Important to know your enemies? Not according to the EPO.
14 May 2021
Ever been attacked by a “straw man”? No? Well that might be because this normally happens only in horror movies. Nevertheless, to a patent attorney this could be a real possibility when representing clients in opposition proceedings at the EPO.
It has long been established in EPO case law that an opposition against a European Patent can be filed in the name of a so-called “straw man”, an apparently unrelated person or company, acting on behalf of the interested party to conceal their identity. In recent EPO Board of Appeal (BoA) decision T 1839/18 (see here), a patentee questioned if the concept of “straw man oppositions” is in line with the principle that acting before the EPO requires a legitimate purpose.
In summary, the EPO decided to continue with its tradition that oppositions can be filed anonymously. In practice, this means if a European patent has recently been granted, perhaps owned by a supplier that you have a good relationship with, you can challenge it, without necessarily needing to disclose your identity, thereby not souring the relationship.
By way of background, according to Art. 99 (1) EPC “any person” is entitled to file an opposition. This has been interpreted to include a straw man. The fact that the opponent is acting on behalf of a third party does not render the opposition inadmissible. It is, however, inadmissible if the opponent’s involvement is to be regarded as circumventing the law by abuse of due process. In T 1839/18 the patentee questioned how a straw man opposition can be reconciled with the principle that acting before the EPO requires a legitimate purpose.
One argument used was that, following on from G1/06 which is about double patenting, “every act” before the EPO should require a legitimate purpose. The BoA, however, could not see any reason why the statement in G1/06 should overturn the existing case law on the allowability of straw man oppositions and referred to the landmark decisions G3/97 and G4/97 that established that anyone should be able to challenge a granted patent.
The patentee then tried to convince the BoA that a straw man opposition could be an abuse of the human right to a fair hearing because the system of “any person” oppositions contravenes Art. 6.1 of the European Convention of Human Rights (ECHR), according to which, everyone is entitled to a fair hearing in civil proceedings. The reasoning was that straw man oppositions deny a patentee the ability to rely on the proceedings by way of estoppel in future infringement proceedings. The BoA was not convinced.
In a last attempt, the patentee pointed to the decision of the Administrative Counsel to permit individuals to pay a reduced appeal fee compared to companies. They argued that this may lead to companies abusing the process by using a straw man individual to file their appeal in order to take advantage of the lower appeal fee. The BoA thanked the patentee for their concern but made the point that “the Boards of Appeal are not the custodians of the EPO’s finances and neither are they called upon to question the wisdom of decisions made by the Administrative Council”.
In the end the BoA emphasized that a granted patent can only be justified by its technical contribution to society. Therefore patents granted without meeting the requirements of patentability harm the patent system by inappropriately preventing competitor research and development. Consequently any person challenging a patent by way of opposition can contribute to society by clearing the register from undeserved monopolies or by adding legal certainty.
We believe that oppositions, anonymous or not, remain a very valuable tool in the armoury of any person or company. If you are considering challenging a competitor’s patent, please do get in touch.
Mauricio Guenther
Electronics, Computing and Physics
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP May 2021
