EP 3 812 870 B1 relates to a flow control system. It is a second generation divisional of EP08874783= and EP13182175=EP2706425.
Following T 1672/16, EP2307938 was maintained in amended form. The opponent was BELIMO Holding AG.
In EP2706425 one of the opponents was BELIMO Holding AG. The patent was revoked and the appeal withdrawn.
Brief outline of the case
EP 3 812 870 B1 was maintained according to a MRn filed before the OD.
Both proprietor and opponent appealed. Subsequently the opponent withdrew its appeal, and the board confirmed maintenance according to the MRn.
The proprietor contested the admissibility of the opposition. The opponent was natural person who is at the same time representative before the EPO and member of a firm of patent attorneys. .
The proprietor’s point of view
The proprietor submitted that according to decisions G 3/97 and G 4/97, although an opposition is not inadmissible purely because the person named as the opponent is acting on behalf of a third party, such an opposition may still not circumvent the law by abuse of due process.
In the present case, subsequent to the contested decision, the proprietor had initiated infringement proceedings before the UPC against a group of companies “IMI Hydronic”.
Mr. N.N. acted as the representative of the German subsidiary of the group in a central revocation action against the contested patent at the UPC, initiated in reaction to the infringement proceedings.
Thus, one of the subsidiaries of the group of companies had instructed Mr. N.N. to file the opposition against the patent. He had therefore not been the real opponent, but had acted as a straw man for the group.
In that manner, the real opponent avoided being identified as the party challenging the patent. This was a misuse of the opposition procedure, which was intended to allow genuine opponents to challenge patents in a transparent manner. Thus, the use of a straw man in this case was a clear attempt to circumvent the law by abuse of due process.
In addition, the straw man, being a patent attorney, did not have a legitimate interest in the outcome of the opposition proceedings.
For these reasons, the opponent had in fact not been correctly identified, so that the requirements of Art 99(1) and R 76(2) were in fact not met and the opposition was inadmissible.
The opponent’s point of view
The opponent submitted that even if the opposition was filed in a wrong name, this did not render the opposition inadmissible, since in decisions G 3/97 and G 4/97, it had been decided that in principle a “straw man” opposition was not inadmissible.
In addition, filing an opposition was a right every person had, except the proprietor, and in the present case, the opponent had not acted on behalf of the proprietor.
The board’s decision
For an opposition in which the person named as opponent is acting on behalf of a third party, G 3/97 identifies two cases where the law is circumvented by abuse of process.
The first case does not apply, as Mr N.N. does not act for the proprietor. The second case can not apply because Mr. N.N. possesses the qualifications required by Art 134.
The board noted that these two cases do not constitute an exhaustive list. Nevertheless, G 3/97 comprises some further considerations, in particular considerations as to what is not considered a circumvention of the law by abuse of process.
For instance, the EBA set out that “Though the patent proprietor may have an economic interest in finding out who is trying to attack his patent, such an interest is not legally protected by the legislative arrangements for the opposition procedure”.
That is, even if in the present case a legal person like the group of companies involved in the infringement action actually had avoided to be identified as challenging the patent by having Mr. N.N. act on their behalf, this would not have constituted an attempt to circumvent the law by abuse of due process within the meaning of G 3/97.
As, according to Art 99(1), opposition is open to “any person“, the EBA further observed that “It would be incompatible with this to require that the opponent show an interest, of whatever kind, in invalidating the patent”.
The EBA added that “therefore, it cannot be required that the opponent have an interest in the revocation of the patent”.
That is, in the present case, it is irrelevant whether Mr. N.N. had a genuine personal interest in the outcome of the opposition proceedings. Thus the “legitimate interest” of the opponent Mr. N.N., argued by the propritor to be missing, need not be demonstrated.
In summary, while G 3/97 and G 4/97 may not explicitly state that any opposition by a straw man is admissible, in the board’s reading, they essentially conclude that opposition filed by a straw man on behalf of an anonymous party is not objectionable merely because the opponent is acting as a straw man.
Comments
Opposition by a “man of straw”
Proprietor’s regularly argue that an opposition by a man of straw should not be admissible. Whether the man of straw is a qualified representative acting for himself or on behalf of its firm of qualified representatives or on behalf of a third party, or any other person is irrelevant, is irrelevant.
Proprietors have never succeeded in such an endeavour.
See for instance:
- T 2095/21, commented in the present blog.
- T 1371/20, commented in the present blog. In this case the name of the true opponent was mentioned by error in the notice of appeal.
- T 0846/22, commented in the present blog.
- T 1893/22, commented in the present blog.
- T 1839/18, the opponent was a garage owner in Spain.
That the representative and its firm are representing a client before the UPC is irrelevant as thee procedures are not connected.
Procedure before the UPC
The CD Paris has scheduled an oral hearing for 05.02.2026 on the revocation action. The LD Munich has scheduled an oral hearing for 18.06.2026 on the infringement action.
It will be interesting whether the UPC will come to the same conclusion on the validity, and if the patent is valid, whether it is infringed or not.
Comments
Leave a comment