T 0659/92 (Transfer of opposition) of 24.10.1994

Summary of Facts and Submissions

I. Koll KG, represented by Mr U. Schlagwein, patent attorney, filed opposition to European patent No. 0142132 relating to a massage device and granted to the patent proprietor and respondent (Günter Schweisfurth) with effect from 2 May 1990. The opposition was rejected as unfounded by the opposition division of the European Patent Office following oral proceedings and a decision dated 4 June 1992. In a submission dated 14 July 1992 (received on 16 July 1992) the opponents' representative lodged an appeal against the opposition division's decision, which had been communicated to the parties to the proceedings on 5 June 1992, and requested that the contested patent be revoked in its entirety.

II. In a registered letter dated 2 December 1992, signed "Walter Koll" and received at the European Patent Office on 4 December 1992, Koll KG stated that the appeal filed in the submission of 14 July 1992 against the decision of the European Patent Office of 4 June 1992 was being withdrawn.

III. In a submission dated 21 December 1992, the opponents' representative (U. Schlagwein, patent attorney) filed a copy of a "transfer declaration" dated 24 April 1992 bearing the authenticated signature of Mr Walter Koll, in which the latter inter alia transfers the "opposition to the Schweisfurth patent EP-0142132 massage device " to Mr Gerhard Arnold, Wiesbaden, and requested that the appeal proceedings be allowed to continue in the name of the latter, as Koll KG had no longer been entitled to withdraw the appeal.

In a submission dated 30 December 1992, patent attorney U. Schlagwein lodged a copy of the "transfer declaration" of 24 April 1992, which had been certified by a notary on 22 December 1992, together with an authorisation signed by Gerhard Arnold, Wiesbaden, to be placed on file.

IV. In support of his request for continuation of the appeal proceedings, patent attorney U. Schlagwein stated that Walter Koll had transferred all industrial property rights relating to cosmetic rollers to Gerhard Arnold on 24 April 1992. Mr Koll had relinquished all activities relating to the licensing of cosmetic rollers and had transferred them together with the intellectual property rights to Mr G. Arnold. The business assets directed towards the marketing of industrial property rights had thus also passed into the control of the acquiring party, together with the opposition and appeal in the present proceedings. The appeal proceedings had to be further prosecuted by whoever was in possession of the competing industrial property rights. Bankruptcy proceedings had since been instituted against Koll KG.

V. The respondent takes the view that the appeal proceedings cannot be continued, as the appeal has been finally withdrawn. The transfer declaration certified as authentic on 22 December 1992 obviously bore only the signature of Mr W. Koll, but not that of Mr G. Arnold. Furthermore, the authorisation issued by Mr Arnold was only signed on 29 December 1992 and filed with the European Patent Office on 2 January 1993.

The opposition could be assigned only together with the opponent's business assets. In the present case, however, all that had been submitted was a transfer declaration from W. Koll as a natural person and not in his capacity as personally liable partner of Koll KG. The company assets of Koll KG had not been transferred. Mr Arnold had not acquired the business assets; he was wrong to assume from the transfer of the industrial property rights that the business assets had been transferred.

VI. The respondent submitted a letter to be put on file written by Mr Walter Koll to a Günter Schweisfurth GmbH and dated 27 August 1993, which included the statement: "At no stage were the business assets transferred to Mr Arnold".

VII. Following inspection of the original of the agreement in examination file 91101722.6 transferring inter alia the rights in the opposition to Mr Gerhard Arnold, the board noted that the signatures on the transfer declaration consisted of the names "Walter Koll" and "Gerhard Arnold".

Reasons for the Decision

1. Under appeal board practice endorsed by the Enlarged Board of Appeal in its decision of 5 November 1992, if the decision of the opposition division on the substantive issues becomes final by virtue of the withdrawal of the sole appellant's appeal, appeal proceedings are to be regarded as having ended and are to be terminated in so far as the substantive issues settled by the contested decision at first instance are concerned (G 7 and 8/91, OJ EPO 1993, 346, 356, points 2 to 4, 12 of the reasons). The board of appeal still has power to decide on the point at issue between the parties, ie whether the appeal has been validly withdrawn or - as is claimed in the present case - the appeal proceedings must be continued because the opponent has ceded his procedural status as opponent in opposition appeal proceedings, and thus his entitlement to withdraw an appeal, to a third party.

