I think (I'm a company), therefore I am? EPO Enlarged Board seeks comments on resuscitated companies

The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has just announced that it is seeking from third parties written statements on case G 1/13, referred to the EBA by Technical Board of Appeal (TBA) 3.3.7 with interlocutory decision of 21 June 2013 in case T 22/09.

So what is going on?  Well, in a decision reminiscent of the quandaries of Marty Mcfly in Back to the Future, the members of a Technical Board of Appeal referred three questions to the Enlarged Board of Appeal.

First, (Marty) we’ve got to go back… to the original application, which was opposed in the name of a UK company, Formalities Bureau Limited. The Opposition Division (OD) allowed an amended version of the patent. An appeal to the decision was filed, but this time in the name of Formalities Bureau Bawden & Associates.

The patent proprietor smelt a catrat, and objected that the appeal was inadmissible, on the basis that Formalities Bureau Limited had ceased to exist 3 years before the decision of the OD.

Fortunately for the proprietor, one might think, the Boards of Appeal pf the EPO had some clear case law on matters such as this; T525/94 and T353/95 led the TBA to declare [at para 3 of the Reasons of the interlocutory decision]:

When an opposition is filed by a company, that company must not only exist at the moment when the opposition is filed but must continue to exist throughout the opposition proceedings and, in the event of an appeal, throughout the appeal proceedings.”

Case closed, let’s go home… What’s that? There’s more?! Great Scott!

The appellant provided details of a successful application to the Chancery Division of the High Court of Justice (of England and Wales) to restore Formalities Bureau Limited under section 1029 of the UK Companies Act 2006, which ruled that the company was “thereupon to be deemed to have continued in existence as if its name had not been struck off”.

This all got a bit too much for the poor TBA and they had to turn to the Enlarged Board with a few questions:

1. Where an opposition is filed by a company which is dissolved before the Opposition Division issues a decision maintaining the opposed patent in amended form, but that company is subsequently restored to the register of companies under a provision of the national law governing the company, by virtue of which the company is deemed to have continued in existence as if it had not been dissolved, must the European Patent Office recognize the retroactive effect of that provision of national law and allow the opposition proceedings to be continued by the restored company? 

2. Where an appeal is filed in the name of the dissolved company against the decision maintaining the patent in amended form, and the restoration of the company to the register of companies, with retroactive effect as described in question 1, takes place after the filing of the appeal and after the expiry of the time limit for filing the appeal under Article 108 EPC, must the Board of Appeal treat the appeal as admissible? 

3. If either of questions 1 and 2 is answered in the negative, does that mean that the decision of the Opposition Division maintaining the opposed patent in amended form automatically ceases to have effect, with the result that the patent is to be maintained as granted?

The European Patent Convention was drafted with the intention of, insofar as possible, bringing entitlement out of the jurisdiction of the EPO and leaving it to the national courts, at least so far as applicants are concerned (see Articles 60 and 61 EPC and Rules 14 to 18).  But the EPO does not seem entirely to be able to stay out of these matters, particularly in relation to opponents and appellants, as it testified by the still-pending G 1/12 (reported by the IPKat here) and the now well-established G2/04 (reported by the IPKat here, where this Kat is surprised to find his name mentioned - he has no recollection of any involvement whatsoever).

The Enlarged Board is willing to review any third party opinions on this matter that are received by the end of December 2013 at the Registry of the Enlarged Board of Appeal, quoting case number G 1/13. The IPKat is confident there will be a healthy mix of competing views.

And so, we are left with a cliffhanger ending: will the EPO allow a peculiar feature of UK company law that allows companies to be resurrected to prevail before the EPO? Will Marty be able to convince his parents to get together? (Spoiler - TBC and yes).

This Kat would like to thank Paul Beynon (again!) for his assistance in preparing this post.