BOARDS OF APPEAL
Decisions of the Technical Boards of Appeal
Decision of Technical Board of Appeal 3.2.3 dated 15 June 1992 - T 553/90 - 3.2.3*
Composition of the Board
Patent proprietor/Respondent: MARLBORO MARKETING, INC.
I. Werner Schenk GmbH + Co.
II. Plastoprint GmbH + Co. KG
Keyword: "Entitlement of patent proprietor" - "Transfer - binding effect"
If the European patent is transferred during opposition proceedings the new patent proprietor entered in the Register of Patents takes the place of the previous patent proprietor both in the opposition and in the appeal proceedings. His entitlement may not be questioned in these proceedings.
Summary of Facts and Submissions
I. European patent No. 0 120 099 with nineteen claims was granted on 2 July 1986 in respect of European patent application No. 83 102 840.2, which was filed on 22 March 1983 and published on 3 October 1984.
II. The patent proprietor is stated on the patent specification as being
"The Howard Marlboro Group
500 Tenth Avenue
New York, New York 100 18 (USA)".
Following the grant of the patent, the patent proprietor (respondent) requested in a letter dated 1 September 1987 that patent No. 0 120 099 be transferred to
"MARLBORO MARKETING, INC.
475 Tenth Avenue
New York, New York 10018 (USA)"
and submitted a declaration of transfer and a new authorisation.
In a letter dated 30 September 1987, the European Patent Office stated that the contested patent had been transferred as requested and the devolution of rights would be entered in the Register of European Patents and published in the European Patent Bulletin.
III. The appellants
I. Werner Schenk GmbH + Co. and
II. Plastoprint GmbH + Co. KG
lodged appeals against the granted patent which were based in part on the following documents: ...
Furthermore, appellants I and II questioned the patent proprietor/respondent's right to sue.
V. The case before the department of the first instance ended with an interlocutory decision under Article 106(3) EPC dated 23 April 1990, in which the Opposition Division concluded that, taking account of the changes made in the opposition proceedings, the patent and the invention which formed its subject-matter satisfied the requirements of the Convention. ...
VI. Notices of appeal were lodged by appellants I and II against this interlocutory decision on 19 and 20 June 1990 respectively, on which dates they also paid their fees. ...
VII. In a communication under Article 11(2) of the Rules of Procedure of the Boards of Appeal dated 7 February 1992, the Board stated in its provisional assessment of the facts and circumstances that there was no reason to doubt the respondent's entitlement, ...
IX. Discussions in the oral proceedings on 15 June 1992 centred on the arguments which had already been put forward in the appeal proceedings, namely the question of the entitlement of the appellant, ...
Appellants I and II uphold their request for revocation of the patent.
The respondent defends the patent in accordance with the above-mentioned main and auxiliary requests (see point VIII), that is it requests that the contested decision be set aside and the patent be maintained on the basis of the main or auxiliary requests.
Reasons for the Decision
1. The appeals comply with Articles 106 to 108 and Rule 64 EPC. They are admissible.
2. Entitlement of the respondent
2.1 This legal point has already been discussed in the opposition proceedings, at which the department of first instance decided that the party entered in the Register of Patents had to be regarded as the patent proprietor and that the position was not regulated by any other provision in the EPC. If necessary, therefore, the matter would have to be referred to the national courts for clarification.
2.2 The Register of European Patents (Article 127 EPC) contains information about the identity of the applicant or patent proprietor (Rule 92(1)(f) EPC) and about rights over the European patent application or the European patent (Rule 92(1)(w) EPC). Under Article 20 EPC, the Legal Division of the EPO is responsible for decisions in respect of entries in the Register of European Patents and their deletion. These decisions are subject to appeal under Article 106(1) EPC. On the basis of Article 21(2) EPC these appeals fall within the jurisdiction of the Legal Board of Appeal, and not the Technical Boards of Appeal (Article 21(3)(a), (b) and (4) EPC).
2.3 With respect to the grant proceedings, the proceedings before the Legal Division are ancillary proceedings in which the entitlement of the person entered in the Register of Patents as the person to whom the right to the patent belongs can be contested. In grant and opposition proceedings, however, the legal fiction established in Article 60(3) EPC applies.
2.4 The Opposition Division was therefore not competent to decide on the entitlement of the respondent. Under Article 111(1) EPC, the Board is not authorised to do so either.
* This is an abridged version of the decision. A copy of the full text in the language of proceedings may be obtained from the EPO Information Desk in Munich on payment of a photocopying fee of DEM 1.30 per page.