T 0025/85 (Opponent - Identifiability) of 18.12.1985

Summary of Facts and Submissions

I. Notice of opposition to European patent No. 0 025 494, grant of which was mentioned in the European Patent Bulletin on 16 February 1983, was filed on 15 November 1983, and the appropriate fee paid. The letterhead used for the purpose was that of a firm of three professional representatives before the EPO (hereinafter referred to as "the representatives"). The notice begins: "We hereby enter opposition ..." and ends: "A sub-authorisation for the person signing this document will be submitted in due course". The notice is signed by another representative. It contains no indication whatever as to the source of the authorisation on whose basis the sub-authorisation could be issued and hence as to the identity of the opponent.

II. The formalities officer in the Opposition Division first of all objected to the notice of opposition received on 25 November 1983 using EPO Form 2302.2 - 04.81 "Communication indicating deficiencies in the notice of opposition which may be remedied", and putting a cross in each of the three boxes pointing out that the notice of opposition does not contain (1) the name of the opponent, (2) the address of the opponent and (3) the State in which the opponent's residence is located. The form contains the following (printed) invitation: "You are requested to remedy the deficiency indicated within a period of two months ...". The words "... or clearly to state that the opposition has been filed in your own name and on your own behalf" was added by hand. The printed text continues: "If the deficiency is not remedied in good time, the notice of opposition will (amended to "could" by hand) be rejected as inadmissible".

III. The representatives failed to submit a declaration to the effect that opposition was being filed in their own name and on their own behalf. Instead, the firm's sub-authorisation for the person who had signed the notice of opposition was received on 25 November 1983, while authorisation for the firm signed by the actual client, now the appellant, arrived on 17 January 1984.

IV. Having again drawn attention to the legal considerations in a further communication dated 21 May 1984, the formalities officer in the Opposition Division rejected the opposition as inadmissible under Rule 56(1) EPC by decision dated 23 October 1984. The reasons given are largely the same as those set out in a decision dated 15 February 1984 in a similar case taken by an Opposition Division consisting of one legal and three technical members (OJ 2/1986, 56), the essential points being as follows: Although under Article 99(1) EPC "any person" is entitled to give notice of opposition, the identity of the party to the opposition proceedings as specified in Article 99(4) must be established by the end of the opposition period. This requirement derives interalia from various provisions of the Convention such as those relating to the language of the proceedings (Rule 1(1) EPC), the amount of the opposition fee (Rule 6(3) EPC), the requirements regarding representation (Article 133(2) and (3) EPC), as also from the general requirements as to a person's legal capacity. The applicability of Rule 56(1) in conjunction with Article 99(1) EPC and of Rule 56(2) in conjunction with Rule 55(a) EPC, is to be defined, as the requirement that deficiencies and omissions in information concerning the opponent are to be remedied on invitation, in accordance with Rule 56(2) EPC, whilst the identity of the opponent must be known and verifiable, from the outset of proceedings. If this were not so, the "any person", referred to in Article 99(1) first sentence EPC as initiating the opposition proceedings, would be lacking.

V. The appellant filed an appeal against this decision together with a statement of grounds on 4 December 1984 and paid the appropriate fee. Following an interim communication he added to these grounds, which may be summarised as follows: An opposition is a legal procedure enabling matters of public interest to be taken into account, which is why it may be filed by "any person". The use of the term "any person" shows the great importance attached by the legislator to the opponent's function of preventing unwarranted patent protection in the common interest. Accordingly, an opposition ought not to fail because owing to an error the identity of the opponent is not yet known to the Patent Office when the opposition period expires. That the identity may be made known later is clear from Rules 55(a) and 56(2) EPC and confirmed by the form referred to, which is used to ensure they are complied with. A bona fide situation was thus created since these provisions specify that the absence of a name, address or State of residence is a deficiency that can be remedied.

VI. The appellant's representative requests that his client's opposition be recognised as admissible and that reimbursement of the appeal fee be ordered.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.

2. The formalities officer in the Opposition Division is responsible for examining the opposition for compliance with formal requirements as laid down in the Notice in OJ (EPO) 2/1982,61. ( See also OJ 5/1983, 199 and OJ 7/1984, 317) He is authorised both to ascertain losses of rights (point 4 of the Notice) and to decide on an opposition's inadmissibility (point 6 of the Notice). The contested decision was therefore taken by a competent department of the EPO.

