Posted on 12/1/2015

EPO appeal board clarifies approach where a UK company party to proceedings ceases to exist, but is later reinstated

Clarification on this somewhat unusual – but possible – scenario.

A notice of opposition was filed against EP1058580 B1 by Formalities Bureau Limited (FBL), a Company incorporated under the laws of the UK.

While opposition proceedings were still pending, FBL was struck off the Register and therefore ceased to exist. Nevertheless, opposition proceedings in the name of FBL were continued, and following an interlocutory decision to maintain the patent in amended form, a Notice of Appeal was filed in the name of FBL. Shortly before oral proceedings the patent proprietor discovered that FBL had ceased to exist and subsequently requested that the appeal be declared inadmissible. Following an application by FBL, an order was made by the UK High Court to restore FBL to the UK register of companies. The patent proprietor subsequently filed a request for the “revocation” of the Opposition Division’s interlocutory decision on the ground that the opposition proceedings had lapsed when FBL had ceased to exist. The proprietor further requested that the appeal filed in the name of FBL be declared inadmissible.

Under European practice, any person is entitled to oppose a European patent. Where an opponent wishes to conceal its identity, it is common for an opposition to be filed by a so called “straw man”. In this case an opposition was filed by a company which had ceased to exist prior to an appeal being filed against the decision of the opposition division. The company was subsequently restored and the Enlarged Board of Appeal (EBA) had to decide if the appeal was validly filed.

The EBA noted that so far as the EPO is concerned, the existence or non-existence of a legal entity is exclusively a matter for national law and decided to follow UK law in recognising that FBL existed, had capacity to act before it ceased to exist and that the same applied after it was restored to existence. Turning to the question of whether national law should be followed as regards the deemed retrospective existence of FBL, the EBA acknowledged that there are limits on the extent to which national law should be followed, but considered that national law should be followed in this instance.

On this basis, the EBA concluded that the EPO should follow national law in recognising the reinstatement of a company (FBL) to the register of companies and that opposition proceedings can be continued by that restored company. Further, any appeal validly filed before the date on which a company is restored to the register of companies should be treated as admissible.

Whilst the EPO enlarged board of appeal reached the view that the appeal was validly filed, the case does underline the importance of maintaining any company specifically for the purpose of engaging in legal proceeding until those proceedings are fully disposed of.

Contact us for any queries on this matter.

Wilson Gunn