commencement of the appeal proceedings, the Registrar of the Board added the following handwritten statement: "the appeal was filed in the name of ZENON ENVIRONMENTAL INC (underlined by the Registrar). The patentee is here registered as ZENON TECHNOLOGY PARTNERSHIP (underlined by the Registrar). Therefore the patentee is asked to clarify the situation."

V. The Appellant and the Respondent both reacted with letters dated 13 March 2008.

The Appellant wrote "... the appeal should of course have been filed in the name of the current proprietor, i.e. Zenon Technology Partnership (underlined by the Appellant). I apologise for the confusion and respectfully request the correction".

The Respondent requested that the appeal be rejected as inadmissible, as it had been lodged by a legal entity other than the adversely affected (entitled) party.



VI. With a communication dated 16 April 2008, the Board asked the Appellant's representative who had lodged the appeal to specify the legal basis for the requested correction. The Board also made clear that whether a correction of a procedural act, such as the filing of an appeal, was possible was an "interesting question", and that it was not appropriate for the Board in an inter partes case to give advice on this, but only to decide on the submissions of the parties.

VII. With letter dated 23 June 2008, the Appellant's representative explained that he was acting on behalf of Zenon Technology Partnership, the Patent Proprietor, and requested that the notice of appeal dated 8 February 2008 be corrected to give the correct name (and address) of the Patent Proprietor, who was the only party who could possibly be entitled to appeal against the decision in question. The Appellant also added that the EPC was not clear about the procedure for correction of a procedural act. Consequently, the correction was requested on the basis of either Rule 139 EPC or Rule 101(2) EPC.

VIII. In its letters dated 8 August 2008, 18 May 2009 and 30 August 2011, the Respondent maintained that neither of the corrections requested under Rules 101(2) or 139 EPC was allowable in the case at issue.

IX. With letter dated 30 August 2011, the Appellant filed two documents, respectively labelled Annexes A and B:

- a copy of the payment of the appeal fees under the name of Zenon Technology Partnership (Annex A); and,

- a declaration of Mr Gibbs, the representative, stating: "(1) I am and have been the European Patent Attorney principally responsible for the above patent, during examination and opposition. (2) It was always the intention to file the appeal in the name of the patentee Zenon Technology Partnership, and the mention of Zenon Environmental Inc, the proprietor until February 2007, in the notice of appeal (letter dated 8 February 2008) was a simple error" (Annex B).

X. In its interlocutory decision of 30 January 2012, the Board referred the following questions to the Enlarged Board of the Appeal:

(1) When a notice of appeal, in compliance with Rule 99(1)(a) EPC, contains the name and the address of the appellant as provided in Rule 41(2)(c) EPC and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is a request for substituting this other legal or natural person admissible as a remedy to "deficiencies" provided by Rule 101(2) EPC?

(2) If the answer is yes, what kind of evidence is to be considered to establish the true intention?

(3) If the answer to the first question is no, may the Appellant's intention nevertheless play a role and justify the application of Rule 139 EPC?

(4) If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)?

XI. The Enlarged Board of Appeal, in its decision G 1/12 of 30 April 2014, answered the questions as follows:

Question (1):

The answer to reformulated question (1) - namely whether when a notice of appeal, in compliance with Rule 99(1)(a) EPC, contains the name and the address of the appellant as provided in Rule 41(2)(c) EPC and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is it possible to correct this error under Rule 101(2) EPC by a request for substitution by the name of the true appellant - is yes, provided the requirements of Rule 101(1) EPC have been met.

Question (2): Proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence. This also applies to the problems under consideration in the present referral.

Question (3): In cases of an error in the appellant's name, the general procedure for correcting errors under Rule 139, first sentence, EPC is available under the conditions established by the case law of the boards of appeal.

Question (4): Given the answers to questions (1) and (3), there is no need to answer question (4).

Procedural steps after G 1/12

XII. In its letters of 12 May 2014 and 31 July 2014, the Appellant maintained that the genuine error in the notice of appeal did not reflect the actual intention of the Patent Proprietor, so that it was evidently correctable on the basis of either Rule 101(2) EPC or Rule 139 EPC, and therefore the appeal was admissible. Also, the Appellant requested that, since the patent in suit was in its 15th year, for the sake of procedural economy, the oral proceedings address procedural and substantive issues.

(...)