3. The statement in the notice of opposition that the opposition was being filed by the person signing the notice of opposition on the basis of a sub-authorisation from the firm of representatives presupposes the existence of an authorisation from a client. Not even in reply to the explicit question as to whether the opposition had perhaps been filed in the name and on behalf of the firm itself was it ever claimed that this had been the intention. On the contrary, the fact that an authorisation was submitted later, when the opposition period had expired, was confirmation that the opposition had been filed on behalf of a client who had not been named.

4. This means that the representative's firm was not itself acting as the opponent and gives rise to the legal question of whether an opponent, who on expiry of the opposition period remains anonymous, may still subsequently be designated or whether the deficiency is irremediable. The answer depends on a number of points. First of all, it has to be established whether on expiry of the opposition period the "any person" entitled under Article 99(1) EPC to give notice of opposition must be a specific individual. It is also necessary to determine whether the fact that the name of the opponent can be corrected under Rules 55(a) and 56(2) EPC also means that he can subsequently be named for the first time. Finally, it has to be ascertained whether, irrespective of the possibilities these Rules allow, a correction can be made under Rule 88, first sentence, EPC.

5. The appellant's representative is correct in saying that opposition proceedings have been "popularised" in the public interest in the sense that "any person" is entitled to enter opposition. At the same time, the opportunity afforded "any person" to initiate such proceedings with a view to scrutinising the grant of a patent is available only up to a clearly defined point in time. Both the granting authority and the patent proprietor must be able to establish beyond doubt the point at which a patent is no longer opposable. In the interests of legal certainty, therefore, the Convention lays down certain requirements for an opposition that must be met before the opposition period expires. These include the requirements that the patent opposed be identified, the notice of opposition be in writing, specific grounds be stated and the appropriate fee be paid. If these requirements have not been fulfilled when the opposition period expires, the patent cannot be opposed and there is no possibility of restitutio in integrum under Article 122.

6. Another requirement is that the "any person" who is the opponent, thus the party within the meaning of Article 99(4) EPC, must be clearly and unmistakably identified. Although up to the time the opposition period expires anyone at all is entitled to file an opposition, that person's identity must by that date be established, since only then may he be a party to the opposition proceedings as laid down in Article 99(4) EPC. No opposition proceedings are considered to be pending if by the end of the opposition period no person of known identity has filed opposition. Once opposition has been filed, a mere entitlement available to anyone becomes transformed into interpartes involvement in opposition proceedings, only possible in the case of parties who have availed themselves of the opportunity in due time and form (cf. the "Gelenkkupplung" decision of the (German) Federal Court of Justice, Bl. f. PMZ (1968) 327, 328, No. II 2.c).

7. The Board of Appeal does not doubt that the present appellant instructed the firm of representatives to file opposition before they did so. His identity had thus been established when the opposition period expired, even if this was not yet apparent to the Office or to the patent proprietor. This, however, does not suffice to give the appellant on expiry of the opposition period the status of a party to the opposition proceedings under Article 99(4) EPC. To be a party to the notice of opposition his identity must also be known to the Office and the patent proprietor by the time the opposition period expires. It is not permissible for the identity of the parties to opposition proceedings to be established by taking evidence once the proceedings have already begun.

8. Quite apart from these general considerations, the need for the opponent to be identifiable also derives from the requirement of Article 99(1) EPC that the notice of opposition be filed in writing. Disregarding for the moment cases where opposition is filed by a representative as in the present instance, the notice of opposition may initially meet the requirements as to its written form even if unsigned (Rule 36(3) EPC), but not if the opponent is not named. If a legally relevant declaration is required to be in writing this requirement is not limited to the content of the declaration but presupposes a named declarant. Whilst when a representative files an opposition he is able to fulfil the requirement that this must be done in writing since he himself is the declarant, he is still not able to represent someone without saying who that someone is. A representative may act to ensure that certain time limits are observed without an authorisation being filed, since this can be done subsequently (Rule 101(4) EPC), but someone who has not yet been named cannot be represented. Accordingly the identity of an opponent has to be known to ensure that a notice of opposition is filed in writing in accordance with Article 99(1) EPC (when opposition is filed without a representative) or to enable a representative to act as laid down in Article 133(2) and (3) EPC (when opposition is filed by a representative).

