This enlarged board decision concerns the validity of an appeal filed by a company that at the time of the appeal did not legally exist, but which was later restored. The decision contains the following summary of the essential facts of the case leading to the referral:
(a) On 2 November 2004, notice of opposition against European patent
No. 1058580 was filed by Formalities Bureau Ltd ("FBL"), a company
incorporated under the laws of the United Kingdom.
(b) On
27 September 2005, and while the opposition proceedings were still
pending, FBL was struck off the UK register of companies and on
4 October 2005 it was "dissolved" by publication of an official notice
in the London Gazette. As a matter of UK law it thereby ceased to exist.
The grounds for this administrative act were that FBL had not filed the
requisite statements with the Registrar of Companies, thus giving the
Registrar reason to believe that FBL was no longer in business or in
operation.
(c) Opposition proceedings in the name of FBL
nevertheless continued to be conducted by its previously authorized
professional representative, Mr Peter Bawden, as if FBL continued to
exist. On 29 October 2008, the Opposition Division issued an
interlocutory decision whereby, account being taken of the amended
claims filed by the proprietor, the patent and the invention to which it
related were found to meet the requirements of the EPC.
(d) On 29 December 2008 notice of appeal was filed in the name of FBL, again acting by Mr Peter Bawden.
(e)
Shortly before oral proceedings in the appeal, scheduled for
6 September 2012, the proprietor and respondent (hereafter "the
proprietor") discovered that FBL had ceased to exist. At the oral
proceedings, the proprietor requested inter alia that the appeal be
declared inadmissible; FBL requested inter alia that the proceedings be
suspended. In the event the Board of Appeal ordered the proceedings to
be continued in writing to enable the FBL to file submissions relating
to the admissibility of its appeal.
(f) On 26 September 2012, an
application was filed with the UK High Court to restore FBL to the UK
register of companies. The stated purpose of this was to enable FBL to
continue the opposition appeal proceedings before the Board of Appeal.
On 5 December 2012 an order was made by the UK High Court restoring the
name of FBL to the register of companies. The effective date of the
restoration of FBL to the register was 8 December 2012, the date when
the UK court order was delivered to the UK Registrar of Companies. As a
matter of UK law, FBL was thereby deemed to have continued in existence
as if it had not been dissolved or struck off the register, i.e., as if
it had never ceased to exist.
(g) On 13 December 2012 the
proprietor inter alia filed a request for the "revocation" of the
Opposition Division's interlocutory decision on the ground that the
opposition proceedings had lapsed when FBL ceased to exist.
Alternatively, as an auxiliary request, the proprietor requested that
the appeal filed in the name of FBL be declared inadmissible.
The Enlarged board provided the following headnote:
The questions referred to the Enlarged Board of Appeal are answered as follows:
1. Where an opposition is filed by a company which
subsequently, under the relevant national law governing the company, for
all purposes ceases to exist, but that company is subsequently restored
to existence under a provision of that governing national law, by
virtue of which the company is deemed to have continued in existence as
if it had not ceased to exist, all these events taking place before a
decision of the Opposition Division maintaining the opposed patent in
amended form becomes final, the European Patent Office must recognize
the retroactive effect of that provision of national law and allow the
opposition proceedings to be continued by the restored company.
2. Where, in the factual circumstances underlying
Question 1, a valid appeal is filed in due time in the name of the
non-existent opponent company against the decision maintaining the
European patent in amended form, and the restoration of the company to
existence, with retroactive effect as described in Question 1, takes
place after the expiry of the time limit for filing the notice of appeal
under Article 108 EPC, the Board of Appeal must treat the appeal as
admissible.
3. Not applicable.
Reasons for the decision
(...)
5.
As already indicated, answers to the referred questions cannot be found
directly and unambiguously by reference to the provisions of the EPC.
