CASELAW-EPO - reviews of EPO Boards of Appeal decisions

The patent was maintained in amended form according to AR3.

The patent proprietors and the opponent appealed this decision. The proprietors withdrew their appeal in the course of the appeal proceedings. The patent was maintained as decided by the OD.

A “Notice of appeal” was filed on behalf of the opponent Insys Therapeutics, Inc., by a professional representative of Elkington + Fife LLP (E+F).

Later, E+F indicating that it “hereby resign[s] from representation of the Opponent, Insys Therapeutics Inc.” and stating that the opponent’s new representative was Mr Goodfellow, Carpmaels & Ransford LLP (C&R).

Transfer of opposition

The opponent, Insys Therapeutics, Inc., had instituted opposition proceedings in the interests of its cannabidiol (“CBD”) business. The opponent’s CBD business, including the assets in the interest of which the opposition had been filed, had been transferred in its entirety to Chilion Group Holdings US, Inc.

The request of Benuvia Therapeutics Inc. that the party status as opponent be transferred to it – and with it the opponent’s procedural status as appellant in the appeal proceedings – was rejected.

The board had raised, during the appeal proceedings, the question as to whether circumstances had occurred which might qualify as a universal succession. It could not be established, on the basis of the submissions received, that a transfer in the form of a universal succession had taken place.

In fact, neither on the appellant-opponent’s part nor on the part of Benuvia Therapeutics Inc. has a case of universal succession been presented.

Instead, it has been argued that Benuvia Therapeutics Inc., by way of a contractual agreement, had acquired from the appellant-opponent the opposition together with the relevant business assets in the interests of which the opposition was filed and that the appellant-opponent was still in existence as a legal entity.

The requirements for a transfer of party status as appellant-opponent are not met since the board considers it not sufficiently proven that all relevant business assets in the interests of which the opposition had been filed had been transferred to Benuvia Therapeutics Inc., nor that the opposition was transferred.

The board considered that it is on the opponent or the third party seeking the party status as opponent to prove that all assets had been transferred in the interest of which the opposition had been filed. It was not on the proprietors to show that not all assets had been transferred.

On the part of Benuvia Therapeutics Inc., it was submitted that the licensed patents were not transferable and that the proprietors had failed to show that the licences had been retained by Insys Therapeutics, Inc. The board, however, considered that it was for Benuvia Therapeutics Inc. to clarify the situation concerning the licence rights.

Where only part of the assets in the interests of which the opposition had been filed – here the CBD business assets – were transferred, the requirements set by the Enlarged Board of Appeal in its decision G 4/88 cannot be considered to be met.

In such a case, the original opponent remains party to the proceedings.

Benuvia Therapeutics Inc. emphasised that the opposition was a “right”. For the board it is, however, not a substantive right but a bundle of procedural rights.

As the transfer of opposition was rejected, the question of representation has arisen.

The lack of authorisation

The oral proceedings took place in the absence of the appellant-opponent, Insys Therapeutics, Inc. Even though professional representatives attended the oral proceedings for the appellant-opponent, they were not entitled to act on behalf of the appellant-opponent because they had not submitted an authorisation, despite the board’s earlier invitation to do so.

In accordance with R 130(1), the summons had been addressed to Mr Goodfellow of Carpmaels & Ransford LLP (“C&R”), being the appellant-opponent’s representative at the time the summons was issued.

The EPO was informed by a professional representative at E+F in the appeal proceedings that E+F as an association was the new representative.

After issuance of the summons, a change of representation from Mr Goodfellow to C&R Association was recorded.

At the oral proceedings, Mr Goodfellow and Mr Newell of C&R were present. However, the board could not consider them entitled to act on behalf of the appellant-opponent in the absence of a signed authorisation, which could have been presented at the latest at the oral proceedings, despite the board’s earlier invitation to present one.

The board could not accept Mr Goodfellow’s line of argument that he did not have to submit an authorisation from the appellant-opponent because he was authorised by E+F, the previous authorised representative, from whom he had duly taken over representation.

It is true that neither Mr Kingsbury from E+F, nor E+F Association nor, initially, Mr Goodfellow when taking over representation were required to file an authorisation to be able to act on behalf of the appellant-opponent. In the decision on the filing of authorisations, the EPO President, based on R 152(1), determined the cases in which a signed authorisation has to be filed by representatives acting before the EPO. This decision also applies to proceedings before the boards of appeal (see also T 1700/11, Reasons 3). Pursuant to Art 1(1) of the Decision on the filing of authorisations, a professional representative whose name appears on the list maintained by the EPO and who identifies themself as such has to file a signed authorisation only in the circumstances of Article 1(2) and (3) of the Decision. Art 1(2) of the Decision did not apply.

According to Art 1(3) of the Decision, the EPO may require that an authorisation be produced if the circumstances of a particular case necessitate this, particularly in case of doubt as to the professional representative’s entitlement to act.

C&R’s argument that the board was wrong to request an authorisation because there were no circumstances which would have necessitated the filing of an authorisation since representation had been taken over from E+F could not be accepted.

