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Case Law of the Boards of Appeal

 
 
2.2.3 Transfer together with the business assets to which the opposition relates

In T 349/86 of 29 April 1988 the board considered a request filed by the universal successor in title of the original opponent for transfer of opponent status to the singular successor of part of its industrial and commercial activity (operations in the commercial vehicle field) to which the opposition related. The board asked the Enlarged Board to decide whether an opposition instituted before the EPO is transferable only to the opponent's heirs or whether it may be transferred freely either with the opponent's enterprise or with a part of that enterprise operating in a technical field in which the invention to which the patent in suit relates can be exploited.

In G 4/88 the Enlarged Board examined the situation in which the opposition has been instituted in the interest of the opponent's business or part of that business. The term "business" was understood in a broad sense as describing the an economic activity which is or could be carried on by the opponent and which constituted a specific part of his business assets. In such a situation, the opposition constituted an inseparable part of those business assets. Insofar as those assets were assignable under applicable national laws, the opposition which was part of them had also to be regarded as transferable. The Enlarged Board answered the referred question by stating that an opposition pending before the EPO may be transferred or assigned to a third party as part of the opponent's business assets together with the assets in the interests of which the opposition was filed. Applying G 4/88 to the facts of the case the board in T 349/86 thus held in its decision of 30 November 1989 that the universal successor in title of the original opponent had transferred its opponent status to the singular successor of part of its industrial and commercial activity (operations in the commercial vehicle field) to which the opposition related.

In T 9/00 (OJ 2002, 275), the board found as follows: If, as in the present case, the subject of an opposition is assigned to two different parts of the opponent’s company, the status of opponent can pass to a third party only if both parts or the entire company are transferred to it. In T 1982/09 the board concluded that the declaration submitted by the purported transferee in support of the transfer of opposition did not constitute sufficient evidence in order to conclude that the transferred business part comprised all of the technology to which the patent in suit related.

In T 298/97 (OJ 2002, 83) the board held that to preserve admissibility the transfer of an opposition, or opposition appeal, must be subject not only to a number of conditions including the condition that it is accompanied by the transfer of the relevant related business assets of the opponent, but also to the condition that such transfer is to one, and one only, successor party or transferee.

In T 799/97, the opponent had gone bankrupt during the first-instance opposition proceedings. The board held that the opponent's entire business, and so the activities to which the opposition related, had been transferred to the company with which the administrator had concluded a contract of sale. Not all receivables and liabilities had been acquired, but that had not been established as an essential prerequisite for the transfer of opponent status in G 4/88 and T 659/92. In T 384/08 the board confirmed that the mere fact that certain assets were explicitly excluded in an assignment contract was as such not sufficient for concluding that the contract did not result in the transfer of a business or a specific part of it.

In T 1421/05 the board held that where the business assets in relation to which an opposition was filed have been transferred and at the same time the transferor has contractually agreed to transfer the opposition to the transferee, the status of opponent remains with the transferor in the absence of there being filed with the Office (a) evidence sufficiently evidencing the transfer and (b) a request to recognise the transfer of opponent status. Where in such a case the transferor subsequently ceases to exist but has a universal successor, the status of opponent is capable of passing to that successor.