With letters of 2 July 2014 and 10 September 2014 the Respondent maintained its requests as to the inadmissibility of the appeal, which should be decided before the discussion on the substantive issues.

XIV. In the summons to oral proceedings of 2 October 2014, the Board enclosed a communication to the parties, informing them of its provisional view that the appeal was inadmissible according to G 1/12, "in the light especially of the statements of the Enlarged Board in points 20, 27 and 30 with respect to Rule 101(2) EPC and point 37 with respect to Rule 139 EPC".

XV. With letter dated 23 January 2015, the Appellant requested that the Board be enlarged to include two legal members, pursuant to Article 9 of the RPBA, and submitted further items of evidence, as follows:

(List of evidence omitted)

(Parties' requests omitted)

Reasons for the Decision
Admissibility of the appeal

1. The Patent Proprietor has requested the correction of the identity of the Appellant in the notice of appeal on the basis of either of Rules 101(2) and 139 EPC.

2. The context of the referral was summarised in point 7.1.1 and 7.2 of the referring decision. The present Board held that the current case belonged to the category of cases where the appeal was filed by the presumably entitled person who ultimately was however not entitled. This situation, as submitted by the Opponent, could be the result of a mistake of law. But the recourse, in the case law of the Boards of appeal, to the subjective notion of the "true intention" had introduced uncertainty about whether, and to which extent, that notion could be taken into account to correct an identification in a notice of appeal.

3. The Enlarged Board's answer in G 1/12 (Point 40 of the Reasons) is clear: In cases of an error in the Appellant's name, the general procedure for correcting errors under Rule 139, first sentence, EPC is available under the conditions established by the case law of the Boards of appeal.

4. Therefore, the present Board has to determine whether the wrong statement concerning the Appellant's identity in the notice of appeal, or, as defined in point 34 of the Reasons of G 1/12, the "error of expression in the declaration", is the consequence of an error which can be rectified under Rule 139 EPC.

5. According to established case law on Rule 139 EPC, a "mistake" may be said to exist in a document filed with the EPO if the document does not express the true intention of the person on whose behalf it was filed. The mistake may take the form of an incorrect statement or an omission (J 06/91, OJ EPO 1994, 349, point 2.2 of the Reasons).

6. The Enlarged Board referring to the established case law specified (point 37 of the Reasons) that:

(a) The correction must introduce what was originally intended. The possibility for correction cannot be used to enable a person to give effect to a change of mind or development of plans (J 08/80, OJ EPO 1980, 293).

(b) Where the original intention is not immediately apparent, the requester bears the burden of proof, which must be a heavy one (J 08/80 already cited, point 6 of the Reasons).

(c) The error to be remedied may be an incorrect statement or an omission.

(d) The request for correction must be filed without delay.

7. In the present case, the Appellant had to establish that the statement regarding its identity in the notice of appeal was the result of an error in the expression of its true intention, so that the correction requested does not reflect a change of mind.

8. The Board concedes (to the Respondent) that it was not immediately clear that the appeal filed on behalf of Zenon Environmental Inc, a company fully identified with its address and nationality and different from the Patent Proprietor, was actually intended to be filed on behalf of Zenon Technology Partnership.

9. Regarding the requirements listed in G 1/12, the Board cannot accept that the mere fact that Zenon Technology Partnership was the party adversely affected during the opposition proceedings was sufficient to establish the true intention. As argued by the Respondent, other interpretations were possible. If it is indisputable that the notice of appeal is to be considered in the context of the file history, the true intention needs to be confirmed by external facts, at least to prevent requirements such as those of Article 107 EPC being circumvented.

10. It is established case law that procedural legal certainty is a higher value than true party intention and that legal certainty demands that the EPO be able to rely on statements made by the parties in proceedings (T 824/00 OJ EPO 2004, 005), point 8 of the Reasons). As a general rule, the parties are bound by their procedural acts notified to the EPO, provided that the procedural statement was unambiguous and unconditional.

11. On the other hand, Rule 139 EPC acknowledges as a further legal value the desirability of having regard to the true as opposed to the ostensible party intentions in legal proceedings. As stated in decision J 19/03 of 11 March 2005 (not published in the EPO OJ): " As a result of the conflict between these two legal principles, the case law reads Rule 88 [139] first sentence EPC so that it confers a discretion on the competent instance (here the board)to allow or not allow a correction of an error since it is only stated in this rule that a respective error "may be corrected".... In order to weigh the necessity for legal certainty and the interests of the public against the interest of an applicant, the jurisprudence developed criteria concerning when a correction of procedural acts may be allowable or not" (see points 5,6 and 7 of the Reasons of the decision).