The Enlarged Board considers that they must therefore be found by
looking at the interrelation of national law and the EPC. As to this,
the following factors appear to be relevant:
5.1 Legal entities
such as companies exist only by virtue of the national legal system
which governs their incorporation, subsequent existence and cessation
(the term "national legal system" as used herein and in the following is
meant to embrace also regional law in cases involving legal entities
such as the Societas Europaea). So far as the EPC is concerned, the
existence or non-existence of a legal entity is exclusively a matter for
such national law. See, for example, T 15/01 (OJ EPO 2006, 153), point 9
of the Reasons. The legal personality of an entity acting in
proceedings under the EPC is to be decided on the same basis as before
national courts, namely the capacity to sue or to be sued in its own
name and on its own account: see G 3/99, op. cit., point 9 of the
Reasons.
5.2 It is a generally recognized principle of national
law and also under the EPC that legal entities which do not exist cannot
bring or take part in proceedings. See for example T 353/95 of 25 July
2000, point 2 of the Reasons.
5.3 Unlike the position of an
applicant or proprietor of a European patent, the status of an opponent
is a purely procedural status and the basis on which it is obtained is a
matter of procedural law governed by the EPC: G 3/97 (OJ EPO 1999, 245)
point 2.1 of the Reasons. While the status of a legal person as such
has to be determined by the applicable national law, the right to bring
opposition proceedings, to take part in such proceedings before the
Opposition Division, to file a notice of appeal and to take part in
appeal proceedings and have a legally binding decision issued on its
requests are thus all matters subject to and to be determined
autonomously by the procedural law of the EPC. See T 15/01, op. cit.,
point 9 of the Reasons.
5.4 The issues raised by the referred
questions should be resolved by also taking into account general
principles such as equal treatment, legal certainty and procedural
efficiency and by considering the interests of the parties involved and
of the general public. See T 1091/02 (OJ EPO 2005, 14), point 2.4.1 of
the Reasons.
6. The Enlarged Board considers that the starting
point should be the clearly established principle under the EPC that
national law should be referred to in order to determine whether a legal
entity exists or has ceased to exist, and has capacity to act (see
point 5.1, above). As a first step, therefore, the EPO should clearly
follow UK law in the present case at least to the extent that the EPO
should recognise that FBL existed and had capacity to act before it
ceased to exist and that the same applies after it was restored to
existence.
7. As to the next step, the Enlarged Board
provisionally considers that the EPO should also follow national law as
regards the deemed retrospective existence of such a legal entity. This
is merely to apply the general principle that such issues are the
exclusive concern of national law.
8. There are of course limits
on the extent to which the EPO should follow national law. For example, a
provision of national law which purported to confer on a company
procedural rights which were contrary to the EPC could not be
acknowledged by the EPO. Such matters are the exclusive concern of the
EPO and cannot be usurped by national law. An example of the interface
between national law and the EPC relates to the transfer of oppositions.
While the validity of the contract purporting to transfer the
opposition as between the parties is a matter to be determined by the
relevant national law, the procedural status of opponent is nevertheless
not freely transferable: G 2/04 (OJ EPO 2005, 549).
9. The
question is then whether any limits should be set on the above deference
to national law having regard to the circumstances of the present
referral, for example because of any adverse consequences which would
follow for the proprietor, other parties to the proceedings, the EPO or
the general public. The answer should have regard to the fact that an
opponent company may cease to exist and then be restored to life at any
stage before, during or after opposition proceedings. The answer should
also not depend on the reasons why the opponent company ceased to exist
or to what extent its directors or representative could be considered as
culpable for this event. The possible effect of the conduct of a party
or its representative on proceedings is a different issue which forms no
part of the present referral. See point 17, below.
10. So far as
the proprietor, the Opposition Division and the referring Board were
concerned, until September 2012 all had proceeded on the assumption that
FBL existed. To recognise the retroactive existence of FBL would simply
be to confirm this assumption.
