T 0349/86 (Transfer of opposition) of 29.4.1988

Summary of Facts and Submissions

I. On 25 January 1985, M.A.N. Maschinenfabrik Augsburg-Nürnberg Aktiengesellschaft (Company X) entered an admissible opposition to European patent No. 15 326. The opposition was rejected by a decision of the Opposition Division on 29 July 1986.

II. On 27 September 1986, M.A.N. Aktiengesellschaft (Company Y), the universal successor in title of Company X, which it had taken over, lodged an appeal against the decision of the Opposition Division. In their notice of appeal the appellants requested that the opposition be transferred to M.A.N. Nutzfahrzeuge GmbH (Company Z), to which that part of Company X's enterprise on whose behalf the opposition had been entered had been transferred before Company X had merged with Company Y.

III. In the statement of grounds for appeal filed on 18 November 1986 the appellants maintained their request for transfer of the opposition, justifying it on the ground that the transfer of part of the enterprise concerned also included transfer of all matters of dispute and administrative and other procedures in the commercial vehicle field.

IV. The appellants also requested that if the Board felt unable to decide that the opposition had been transferred to Company Z, it should put to the Enlarged Board of Appeal the question of which party in such a situation was the successor in title to the initial opponent.

V. The appellants supported their request with certified copies of the pertinent parts of the contract transferring the part of the enterprise in question, together with extracts from the commercial register mentioning the transfer and the subsequent merger of Company X with Company Y. In their reply, the respondents objected to transfer of the opposition, arguing that this would be tantamount to bringing a new opponent into the proceedings after the period allowed for opposition by the European Patent Convention had expired.

Reasons for the Decision

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

2. Under Article 112(1)(a) EPC the Board of Appeal may of its own motion or following a request from a party to the appeal refer any question to the Enlarged Board of Appeal if it considers that a decision is required on an important point of law.

3. The question as to whether and in what circumstances an opposition instituted before the European Patent Office can be transferred to a third party is a question of fundamental legal importance which in the general interest should be definitely settled.

4. The Board considers that Rule 60(2) EPC, which states that in the event of the death of the opponent the opposition proceedings may be continued by the European Patent Office of its own motion, even without the participation of the heirs, may be read as definitely stating that an opposition may be transferred to a deceased opponent's heirs and, by analogy, to a company absorbing the opposing company by merger or takeover.

5. However, the EPC is silent on the possibility of an opposition being transferred in other circumstances, for example either freely or with the enterprise or part of the enterprise on whose behalf the opposition was instituted.

6. Since this is a purely legal question whose answer cannot be found in an interpretation of the EPC, the Board considers it necessary to refer the matter to the Enlarged Board of Appeal.

ORDER

For these reasons, pursuant to Article 112(1) EPC and Article 17 of the Rules of Procedure of the Boards of Appeal (OJ EPO 1983, 7 et seq.), the following point of law is referred to the Enlarged Board of Appeal for a decision:

Is an opposition instituted before the European Patent Office transferable only to the opponent's heirs or can it be transferred freely either with the opponent's enterprise or with apart of that enterprise operating in a technical field in which the invention to which the patent in suit relates can be exploited?