2.6.2 What kind of evidence suffices

If no evidence of legal succession is produced, the mere declaration by a company designated as legal successor to the original opponent that it is the original opponent's legal successor is not sufficient to substantiate the transfer of the status of opponent and of party to the appeal proceedings (T 670/95).

In T 261/03 of 24 November 2005 date: 2005-11-24 the board of appeal considered what kind of evidence was required to establish a valid transfer. The board drew parallels with the requirements of R. 20 EPC 1973 and noted that it was not aware of any appeal decision that had held that the documents to be submitted according to this provision have to prove the alleged transfer "up to the hilt". Such a yardstick of full and absolute proof would indeed be overly strict since in many situations documentary evidence alone could then hardly suffice. As the wording of R. 20(1) EPC 1973 suggested, something less was required. The board took the view that the requirements of R. 20 EPC 1973 were complied with if the documents submitted were such as to render it credible to the competent organ of the EPO, evaluating the documents in a reasonable way and in the light of all the circumstances, that the alleged facts were true. The mere fact that another document might have been a more direct piece of evidence than the one submitted by the appellant does not invalidate the proof actually offered (see T 273/02, applied in T 1178/04).

In T 1513/12 the board refused a request for a transfer of opponent status because, although the filed extracts from a commercial register showed there had been a spin-off, they did not contain any evidence of a transfer. In particular, no extracts from the spin-off agreement or from the agreements negotiated in connection with it, which could have proved the transfer more conclusively, had been filed.

In T 347/15, it was not clear from the submitted documents whether the opponent status had in fact been transferred. The two trade register extracts showed that the company had been restructured as per a restructuring agreement ("Ausgliederungsvertrag"), but they did not contain any information about the transfer of assets. It was therefore not possible to establish whether the opposition had indeed been filed in the interests of the part of the company at issue. No part of the restructuring agreement or of any addendum to that agreement had been submitted. Consequently, the board refused the request to transfer the opponent status.

In T 219/15 the board refused the request for transfer of the opponent status. The appellant had provided the purchase agreement, but that agreement did not demonstrate that the relevant business assets, i.e. the opposition proceedings relating to the patent in suit, were sold to the other company.

In T 2016/12 the board rejected the transfer of a specific part of the original appellant's (ATech Ltd) business assets to the purported transferee (AES AG). The board had requested the submission of the contracts concluded between the legal entities involved in the merger; the opponent had replied, however, that such contracts could not be provided for reasons of confidentiality. Other evidence presented was not conclusive. Furthermore, the board considered that if a transfer was not unequivocally proven, the original party to the proceedings would normally continue to be considered as the appellant. In the case in issue, ATech Ltd (the original party) allegedly continued to exist under its new name of GETech GmbH. However, from the two extracts of the commercial register concerning GETech GmbH, it was apparent that some assets had been transferred according to a separation plan to yet another company. The party provided no details as to this split or the business assets involved. The evidence indicated that GETech GmbH did not become the universal successor to that party through a complete acquisition of the entire business of the original party and a successive simple change of name. Therefore, it also could not be concluded that GETech GmbH was a party to the proceedings. Under these circumstances, the board could not reliably establish ownership of the business assets to which the opposition and appeal belonged. Consequently the board could not continue the proceedings, which therefore had to be terminated.

In T 234/18 the board recalled that being party to a pending opposition is not a property right but a procedural right and concluded that this procedural right was not covered by the term "intellectual property rights" in the purchase agreement filed as evidence. Since according to the case law of the boards of appeal an automatic transfer occurred only in the case of universal succession, but not where particular business assets were transferred from one party to another (see T 6/05 and T 1421/05), the request to register the purchaser as opponent could not be granted.

In T 7/17 the board held that the requirements for a transfer of party status as appellant-opponent were not met. It was not sufficiently proven that all relevant business assets in the interests of which the opposition had been filed had been transferred; nor was it proven that the opposition had been transferred. Where a company contractually transferred the business assets in the interests of which an opposition had initially been filed, it was a matter of what the parties had agreed whether or not the opposition – i.e. the party status as opponent – was transferred together with these assets. The board also noted that it was for the opponent or the third party seeking the party status as opponent to prove that all assets in the interests of which the opposition had been filed had been transferred.