| European Case Law Identifier: | ECLI:EP:BA:1999:G000497.19990121 | ||||||||
|---|---|---|---|---|---|---|---|---|---|
| Date of decision: | 21 January 1999 | ||||||||
| Case number: | G 0004/97 | ||||||||
| Referral: | T 0649/92 | ||||||||
| Application number: | 82304478.9 | ||||||||
| IPC class: | C12N 15/00 | ||||||||
| Language of proceedings: | EN | ||||||||
| Distribution: | A | ||||||||
| Download and more information: |
|
||||||||
| Title of application: | Construction of DNA sequences and their use for microbial production of proteins, in particular human serum albumin | ||||||||
| Applicant name: | Genentech, Inc. | ||||||||
| Opponent name: | (03) Naohito Oohashi (01) Delta Biotechnology (02) Riatal GmbH |
||||||||
| Board: | EBA | ||||||||
| Headnote: | 1(a): An opposition is not inadmissible purely because the person named as opponent according to Rule 55(a) EPC is acting on behalf of a third party. 1(b): Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process. 1(c): Such a circumvention of the law arises, in particular, if: - the opponent is acting on behalf of the patent proprietor; - the opponent is acting on behalf of a client in the context of activities which, taken as a whole, are typically associated with professional representatives, without possessing the relevant qualifications required by Article 134 EPC. 1(d): However, a circumvention of the law by abuse of process does not arise purely because: - a professional representative is acting in his own name on behalf of a client; - an opponent with either a residence or principal place of business in one of the EPC contracting states is acting on behalf of a third party who does not meet this requirement. 2: In determining whether the law has been circumvented by abuse of process, the principle of the free evaluation of evidence is to be applied. The burden of proof is to be borne by the person alleging that the opposition is inadmissible. The deciding body has to be satisfied on the basis of clear and convincing evidence that the law has been circumvented by abuse of process. 3: The admissibility of an opposition on grounds relating to the identity of an opponent may be challenged during the course of the appeal, even if no such challenge had been raised before the opposition division. |
||||||||
| Relevant legal provisions: |
|
||||||||
| Keywords: | Admissibility of opposition - acting on behalf of a third party Circumvention of the law by abuse of process |
||||||||
| Catchwords: |
- |
||||||||
| Cited decisions: |
|
||||||||
| Citing decisions: | |||||||||
Summary of Facts and Submissions
Cases G 3/97 and G 4/97 have been consolidated. The "Summary of facts and submissions" and "Reasons for the decision" in G 4/97 are the same as in G 3/97 (see OJ 1999, p. 245 ff).
Reasons for the Decision
Cases G 3/97 and G 4/97 have been consolidated. The "Summary of facts and submissions" and "Reasons for the decision" in G 4/97 are the same as in G 3/97 (see OJ 1999, p. 245 ff).
ORDER
For these reasons it is decided that:
The questions of law referred to the Enlarged Board of Appeal are to be answered as follows:
1 and 2: The admissibility of an opposition on grounds relating to the identity of an opponent may be challenged during the course of the appeal, even if no such challenge had been raised before the opposition division.
3(a): An opposition is not inadmissible purely because the person named as opponent according to Rule 55(a) EPC is acting on behalf of a third party.
3(b): Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process.
3(c): Such a circumvention of the law arises, in particular, if:
- the opponent is acting on behalf of the patent proprietor;
- the opponent is acting on behalf of a client in the context of activities which, taken as a whole, are typically associated with professional representatives, without possessing the relevant qualifications required by Article 134 EPC.
3(d): However, a circumvention of the law by abuse of process does not arise purely because:
- a professional representative is acting in his own name on behalf of a client;
- an opponent with either a residence or principal place of business in one of the EPC contracting states is acting on behalf of a third party who does not meet this requirement.
4: In determining whether the law has been circumvented by abuse of process, the principle of the free evaluation of evidence is to be applied. The burden of proof is to be borne by the person alleging that the opposition is inadmissible. The deciding body has to be satisfied on the basis of clear and convincing evidence that the law has been circumvented by abuse of process.
5: This decision is to be applied to all pending proceedings.
