The patent relates to an anechoic visco-thermal liner for nacelles of turbo-engines.
Proprietor is a US company.
The opposition was filed by Cabinet Beau de Loménie acting on behalf of Safran Aircraft Engines, a competitor of the proprietor, see below.
Brief outline of the case
Claim 1 as granted was lacking N over O1=EP 1 982 323, prior art under Art 54(3), not mentioned in the ESR and not found during the so-called topping-up search before issuance of the communication under R 71(3). The ED did well introduce further documents during examination but not the prior art art under Art 54(3).
The OD decided maintenance according to AR1.
The proprietor considered the appeal not to be admissible.
The board has considered the appeal to be admissible and confirmed the decision of the OD.
Admissibility of the appeal
The notice of appeal was filed on 04.06.2020 in the name of Safran Aircraft Engines while the notice of opposition was filed in the name of cabinet Beau de Loménie.
Following a communication of the board pursuant to R 100(2) (02.07.2020) questioning the admissibility of the appeal because of non-compliance with the requirements of Art 107 in conjunction with R 101(1), and a further communication of the Board pursuant to Art 15(1) RPBA20 annexed to the summons to OP (25.09.2020 )preliminarily confirming this view, the appellant/opponent requested a correction of the name of the appellant in the notice of appeal under R 101(2) or, in the alternative, under R 139 only on 20.10.2020.
In support of this request for correction of the notice of appeal, the appellant/opponent explained that with the first notice of appeal the appeal had been erroneously filed in the name of “Safran Aircraft Engines” while the “true intention” in the meaning of established Case Law of the Boards of Appeal was clearly to file the appeal only in the name of “Cabinet Beau de Loménie” which had the status of opponent in the first instance proceedings. In this respect reference was made to decisions G1/12, T97/98 and T1/97.
With their reply to the statement of grounds of appeal of the opponent, the proprietor requested to dismiss the request for correction and to declare the appeal inadmissible.
The attention of the board was drawn a letter submitted by the opponent during the opposition proceedings indicating “Safran Aircraft Engines” and not “Cabinet Beau de Loménie”, as the only opponent in the proceedings in front of the OD.
In view of this circumstance, the proprietor argued that the “true intention” mentioned by the opponent could also have been to file the opposition, and therefore the subsequent appeal, in the name of “Safran Aircraft Engines”, and not in the name of “Cabinet Beau de Loménie” as now asserted by the appellant/opponent.
The proprietor concluded that, given that there were at least two equally plausible but contradictory “true intentions” which could be equally inferred from the submissions of the appellant (opponent) during the opposition and appeal proceedings, the genuine “true intention” of the appellant (opponent) and hence the intended name of the appellant remained unclear, with the consequence to render the appeal inadmissible.
The board did not follow the proprietor as there was no doubt that “Cabinet Beau de Loménie” was the only opponent in the first instance proceedings.
The fact that the opponent was acting on behalf of a third-party, here “Safran Aircraft Engines” as acknowledged by the appellant/opponent(sic!), had no bearing on the identity of the opponent who is the person who fulfils the requirements of the EPC for filing an opposition, cf. G3/97, reasons 2, here “Cabinet Beau de Loménie”.
Contrary to the proprietor’s view, it is immediately apparent from the file that the only “true intention” of the appellant/opponent was to file an appeal in the name of “Cabinet Beau de Loménie” which had the status of opponent during the first instance proceedings and which, as such, was entitled to appeal the interlocutory decision of the opposition division by which the appellant/opponent was negatively affected.
The correction requested does not thus represent a change of mind as to whom the appellant should be, but actually expresses what was really intended by the appellant (opponent) when filing the appeal.
The board also considered that, taking into account of the circumstances alleged by the appellant/opponent and related to the COVID-19’s restrictions and safety measures in place at that time, the request for correction under R 139 was filed without delay by the appellant/opponent after they could become aware, upon reception of the summons for OP, of the erroneous indication of the appellant’s name.
The request for correction was considered allowable under R 139 and, as a consequence, the appeal was admissible.
The AR for re-establishment is therefore moot and needs not to be decided. The corresponding fee will be reimbursed to the appellant/opponent.
It is common practice that a firm of patent attorneys acts as a man of straw and files an opposition in the name of a third party.
It is much less common that the firm of patent attorneys gives away the name of the party it is acting on behalf, already during opposition and later when filing the notice of appeal.
The board was rather “generous” as it needed the summons to OP for the firm of patent attorneys to realise the mistake. The firm of patent attorneys had been made aware of the discrepancy between the names in the opposition and in the notice of appeal much earlier.
At the end of point 20 of G 1/12, the EBA stated that “the identity of the true appellant, i.e. the person on whose behalf the appeal was actually filed, must be established by expiry of the two-month period prescribed in Article 108, first sentence, EPC at the latest”.
The communication of the board under R 100(2) dated 02.07.2020, gave a time limit of two-months to clarify the identity of the opponent. Although, according to G 1/12, the identity of the appellant has to be clear within the two-months to file the notice of appeal, the time-limit set in the communication of 02.07.2020 was not met either.
It is difficult to consider that the request for correction under R 139 of the name of the appellant was filed without delay as it needed more than 4 months and two communications from the board for the firm of patent attorneys to react.
The proprietor had a good point in matters of admissibility. The board should have held the appeal not admissible.
Bringing in the pandemic as an explanation for not respecting a time limit can only elicit a faint smile and cannot be considered convincing.
In the end, the decision of maintenance was maintained, but the board has saved itself a lot of work in considering the appeal admissible. By deciding as it did, the board avoided having to deal with the request for re-establishment.
Indeed, should the appeal have been deemed not admissible, then the request for re-establishment would imperatively have had to be dealt with by the board.
One might say that the board applied a kind of law of least effort. Knowing where the procedure should end, i.e. to confirm the decision of maintenance of the OD, the board decided on the way it felt easier to follow, that is without having to take a decision on the request for re-establishment.
This result was acquired at the price of denying what had actually happened in the file. It is however to be expected from a board that the end does not justify the means, be it alone for the respect of the rule of law. Whatever the board might say, the requirements set out in G 1/12 were not respected.
The question about the quality of the work delivered and state of the files in the firm of patent attorneys will better be left unanswered. It is for the reader to judge.
Last but not least, it is regrettable that it needed the opponent to bring forward the relevant prior art under Art 54(3). This is actually the task of the ED.