9. In the contested decision, which is broadly similar to the "Opposition; reliability" decision referred to in IV above, it is rightly concluded - from, among other things, the various requirements of the Convention - that the opponent must be identifiable by the Office. It may, for example, depend upon the identity of the opponent whether the opposition is drawn up in a language which he is permitted to use under Rule 1(1), second sentence, EPC, whether the correct amount of the opposition fee has been paid in the case of Rule 6(3) EPC, whether a representative is required under Article 133(2) and (3) EPC, or - not least important - whether the general requirements as to a person's legal capacity have been met. Such requirements cannot wait upon subsequent evidence as to the opponent's identity.

10. The foregoing demonstrates the correctness of the definition, in the decision "Opposition; reliability" (cf. IV above), of the applicability of Rule 56(1) in conjunction with Article 99(1) EPC and of Rule 56(2) in conjunction with Rule 55(a) EPC. According to that decision, deficiencies and omissions in information concerning the opponent may be remedied on invitation in accordance with Rule 56(2) EPC, while the identity of the opponent must be known and verifiable from the outset of proceedings. As the reference to Rule 26(2)(c) in Rule 55(a) EPC indicates, the remediable deficiencies involve either details relating to the correct designation of the natural or legal person or else postal requirements in respect of the address. Once the opposition period has expired, on the other hand, it is no longer possible to supply information which would identify the opponent to the European Patent Office for the first time.

11. This interpretation of Rules 55(a) and 56 EPC is also corroborated by a comparison with similar provisions. As the reference to Rule 26(2)(c) EPC shows, the said Rules follow the same pattern as for establishing the identity of an applicant. Article 80(c) EPC stipulates that a filing date can be allocated only if the documents filed contain information identifying the applicant. The other requirements regarding the designation of the applicant contained in Rule 26(2)(c) EPC may if desired be met subsequently under Article 91(2). A comparable situation also exists when an appeal is filed. Here too, as can be inferred from Articles 106(1), 107 and 108 EPC, the appellant must be identified by the time the period for appeal expires. On the other hand, details of this designation may under Rules 64(a) and 65 EPC, which are worded identically to Rules 55(a) and 56 EPC, be given later. In the case of appeals, however, the decision of the department of prior instance being appealed against is a means of identification. Nevertheless, an appeal can also fail because the appellant cannot be identified.

12. This leaves the question of whether Rule 88, first sentence, EPC may not be used in order subsequently to provide in the form of a correction information needed in order to identify an applicant in the case of Article 80(c) EPC, an opponent in the case of Article 99(1) EPC or an appellant in the case of Articles 106(1), 107 and 108 EPC. The answer must be negative. Because of the EPC requirement that by the time the period allowed for opposition expires the identity of an opponent must be known both to the EPO and to the patent proprietor Rules 55(a) and 56(2) EPC must be regarded as "lex specialis" in respect of Rule 88, first sentence, EPC. These special rules on the correction of the notice of opposition after expiry of the opposition period allow information concerning the opponent to be corrected but not his subsequent naming.

13. Finally, the use by the formalities officer of Form 2302.2 for his communication was unable to create a bona fide situation in the sense of making the failure to name the opponent a remediable deficiency despite the clear-cut legal situation outlined above. A bona fide situation is out of the question if only because the Office did not prevent the appellant from meeting the formal requirement in due time. The communication referred to was issued only after the opposition period had expired. Moreover, bona fide reasons cannot fairly be adduced to permit the remedying of a failure to observe mandatory requirements in inter partes proceedings, because any such remedy would as a rule interfere with the rights of other parties.

14. The opposition does not therefore comply with Article 99(1) EPC and under Rule 56(1) is to be rejected as inadmissible.

15. The requirements of Rule 67 EPC regarding reimbursement of appeal fees are not met.

ORDER

For these reasons, it is decided that:

1. The appeal is dismissed.

2. The request for reimbursement of the appeal fee is refused.