Friday, 27 May 2016

T 1563/13 - Transfer of opponent status



This opposition appeal deals with the transfer of opponent status.

The business of an opponent had transferred from an old company to a new company. An appeal is then filed in the new name of the old company for a running opposition. During the appeal, a request is filed by the opponent to transfer to opponent status to the new company. 

The proprietor considers the appeal inadmissible, since the business transfer happened before the appeal was filed. The proprietor considers the appeal admissible since the request for transfer of opponent status was filed after the appeal was filed. The board rules in favor of the opponent, and deems the appeal admissible.



Reasons for the Decision

1. Admissibility of the appeal

1.1 The respondents requested that the appeal be considered inadmissible because it had been filed by a party not entitled to do so. When filing the notice of appeal on 5 July 2013, the opponent Dynea Oy was no longer in a position to file the appeal, because it had already transferred its status as opponent to Dynea AS, as shown by the transfer agreement D38, dated 11 March 2013.

1.2 It is well established that oppositions, while they may not be freely transferred, can be transferred in certain circumstances from one natural or legal person to another, either together with those assets of a business in the interest of which the opposition was commenced or in the framework of universal succession.

As regards the date of effective transfer of the opponent status, the jurisprudence of the boards of appeal clearly suggests that a transfer can only be acknowledged as from the date when adequate evidence is provided. Until such evidence has been provided, the previous party retains its rights (e.g. T 956/03, point 4 of the reasons with reference to case law; see also Case Law of the Boards of Appeal of the EPO, 7th edition, 2013, Chapter IV.C.2.2.6).

1.3 In the present case, the appeal was filed on 5 July 2013 in the name of Dynea Oy, i.e. the party which was the opponent in opposition proceedings. At that date no request for transfer had been filed and, therefore, the opponent Dynea Oy was entitled to file the appeal. The request for transfer was only filed on 8 February 2016, i.e. well after the filing date of the appeal.

The fact that the transfer agreement D38 bears a date of 11 March 2013 is, in view of what is said in point 1.2 above, irrelevant. In the present case, the effective date of transfer of opponent status, if such a transfer is allowable, can only be 8 February 2016.

1.4 The respondents relied on the following passage from the Case Law of the Boards of Appeal of the EPO, 7th edition, 2013, page 837:

"[In T 956/03] the board considered the question of the time limit for filing evidence of a transfer. According to the board, the case law showed a definite balance in favour of the view that a transfer could only be acknowledged from, at the earliest, the date when adequate evidence to prove the transfer had been filed. This was desirable in the interest of legal certainty and, within that principle, to ensure that the identity of an opposing party was known. If the transfer took place before the appeal period expired, then the entitlement of the transferee to replace the opponent had to be established by filing the necessary evidence before the appeal period expired." (emphasis added by the respondents)

They concluded from that reference to T 956/03 that the entitlement of transfer from Dynea Oy to Dynea AS would have had to be established by filing the necessary evidence before the appeal period expired. Since this did not happen in the present case, they concluded that the appeal was filed by a person not being a party to the proceedings.

However, the case underlying T 956/03 relates to a situation completely different from the present one. In contrast to the present case, that appeal had already been filed by a party claiming to be the successor in law of the previous opponent. In that particular situation it was held necessary to establish, by filing the necessary evidence, the entitlement of the transferee to replace the opponent before the appeal period expired. In the present case, the appeal was filed in the name of the "old" opponent. A transfer of the opponent status could have been acknowledged only from the date when adequate evidence was provided.

1.5 In view of the above it is evident that the appeal has been filed by an entitled party. Thus, the appeal is admissible.

2. Transfer of opposition status

2.1 As set out above, the opponent status, while it may not be freely transferred, can be transferred in certain circumstances from one natural or legal person to another, either together with those assets of a business in the interest of which the opposition was commenced or in the framework of universal succession.

2.2 The appellant requested by letter dated 8 February 2016, to transfer the status of the opponent from Dynea Oy to Dynea AS, because the relevant business, in whose interest the opposition had been instituted, was divested into Dynea AS. As set out in paragraph [0002], the patent in suit relates to adhesive systems suitable for use in wood-based constructions for outdoor use, which corresponded to the business of Dynea AS.

In support of this request the appellant filed:

- a declaration of Mr Siltala, procurator on behalf of Dynea Oy, who confirmed that the opposition belongs to the business of Dynea AS (D36);

- a printout of the website of Dynea AS in order to show that adhesive systems suitable for use in wood-based construction for outdoor use was the business of Dynea AS (D37); and

- a copy of a transfer agreement documenting the transfer of the business (D38).

2.3 However, this evidence does not prove that in fact the relevant business assets have been transferred in their entirety from Dynea Oy to Dynea AS.

2.3.1 As explained in point 3 of D36, the changes in the Dynea group, which will result in the liquidation of Dynea Oy, lead to its division into three different companies, namely:

- Dynea AS, with a focus on the business of adhesives for construction applications;

- Metadynea Austria GmbH, part of Metadynea LLC, with a focus on adhesives for wood based panels, such as particle boards, dry processed fiber boards and plywood; and

- Prefere Resins with a focus on phenolic resins.

2.3.2 It appears, however, that the business segments of Dynea AS and Metadynea Austria GmbH overlap. The excerpts from the website of Metadynea Austria GmbH (D40a and D40b) show that the activities of this company also concern the preparation of formaldehyde-based resins and wood-based applications using such resins, for both indoor and outdoor use. Thus, Metadynea Austria GmbH advertises on its website the same kind of products as Dynea AS. Thus, doubts arise as to whether the subject-matter of the opposition exclusively falls within the business field of Dynea AS.

2.3.3 Nor can D38 provide the necessary evidence.

In point B)under the heading "Recitals" it is stated:

"The Parties wish to agree on the terms and conditions applicable to the transfer of certain patents, know-how, and process technology by Dynea Oy to Dynea AS as set forth in the Transfer Agreement."

The remaining part of D38 does not further specify these certain patents, know-how and process technology. Although it is stated in section 1 (Definitions) that patent(s) are further specified in Schedule 1 and process technology in Schedule 2, these schedules are not provided with D38. Also the assignment of patents (section 2.1), know-how (section 2.2) and process technology (section 2.3) remains rather general. In particular, D38 is silent on the transfer of the status of opponent in proceedings concerning the patent in suit.

Lastly, the argument of the appellant that the patent is limited to the adhesive systems for outdoor use, which corresponds to the core business of Dynea AS, is not convincing. The technical solutions addressed in paragraph [0005] of the patent specifications are not limited to outdoor use but apply to all kind of products. Moreover, there appears to be no clear distinction between indoor and outdoor uses, both applications overlap to a certain extent.

2.4 It is evident from the above that there is no sufficient evidence that a transfer of the relevant business assets in their entirety took place, let alone a transfer of the opponent status in relation to the patent in suit. As a consequence, the request for transfer of the status of opponent is to be refused.

2.5 During the oral proceedings before the board, the appellant stated that the process of liquidation of Dynea Oy was ongoing and that the company had not been dissolved yet, which, incidentally, is also apparent from D36. Under these circumstances, the proceedings were continued with Dynea Oy as the appellant.

This decision T 1563/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2016:T156313.20160308. The file wrapper can be found here. Illustration "CHANGE YOU ARE NEVER READY YOUR LIFE" by Metro Centric obtained via Flickr under a CC-By 2.0 license.

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