EP 3 300 753 B1 relates to a metered dose inhaler for dispensing aerosol doses
Brief outline of the case
The OD decided maintenance according to AR1 and the opponent appealed.
The board confirmed the maintenance according to AR1.
The case is interesting as the proprietor queried the admissibility of the opposition and of the appeal.
The proprietor’s point of view on admissibility of the opposition/appeal
The proprietor argued that the opponent/appellant, a UK company, had been a “dormant company” under UK law at the time of filing the opposition and had never changed this status. This meant that the opponent/appellant was not entitled to conduct any business and could not be equated to a legal person.
The proprietor also argued that the opponent could not have paid the opposition or the appeal fee and could not have appointed an authorised representative. Moreover, it was evident that the opponent had been acting on behalf of a third party with the intention of avoiding any liability for possible costs apportioned to theopponent under Art 104. This amounted to an abuse of procedure.
The board’s decision on admissibility of the opposition/appeal
The board held first that according to Art 99(1) “any person may give notice to the European Patent Office of opposition [ … ] “.
“Any person” is to be interpreted in line with Art 58 as “any natural or legal person, or anybody equivalent to a legal person by virtue of the law governing it”. The board referred to G 3/99, Reasons 9, and to G 1/13 Reasons 2.3.3.
For the board, it had to be established whether the appellant, the company European Oppositions Limited, in particular at the time of filing the notice of opposition and the notice of appeal, had the status of a legal person.
For the board, Section 1169 of the Companies Act 2006 which applies throughout the UK defines a dormant company. A company is dormant during any period in which it has no significant accounting transactions. A dormant company can be reactivated. Engaging in significant transactions may result in a dormant company losing its dormant status.
Although inactive, a dormant company is not struck off, but remains on the Companies House register. This means that a dormant company maintains the status of a legal person. The Board agreed with the conclusion drawn to this effect in T 184/11, Reasons 2.2.
It follows that the opponent/appellant had the status of a legal person at the time of filing the notice of opposition and throughout the opposition and appeal proceedings. The proprietor’s argument in this respect were therefore not convincing.
For the board, whether the opponent engaged in transactions which could have led to the loss of its dormant status goes beyond the assessment of its status as a legal person. The assessment of potential financial relationships between a dormant company and an appointed representative is of no relevance to establishing the legal status of the company as a legal person either.
Moreover, the opponent’s representative was appointed in accordance with the requirements of the EPC. Hence, there is no reason for the board to doubt that the representative was duly authorised. The remaining provisions under the EPC for the admissibility of the opposition and appeal, including the payment of the relevant fees, were also complied with.
As regards the contention that the appellant had been acting on behalf of a third party with the intention of avoiding any liability for possible costs apportioned to the appellant under Art 104, the board noted that acting on behalf of a third party cannot be seen as a circumvention of the law unless further circumstances are involved, cf. G 3/97, Reasons 3.2, and there is no requirement under the EPC that a party be equipped with sufficient financial means to comply with a merely hypothetical costs order.
Moreover, the EPC does not offer the patent proprietor any kind of guarantee that an opponent will be able in fact to reimburse costs awarded against him, cf. G 3/97, Reasons 3.2.6.
For these reasons, the board did not see any abuse of procedure by the opponent which might render the opposition and/or the appeal inadmissible.
Comments
From time to time proprietors try to query the admissibility of an opposition/appeal by claiming that the opponent is not the actual opponent but is acting for a third party.
Since G 3/97 any of those attempts were doomed to fail. Whether the opponent is a garage owner in Spain, see T 1839/18, or a firm of qualified representatives is actually irrelevant.
Some of those decisions have been commented in the present blog.
In T 2095/21, the opposition filed by a firm of qualified representatives was still held admissible, in spite of having admitted openly during the OP before the OD that they acted on behalf of a third party.
In T 1371/20 the appeal filed by a firm of qualified representatives was deemed admissible in spite of the name of the third party being originally mentioned in the notice of appeal.
In T 84/19 it was even held that a firm of qualified representatives having the status of a SME could benefit from a reduced appeal fee.
As far as the costs are concerned, the EPO does also not bear any costs involved in the hearing of a witness or in case of a different apportionment under Art 104.
The hearing of a witness is in principle made conditional upon deposit by the party requesting it, of a sum commensurate with the expected costs, cf. R 122(1). The Guidelines E-IV, 1.9, deal with costs for an OP and costs for taking evidence.
The argumentation about the potential possible costs was a good move, but the proprietor manifestly forgot that the EPO is not advancing any costs incumbent to a party.
On the procedure
Claim 1 as granted lacked novelty over D1=GB 2 506 385 not mentioned in the ESR. However, both the patent and D1 bear the same IPC Class A61M 15/00. The ESR mentioned no less than 2X,Y 1Y,D 7Y documents, but not the most relevant.
Comments
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