12. Coming to the evidence now on file, the Board cannot draw any conclusion from the communication from the registrar. This communication was intended to inform the parties of the commencement of the appeal proceedings. The registrar chose to point out a discrepancy noted during the admissibility check by a hand written comment in the margin of this communication, and not to send a communication under Rule 101(1) or (2) EPC although authorised to do so ("Decision of the Presidium of the Boards of Appeal dated 12 November 2007 concerning the transfer of functions to the Registrars of the Boards of Appeal", supplementary publication, OJ EPO 1/2015, page 66).

13. Therefore, the Board has to consider the evidence on file as a whole in the light of the principles established in the case law.

13.1 The Appellant explained that by "opaque" reason in the letter of 4 April 2008 it meant a lapse of concentration due to the fact that the names of the two companies were similar. The most plausible scenario was that the person in charge of preparing the appeal simply copied the identity mentioned on the first page of the PCT application.

13.2 The additional evidence filed after the communication sent by the Board (supra) corroborates this explanation. In particular, from Annex 6 (a letter dated 5 June 2000 informing the International Bureau of WIPO of the change of address of Zenon Environmental Inc) it appears that the address on the notice of appeal was no longer the address of Zenon Environmental Inc at the time of filing the notice of appeal (March 2008).

13.3 This information sheds light on the insufficient evidence previously on file. In fact, the payment of the appeal fee by Zenon Technology Partnership and the mention of its name at the top of the notice of appeal was of much less significance in establishing the true intention, than the complete identification of Zenon Environmental Inc given as the Appellant,and the only explanation that the reason for this statement was "opaque".

13.4 If, on the contrary, the Board considers the affidavit of Mr Pundsack, i.e the counsel, who instructed the representative to file the notice of appeal, and the fact that the address forming part of the identification block on the notice of appeal was no longer the valid one, then the mention of Zenon Technology Partnership at the top of the notice of appeal, the fact that the same representative has been in charge of the case during the opposition and the appeal proceedings, and the payment of the appeal fee by this company Zenon Technology Partnership, taken together become relevant, in the light of the plausible scenario that the person who prepared the appeal had in mind the right company, but instead just took a copy of the PCT application. These facts combine to establish beyond any reasonable doubt that the representative could not have had any doubts about the identity of the adversely affected company in the absence of any divergent instruction from the counsel, and there was no reason for the Appellant's representative to deviate from the intention to file an appeal on behalf of the only company adversely affected by the decision under appeal.

Therefore, the requested correction cannot result in enabling the Appellant to change its mind.

13.5 As to the statement made by the Appellant in the letter dated 3 December 2013, and cited out by the Respondent as further evidence that the appeal was intended to have been filed by the former Patent Proprietor on behalf of its subsidiary, this lost significance during the oral proceedings, in the light of the representative's explanation. The Board understands, from the explanation given during the oral proceedings, that this statement was purely hypothetical and a fallback argument designed to save the appeal by citing the case law on joined opposition.

13.6 Considering also the principle of legal certainty referred to above (point 10), according to which parties are bound by their procedural acts, the Board comes to the conclusion that the interests of Respondent are not sacrificed in the present case because, apart from the fact that the true intention was to file an appeal on behalf of the entitled person, the request for correction was filed five days after the expiry of the two-month time limit for filing the notice of appeal.

14. Accordingly, the Board concludes that the requirements for the correction requested are met, and thus that the correction is to be allowed. As a consequence, the appeal is retroactively admissible, the correction under Rule 139 EPC having effect ex tunc.

15. Since the Board comes to a positive conclusion under Rule 139 EPC, there is no need to decide on the request for correction under Rule 101(2) EPC.

Order

For these reasons it is decided that:

1. The request for correction of the name, the address and the mention of the nationality of the Appellant is allowed.

2. The appeal is admissible.

3. The proceedings on the substantive issues will be continued in writing.

This decision has European Case Law Identifier: ECLI:EP:BA:2015:T044508.20150326. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "evidence of organized light" by Jared Tarbell obtained via Flickr under CC BY 2.0 license (no changes made).

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