11. As to the general public, the
possibility is remote that an interested member of the public, having
inspected the UK Register of Companies and found that FBL no longer
existed, would then have relied exclusively on this information in
order, for example, to conduct their business. If they had an interest
in the proceedings before the EPO, it is more likely that they would
have relied on the information to be found in the EPO register of
patents and/or on what information was available from inspection of the
public file at the EPO. If they had information from all these sources
they might well have been puzzled by what they had learnt, but it is
highly unlikely that they would simply have ignored the information
available from the EPO.
12. On the other hand, if steps taken in
opposition proceedings were to be retrospectively declared a nullity,
potentially many years after the filing of the opposition, the previous
assumptions made by the proprietor, the EPO and the public would turn
out to have been false.
13. A competing interest is of course that
of the proprietor. It is argued that to recognise the retroactive
restoration of FBL to existence would be to deny the proprietor's right
to have had the appeal and opposition proceedings dismissed as
inadmissible. The submission, however, begs the question of whether the
proprietor had such a right. Certainly, in proceedings before the
opposition division a proprietor would have the right to request the
bringing to an end of those proceedings by the appropriate means once
the non-existence of the opponent company had been discovered. The same
applies to appeal proceedings. The Opposition Division or the Board of
Appeal, if presented with a counter-request to adjourn the proceedings
to enable the opponent company to apply to be restored to existence,
would have been faced with the problem that the opponent company at that
point did not exist. Whether the Opposition Division or the Board of
Appeal would have adjourned the proceedings, if necessary of its own
motion, to enable this to happen would in the Enlarged Board's opinion
have been a matter for the exercise of their discretion. (In the present
case FBL was restored to existence while the proceedings had been
ordered to be continued in writing to enable the FBL to file submissions
- see point II(e), above).
14. The Enlarged Board accepts that a
proprietor's interest in wishing to bring the opposition proceedings to
an end is a legitimate one but concludes that there is no clear balance
in a proprietor's favour leading to the conclusion that a company's
retrospective existence as a matter of national law should not be
acknowledged by the EPO in such circumstances. The ability of the
parties, the EPO and the public to have confidence in the public record
and the need for certainty are just as important. The Enlarged Board
therefore confirms its provisional conclusion (point 7, above).
15.
This conclusion does not appear to be out of step with the general
position under other systems of national law, in so far as the position
is known to the Enlarged Board and can be considered equivalent (see
points 2.3.4 and 2.3.5, above).
16. So as concerns the various arguments of the proprietor:
16.1
The Enlarged Board of course accepts the general principles that a
legal entity which does not exist cannot be, or cannot remain a party to
proceedings; that where an opposition or an appeal is filed by a
non-existent company the opposition or appeal will in principle be
inadmissible; that where a sole opponent ceases to exist the opposition
division may terminate the proceedings; and that where a sole appellant
who was opponent ceases to exist the appeal proceedings should be
terminated by the appropriate means. None of these principles, however,
can necessarily be extended to deal with the case where an opponent
company is restored to existence with retroactive effect under national
law. Indeed, this point is at the heart of the referred questions.
16.2
As to the cases cited by the proprietor in support of the proposition
that an appeal by a defunct company is inadmissible (T 525/94 of 17 June
1998, T 353/95 of 25 July 2000, T 477/05 of 22 February 2007 and
T 480/05 of 8 March 2007), these were cases where the appellant had
apparently ceased to exist with the consequence that the appeal
proceedings were brought to an end. Again, however, while they show that
the FBL's appeal could have suffered the same fate in the period when
it did not exist, they do not help answer the question of what should
happen when, under national law, an opponent appellant is deemed always
to have existed.
16.3 The proprietor referred to the principle
that opposition proceedings should be a simple, speedily conducted
procedure (G 2/04, point 2.1.4 of the Reasons). It is true that the
discovery that an opponent company has ceased to exist may, if
proceedings are adjourned to allow an application to be made to restore
the company to existence, delay the proceedings. However, the time taken
to restore FBL in the present case was about three months and in any
event took place while the proceedings were adjourned to allow the
parties to file submissions. The Opposition Division and Boards of
appeal have a remedy where the delay is unreasonable or amounts to an
abuse, namely not to adjourn the proceedings but to bring them to an
end.