In a communication, in the sections preceding the board’s invitation to file an authorisation, the board explained its doubts that the appellant-opponent, being a company in the process of liquidation, was able to act without the involvement of the liquidator. The board saw the need to ascertain that the professional representative was indeed empowered to act and thus invited the professional representative to file, within two months of notification of the communication, a signed authorisation in which, in particular, the capacity of the person signing should be stated.

It can also be noted that neither the initial professional representative at E+F nor the E+F Association had filed an authorisation from the appellant-opponent, and the letter filed was clearly about a change of representation and not, for instance, granting sub-authorisation.

The representatives of C&R suggested that the board’s stance of requiring the submission of a signed authorisation was too formalistic because the patent was invalid and this was detrimental to the general interest of the public.

The board noted that according to this kind of argument, many legal provisions governing the proceedings before the boards of appeal that put a certain burden on a party could be abrogated. Procedural provisions form part of the legal framework under the EPC and thus have to be observed, and it is not uncommon that appeal cases are lost on procedural issues rather than substantive points.

The suggestion that the board should make the application of the procedural provisions somewhat dependent on substantive considerations could not be accepted either.

Inter partes appeal proceedings are different in view of the prevailing principle of party disposition. Accordingly, for instance, in cases of a withdrawal of the appeal by the sole appellant-opponent, the appeal proceedings are to be terminated, and whether the patent as granted or the version considered allowable by the opposition division indeed complies with the requirements of the EPC is not further assessed, see G 8/91, OJ EPO 1993, 346, Reasons 7 and 10.1 to 10.3.

The fact that the board, after issuance of the summons, had to regard the representatives as not being entitled to act on behalf of the appellant-opponent does not mean that, retroactively, Mr Goodfellow was not the correct person to address the summons to nor that the appellant-opponent was not duly summoned.

The appellant-opponent’s representatives were present at the oral proceedings but could be considered as attending on behalf of Benuvia Therapeutics Inc. only. As no authorisation from the appellant-opponent had been submitted despite the board’s invitation in its communication and one could not be submitted in the course of the oral proceedings, as stated by the professional representatives at the oral proceedings, the appellant-opponent had to be considered as not being represented at the oral proceedings.

In order to avoid any further procedural delays, the board decided, in accordance with R 115(2) EPC and Art 15(3) RPBA 2020, that the proceedings be continued in the appellant-opponent’s absence, and the party was treated as relying on its written case.

Request for postponement of the oral proceedings

The request of the appellant-opponent’s representatives, submitted at the oral proceedings, that the proceedings be postponed so that the appellant-opponent could file an authorisation was rejected.

The request was made at an extremely late stage, namely at the oral proceedings. However, the question of authorisation had been an issue long before.

The board noted that at no stage during the appeal proceedings did the representatives inform the board that they might have difficulties in obtaining the required authorisation due to too a short time limit, let alone request an extension.

Neither had C&R’s request for a postponement of the oral proceedings filed two days before the scheduled date, referred to any difficulties in obtaining a signed authorisation of the appellant-opponent.

The board held that when requesting a transfer of opponent status, certain requirements have to be met. It was therefore a possible scenario that the board might not allow the requested transfer, in which case the proceedings were to be continued with the appellant-opponent, with the consequence that the issues addressed by the board about the question of authorisation from the appellant-opponent, would continue to be relevant. This scenario, which the professional representative must have been aware of, could not simply be ignored.

Comments

The present case shows in an exemplary manner, that by not abiding by formal requirements, a lot can go wrong.

Transfer of opposition

The transfer of opposition has to be duly justified and not simply asserted.

I personally remember a case in which the opponent claimed an error in the name of the opponent after holding OP. The OP took place in June and the decision was issued only shortly before the end of the year brake. It is only once the opponent had properly be ascertained that the written decision could be issued. Even claiming that the alleged opponent and the true opponent had the same address, was not enough to convince the OD.

Authorisations

It is common practice not to file an authorisation when an opposition is filed by a professional representative under Art 134 as there is a presumption of mandate. I have always considered this a risky way of doing. It is much better to file an authorisation and at the same time tick the box for allowing the grant of sub-authorisations.

If this is the case, nothing can really go wrong as far as representation is concerned.

If a power of attorney to E+F with the possibility to grant a sub-authorisation, the opponent could possibly have been represented. Nothing is however sure in this respect, as Insys Therapeutics, Inc. was knowingly in liquidation. Here the authorisation should have been signed by the liquidator.

It is important for an OD or for a board to insure that persons addressing the EPO are authorised to do so. It is not being too formalistic, as in the contrary the deciding body commits a substantial procedural violation.  

Divergence of Decisions of the President of the EPO in matters of authorisations

According to Art 1(1) of the decision of the President of the EPO of 13.05.2020, OJ EPO 2020, A71, documents filed during OP by ViCo have to be filed by mail. According to Art 5 of the same decision, no paper confirmation is due. This also applies to authorisations Filing by mail is filing as pdf that is equivalent to fac-simile.

This provision is in contradiction with Art 3 of the Decision of the President of the EPO dated 20.02.2019 according to which authorisations (and priority documents) may not be filed by facsimile.

I might have been quite long for my first post on a BA decision, but the intricacies of the case needed it.

Happy Easter to all the readers!