In the present appeal proceedings, the board must decide whether the third party which claims to have replaced the appellants in these proceedings as their successor in title is right in maintaining that the appeal was never validly withdrawn. The board's decision is thus of a declaratory nature: if the board declares - by interlocutory decision if appropriate - that the appeal has not been validly withdrawn, the appeal proceedings will be continued; if the board declares that the appeal's withdrawal was valid, it will give a final decision discontinuing the proceedings, assuming there are no other matters (such as award of costs) to be considered.

2. Concerning the assignment of rights in a case, the Enlarged Board of Appeal decided that an opposition could, as implicitly acknowledged in Rule 60(2) EPC, be transmitted to the opponent's heirs and that, by analogy, the opposition could be transmitted to the opponent's universal successor in law (G 4/88, decision of 24 April 1989, OJ EPO 1989, 480, point 4 of the reasons). An opposition pending before the European Patent Office might be transferred or assigned to a third party "as part of the opponent's business assets", together with the assets in the interest of which the opposition had been filed. On the basis of this Enlarged Board of Appeal decision, it has also been found that the right to lodge an appeal may be transferred together with the opponent's business assets (T 563/89, Board of Appeal 3.2.1 decision of 3 September 1991, point 1.1 of the reasons).

In line with these precedents, the board considers that rights in a case may be transferred by a party to the proceedings at any stage of opposition appeal proceedings provided they are transferred together with the business assets or the assets in the interests of which the appeal was filed.

3. In this instance, however, the opponents' business assets, or the part thereof encompassing the positions in industrial property rights which the opposition is designed to protect, have not been transferred. For that reason, contrary to what the acquiring party (Gerhard Arnold) would appear to believe, there is no question of the opposition having been ceded by Koll KG to a universal successor in title as "an inseparable part" (see G 4/88, op. cit., point 6 of the reasons) of those business assets in the interests of which the appeal was filed.

3.1 The "transfer declaration" of 24 April 1992 relates merely to certain industrial property rights, ie patent applications, utility model and industrial design applications/deposits, and to the "opposition to the Schweisfurth patent EP 0142132 massage device "; there was no - contractual - transfer of business assets or of the particular assets to which the industrial property rights in question relate. This is confirmed by the personally liable partner of the opponent company, Mr W. Koll, in his letter of 27 August 1993 to the proprietor of the contested patent.

3.2 Even if - as has been explained - Mr W. Koll has ceased all activity in relation to the licensing of cosmetic rollers since the transfer of the industrial property rights mentioned in the transfer declaration, this does not mean that the corresponding business assets of Koll KG have been transferred to the party who acquired the rights, Mr G. Arnold. The latter's authorised representative himself states that the cosmetic rollers in question are marketed by Cosmetics-Vertrieb Margot Zimmer GmbH, Langenargen, as confirmed in Mr Koll's statement of 27 August 1993.

3.3 For business assets to have been acquired by virtue of universal succession with all rights and liabilities, a proper contract with Koll KG would have been necessary. If the owner of the rights declares unilaterally that he has ceded positions in industrial property and the rights in opposition proceedings relating to a particular right, that cannot of itself effect universal succession by transfer of assets. The precise point at which Mr G. Arnold, as the party who acquired the various positions in industrial property rights, signed the "transfer declaration" of 24 April 1992 is of no moment. On 24 April 1992, only one signature, that of Mr W. Koll, was certified by the notary. There is nothing to indicate that the business assets of Koll KG were transferred in due contractual form. For that to happen, as the patent proprietor rightly points out, the company and not just its personally liable partner would have had to signify its agreement.

ORDER

For these reasons it is decided that:

1. The request that the appeal proceedings be continued is refused.

2. The appeal proceedings are terminated.