16.4 The Enlarged Board's conclusion does not mean that
national law trumps or overrules the EPC. The EPC and national law (here
that of the UK) are not inconsistent with each other in this respect.
16.5
It is true that the EPC provides for various remedies, such as further
processing and re-establishment of rights (Articles 121 and 122 EPC,
respectively) in cases where a party has suffered a loss of rights. The
proprietor refers to G 1/97 (OJ EPO 2000, 322), point 4 of the reasons,
2nd paragraph, in support of the proposition that the Enlarged Board
should be very reluctant to extend the existing codified remedies under
the EPC. However, the present case is not concerned with the grant of
new procedural remedies but with whether national law should be followed
as regards the deemed existence of a company.
16.6 The Enlarged
Board's conclusion does not mean that a proprietor in such circumstances
is faced with the possibility that a defunct opponent may reappear many
years later. Where, for example, an opposition has been rejected as
inadmissible because it was filed by an opponent which did not exist,
the company will not later be able to deny that the order was notified
to it (and thus claim that the order has not yet become final) while, at
the same time, claiming that it is deemed always to have existed (see
also point 19, below). As a side-note the Enlarged Board also
understands that under UK law as it now stands the possibility of
restoring a company to existence is basically only available within the
period of six years from the date of the company ceasing to exist (UK
Companies Act 2006, section 1030(4)).
16.7 The proprietor has
argued that the non-admissibility of the opposition and the appeal is
demonstrated by the fact that after FBL ceased to exist the authority of
its attorney will have lapsed. First, however, the submission begs the
question of the retroactive effect of the company's restoration to
existence. Secondly, according to Rule 152(8) EPC a representative shall
be deemed to be authorised until the termination of his authorisation
has been communicated to the European Patent Office.
16.8 Contrary
to the proprietor's submissions, the Enlarged Board does not see that
the fact that the order of the English court did not mention why FBL was
restored is of any relevance. The same applies to the submission that
the UK court may give further directions for placing the company "as
nearly as may be" in the same position as if it had not been struck off.
No evidence was filed to support these submissions. So far as the
Enlarged Board is aware the provision whereby a company is retroactively
restored to existence takes effect, as a matter of UK law, exactly in
accordance with its wording: see the decision of the Court of Appeal of
England and Wales in Peaktone Ltd v. Joddrell [2012] EWCA Civ 1035.
17.
As to the proprietor's suggestion that the Enlarged Board should also
comment on whether an obligation to inform the EPO about important
procedural requirements at the EPO exists, and what the consequences of
non-compliance are, this does not form part of the referred questions
and there is no factual basis for any such "comment". Indeed the
referring Board refused to include such a question in the decision,
saying (point 11 of its Reasons):
"The respondent has not
explained the relevance of the question which it asks the Board to refer
to the Enlarged Board of Appeal concerning the parties' obligation to
keep the EPO informed about certain matters. In particular, the
respondent has not indicated what specific consequences would, in its
view, follow in the present case from a failure to comply with such an
obligation (were the existence thereof established). The Board does not
therefore consider it necessary to refer that question to the Enlarged
Board of Appeal."
18. The tenor of the Enlarged Board's answer to
Questions 1 and 2 is in each case therefore: yes. In the circumstances
Question 3 does not call for an answer. The Enlarged Board has already
noted that the referred questions need to be reformulated to refer to a
company as having ceased to "exist" rather than as having been
dissolved. In addition, in Question 1 the stage at which the company is
restored to existence is left unclear and therefore needs some
reformulation.
19. Finally, it needs to be made clear that, in
circumstances such as these, full effect should be given to any
procedural steps which have been taken place while the opponent company
was not in existence. The restored company cannot be placed in a better
position than if it had in fact continued in existence all the while.
This decision has European Case Law Identifier: ECLI:EP:BA:2014:G000113.20141125. The whole decision can be found here. The file wrapper can be found here. Photo obtained from by Tom obtained via Flickr.
