G 0004/97 (Opposition on behalf of a third party) of 21.1.1999

European Case Law Identifier: ECLI:EP:BA:1999:G000497.19990121
Date of decision: 21 January 1999
Case number: G 0004/97
Referral: T 0649/92
Application number: 82304478.9
IPC class: C12N 15/00
Language of proceedings: EN
Download and more information:
Decision text in EN (PDF, 10.335K)
Documentation of the appeal procedure can be found in the Register
Bibliographic information is available in: DE | EN | FR
Versions: OJ | Published
Title of application: Construction of DNA sequences and their use for microbial production of proteins, in particular human serum albumin
Applicant name: Genentech, Inc.
Opponent name: (03) Naohito Oohashi
(01) Delta Biotechnology
(02) Riatal GmbH
Board: EBA

Headnote

1(a): An opposition is not inadmissible purely because the person named as opponent according to Rule 55(a) EPC is acting on behalf of a third party.
1(b): Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process.
1(c): Such a circumvention of the law arises, in particular, if:
- the opponent is acting on behalf of the patent proprietor;
- the opponent is acting on behalf of a client in the context of activities which, taken as a whole, are typically associated with professional representatives, without possessing the relevant qualifications required by Article 134 EPC.
1(d): However, a circumvention of the law by abuse of process does not arise purely because:
- a professional representative is acting in his own name on behalf of a client;
- an opponent with either a residence or principal place of business in one of the EPC contracting states is acting on behalf of a third party who does not meet this requirement.
2: In determining whether the law has been circumvented by abuse of process, the principle of the free evaluation of evidence is to be applied. The burden of proof is to be borne by the person alleging that the opposition is inadmissible. The deciding body has to be satisfied on the basis of clear and convincing evidence that the law has been circumvented by abuse of process.
3: The admissibility of an opposition on grounds relating to the identity of an opponent may be challenged during the course of the appeal, even if no such challenge had been raised before the opposition division.
Relevant legal provisions:
European Patent Convention 1973 Art 99
European Patent Convention 1973 R 55
Keywords: Admissibility of opposition - acting on behalf of a third party
Circumvention of the law by abuse of process
Catchwords:

-

Cited decisions:
G 0001/84
G 0009/93
T 0010/82
T 0635/88
T 0290/90
T 0798/93
T 0301/95
Citing decisions:
T 0461/96
T 0649/92
T 0261/08
G 0001/97
T 0272/95
T 1284/01
T 1028/96
T 1178/04
T 0030/02
T 0839/08
T 0315/03
G 0003/99
T 0866/01
T 0303/94
G 0001/12
T 0188/97
T 1204/97
T 0459/96
T 1895/06

Summary of Facts and Submissions

Cases G 3/97 and G 4/97 have been consolidated. The "Summary of facts and submissions" and "Reasons for the decision" in G 4/97 are the same as in G 3/97 (see OJ 1999, p. 245 ff).

Reasons for the Decision

Cases G 3/97 and G 4/97 have been consolidated. The "Summary of facts and submissions" and "Reasons for the decision" in G 4/97 are the same as in G 3/97 (see OJ 1999, p. 245 ff).

ORDER

For these reasons it is decided that:

The questions of law referred to the Enlarged Board of Appeal are to be answered as follows:

1 and 2: The admissibility of an opposition on grounds relating to the identity of an opponent may be challenged during the course of the appeal, even if no such challenge had been raised before the opposition division.

3(a): An opposition is not inadmissible purely because the person named as opponent according to Rule 55(a) EPC is acting on behalf of a third party.

3(b): Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process.

3(c): Such a circumvention of the law arises, in particular, if:

- the opponent is acting on behalf of the patent proprietor;

- the opponent is acting on behalf of a client in the context of activities which, taken as a whole, are typically associated with professional representatives, without possessing the relevant qualifications required by Article 134 EPC.

3(d): However, a circumvention of the law by abuse of process does not arise purely because:

- a professional representative is acting in his own name on behalf of a client;

- an opponent with either a residence or principal place of business in one of the EPC contracting states is acting on behalf of a third party who does not meet this requirement.

4: In determining whether the law has been circumvented by abuse of process, the principle of the free evaluation of evidence is to be applied. The burden of proof is to be borne by the person alleging that the opposition is inadmissible. The deciding body has to be satisfied on the basis of clear and convincing evidence that the law has been circumvented by abuse of process.

5: This decision is to be applied to all pending proceedings.

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