T 0010/82 (Opposition; admissibility) 15-03-1983
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I. If a professional representative files notice of opposition in his own name although - as he later allows - he is acting in a professional capacity on behalf of a client, the notice does not comply with Rule 55 EPC.
II. The question whether in such a case the deficiencies in the notice of opposition can be remedied in accordance with Rule 56(2) EPC, even after a considerable lapse of time, has not been determined. III.If a party to proceedings communicates to the Board shortly before the oral proceedings facts that are significant to its decision and which would have rendered oral proceedings unnecessary, it may be equitable to require him to pay the costs incurred by the other party as a result of the oral proceedings.
Cost apportionment
Admissibility of opposition
Interlocutory decision
I. The respondents, both professional representatives working for an English firm, filed notice of opposition to granted European patent No. 1099 in a document received on 18 May 1981, without specifying a third person as their client. They authorised themselves and other persons from their firm to represent them.
II. The Opposition Division of the European Patent Office transmitted a copy of the notice of opposition to the appellant in a letter dated 6 July 1981.
III. In a letter dated 10 July 1981, the appellant (proprietor of the patent) requested that the opposition be dismissed on the grounds, inter alia, that the opposition did not fulfil the following conditions: (a) the requirements of Rule 55(a) EPC, because it was not clear from the notice of opposition whether the two respondents or their firm had filed it; (b) the requirement of Rule 55(d) EPC, because neither the respondents nor their firm had specified their client nor had they furnished authorisations from their client.
IV. In the appealed interlocutory decision dated 11 November 1981, the Opposition Division ruled that the notice of opposition was admissible but allowed separate appeal against its decision in accordance with Article 106(3) EPC.
V. On 2 December 1981, the appellant filed an appeal against that decision, filed a statement of grounds and paid the fee for appeal in due time. He requested that the decision be set aside and the opposition dismissed as inadmissible.
VI. The appellant made the following points: The respondents were neither the actual opponents nor the authorisors. The Opposition Division had a responsibility to establish who was acting in the capacity of opponent and who as authorisee. Self-authorisation in opposition proceedings was alien to the European system. Although, to quote the EPC, "any person" may give notice of opposition to a European patent, it was questionable for example whether a professional representative who was quite evidently defending the interests of a third party in a professional capacity could file notice of opposition in his own name. It was necessary to avoid any confusion between the roles of client and representative. Moreover, for various reasons the public interest dictated that a professional representative should not act on behalf of an unnamed person in opposition proceedings.While Article 99(1) EPC provided that "any person" could file notice of opposition to a European patent, there were various categories of person whose right to file notice of opposition was not absolute, and one of these was professional representatives, whose right to file notice of opposition had to be regarded as restricted on ethical grounds. Such restrictions were recognised in the national law of Contracting States.
VII. The appellant requested oral proceedings if his appeal were not otherwise allowed. The parties were summonsed by letter dated 29 October 1982 to oral proceedings on 11 January 1983.
VIII. In a letter dated 23 December 1982, which arrived at the EPO on 30 December 1982, but was not received by the Board of Appeal until 5 January 1983, the respondents stated that their "clients" had instructed them not to take part in the oral proceedings. The respondents claimed in that letter that in filing the notice of opposition in their own name they had acted in full conformity with the EPC. They cited Singer, "Das Neue Europäische Patentsystem" (Nomos, Baden-Baden, 1979, p. 76) in support of their argument that any person may file notice of opposition without having or substantiating a legal or legitimate interest. The Registry of the Boards of Appeal gave notification by telephone on 5 January 1983 of receipt of the respondents'letter and its substance, but the appellant rejected a postponement of the oral proceedings as he had completed his preparations.
IX. As was their stated intention, the respondents did not put in an appearance at the oral proceedings on 11 January 1983 and did not send a representative. The appellant reiterated his earlier arguments and stated that the respondents had now admitted to the EPO that they had filed the notice of opposition on behalf of "clients". It was thus clear that Rule 55 EPC had been contravened. The names of the respondents could not be replaced by the names of the clients, and the clients' authorisation could not be substituted for the respondents' authorisation. The opposition therefore had to be dismissed on the grounds that is was inadmissible.
X. After the oral proceedings, the appellant wrote to contradict various allegations made by the respondents in their letter of 23 December 1982. These factual allegations are not significant to the decision of the Board of Appeal and thus need not be gone into further.
XI. A general authorisation of the respondents and their firm is registered with the EPO (received at the EPO on 24 August 1979) enabling them to represent their above-mentioned clients in the procedure established by the EPC.
1. The appeal complies with Articles 106 to 108 and Rules 1 and 64 EPC and is therefore admissible.
2. A notice of opposition must meet the requirements of Rule 55 EPC and if the Opposition Division notes that this is not the case, Rule 56 EPC applies.
3. In the present case, the Opposition Division was not aware of the facts brought to the attention of the Board of Appeal as a result of the respondents' letter of 23 December 1982, i.e. that the respondents were in fact not acting in their own name when they filed the notice of opposition but in a professional capacity on behalf of clients. The notice of opposition thus does not comply with Rule 55(a) and (d) EPC. The result was confusion as to the respective roles as professional representatives and clients, and the appellant was quite right to contest this.
4. The Board of Appeal does not, however, share the appellant's view that correction of the notice of opposition under Rule 56(2) (2) EPC is absolutely out of the question. This issue must first of all be settled by the Opposition Division, which will have to pay particular attention to the effects of withholding one of the particulars required by Rule 55 EPC so as to deprive the Opposition Division of all possibility, when examining the opposition for inadmissibility, of detecting and censuring such a deficiency where it actually occurs. It is clear from Rule 101(4) (4) that the EPC also attaches particular importance to formal clarification of the legal relationship between the entitled person and the representative, especially as regards the applicant/representative situation.
5. Since the decision appealed was given without the Opposition Division being in possession of all the relevant facts, it must be set aside. The matter accordingly has to be remitted to the Opposition Division for further examination and a decision.
6. The oral proceedings on 11 January 1983 would have been unnecessary if the respondents had communicated to the EPO at an earlier stage the above-mentioned facts pertinent to the decision. For reasons of equity, therefore, the respondents should be required pursuant to Article 104(1) EPC to reimburse to the appellant the costs he incurred as a result of the oral proceedings. The respondents could have objected to an eventual decision on costs, expressly provided for in Article 104 EPC, in their letter of 23 December 1982 in which they stated that they would not be attending the proceedings. Parties to proceedings before the EPO must be presumed to be familiar with the relevant provisions of the Convention and it is therefore not necessary to bring those provisions to their attention.
Order
ORDER
For these reasons, it is decided that:
1. The interlocutory decision of the Opposition Division dated 11 November 1981 is set aside.
2. The matter is remitted to the Opposition Division for a further decision.
3. The respondents must reimburse to the appellant the costs he incurred as a result of the oral proceedings on 11 January 1983.