Brief outline of the case
The patent was revoked and the proprietor appealed.
The opponent was a firm of patent attorneys.
The proprietor argued that the opponent was not a true opponent and hence the opposition was not admissible.
The board disagreed and confirmed the revocation.
The proprietor’s point of view
The proprietor submitted that the opposition filed in the name of the firm of patent representatives constituted a circumvention of the law by abuse of process in the sense of decisions G 3/97, OJ EPO 1999, 245 and G 4/97, OJ 1999, 270).
The proprietor further submitted that the representative firm was no longer the legitimate opponent because during the OP before the OD they openly admitted that they acted on behalf of a third party.
This open admittance not only constituted clear evidence that the opposition was inadmissible, but also created confusion as to the opponent’s actual identity.
Whereas the motives for filing an opposition were irrelevant, pursuant to Art 99(1), the opponent’s identity was of fundamental procedural importance, and any doubt about it resulted in the inadmissibility of the opposition.
The board’s decision
Decisions G 3/97 and G 4/97 clarified that an opposition is not inadmissible purely because the entity named as opponent is acting on behalf of a third party.
An opponent status is a procedural status and the basis on which it is obtained is a matter of procedural law, i.e. any person, who files an opposition in compliance with the provisions under Arti 99 in conjunction with R 76 and 77, acquires the status of an opponent.
The fact that the existence of a “hypothetical client” is openly confirmed in the course of opposition proceedings does not affect the opponent’s identity and cannot create any confusion in this regard. On the same vein, the question whether the actual existence of a client is confirmed has no bearing on the admissibility of the opposition.
The situation is not different from the case in which no such open confirmation is given: both when a professional representative acts as opponent and when an opposition is filed by a legal entity named “straw man”, everybody is aware that the entity which has assumed the procedural status of an opponent is acting on behalf of a third party.
The filing of an opposition by a straw man is not as such an abuse of process, but it would require additional facts and evidence, as for instance if it were shown that the representative was acting on behalf of the patent proprietor, or was lacking entitlement to act as a European professional representative. None of these situations appear to be present in this case.
Nor can an opponent cease to be the legitimate opponent once the existence of a client instructing the representative acting as opponent is confirmed or identified, as the appellant argued.
The opponent does not have a right of disposition over his status as a party. If he has met the requirements for an admissible opposition, he is an opponent and remains such until the end of the proceedings or of his involvement in them
Accordingly the internal legal relationship between the opponent and any instructing party has no legal significance for external purposes. The board referred to T 84/19, Reasons 5.3, issued by the present board in a different composition.
Comments
Opposition by man of straw
From time to time proprietors attempt to challenge the admissibility of an opposition when it is filed by a mans of straw. None of those attempts have ever been successful.
T 84/19 was particular in the sense that the proprietor argued that the appeal was not deemed filed as the appellant=the firm of patent attorney, only paid the reduced appeal fee for a SME. The appeal was deemed validly filed and successful as the OD’s decision was set aside and the patent maintained in a different form.
In T 1371/20, commented in this blog, the opponent=firm of patent representatives filed an appeal in the name of the “true” opponent. In spite of the fact that the time limit for filing the correct name of the opponent under G 1/12, OJ 2014, A114, had long lapsed, the board accepted the correction of the opponent’s name and decided on the appeal.
In T 1839/18, the opposition had been filed by a garage owner residing in Spain. Although the opponent was represented by a well-known Dutch firm of patent attorneys, he benefited from a fee reduction in appeal. The proprietor challenged the legitimacy of the opponent to act, bringing in G 1/06, but without success.
On the procedure
The two documents which led to the revocation and its confirmation were the two first documents cited in the ISR established by the USPTO. The first document was classified X,Y and the second Y.
The SESR only cited two A and one A,D document.
The present patent should never have been granted.
https://www.epo.org/en/boards-of-appeal/decisions/t212095eu1
Comments
6 replies on “T 2095/21 – Admissibility of an opposition filed by a man of straw”
The tendency of representatives to argue every possible point grows tiresome. Of course you have to act in your clients’ best interests but sometimes arguing every single point can go against the client (not to mention wasted time = extra costs). My mentors always told me to fight what’s worth fighting and to concede points when they’re not worth fighting, because you should try to appear reasonable at all times since you never know when you might need the deciding body to exercise it’s discretion in your favour. This seems like a typical case where fighting over every point makes the proprietor look unreasonable. This topic has been settled for some time so what has the representative achieved for the client here, other than a slightly larger invoice?
@ Pointless
I can only but agree with you. If the case is no good for the client, there’s no point in squeezing out the maximum of an already dead citrus fruit. It is always better to stick to the strong points and not to insist on the weak ones.
When lecturing on OP, my first advice is not to start brushing up the deciding body up the wrong way, After all, you want a positive decision of the body for your client. Raising useless objections is not helping, rather annoying.
For a proprietor, questioning the admissibility of the opposition can be a good move, but not like in the present case where case law about oppositions by a man of straw is settled.
Telling a client that it might win, whereas the case gives raise to more than reasonable doubts, might in the long-run backfire on the representative.
Two thoughts occur:
As “outside counsel” we do not know all the business considerations that lie behind seemingly bonkers instructions from a client. Perhaps this was a case where business considerations dominated? The dictates of ongoing parallel legal proceedings in North America, perhaps. I have long since given up trying to understand how the law works, over there.
Second, if the EPO cares about procedural efficiency, why can’t it introduce an English-style costs regime that penalises those who waste everybody’s time with hopeless arguments? After all, North American companies seem to do resent so much handing over money to the EPO that they insist on never filing more than 15 claims. If you want to crimp back egregious conduct, hit them where it hurts them most, in their wallets. Money talks.
Dear Max Drei,
Your reply induced further thoughts on my side.
I have learned that, in principle, the representative has to do what the client wants. As an examiner I saw replies to communications stating bluntly that the client wishes to obtain the same claim as in the US. It is most probable that the representative explained to the client that it was not possible, but the representative had the duty to say so. I also saw representatives starting their reply by stating: we have been asked to bring the following to the attention of the ED…..
One trick to circumvent the limitation to 15 claims is to fill the independent and the independent claims with a lot of and/or conjunctions. This should automatically lead to lack of unity and clarity objections. In such a case, a combined objection under R62a and 63 should be send during the search and examination should only start when the claims are properly tidied.
As far as efficiency is concerned, rather than hopeless arguments, which is rather difficult to assess, what is more annoying is an inordinate number of AR, especially in opposition. It is difficult to give a maximum number of AR, but I would say that anything above 15 AR is, in most of the cases, not necessary.
As the number of “free” claims is limited to 15, the number of AR should be limited to 15, and for each claim above 15 in the total number of claims found in all AR, the standard claims fees should apply. This would help greatly. Exceptions could be made, but following due justification of the necessity of the number of AR.
If an independent claim falls for lack of patentability, a lack of unity can be the consequence. In such a situation, filing a plurality of independent claims for each variant covered by the original independent claim appears justified. In each set of those AR 15 claims could be free, or the general rule applied
My personal record was 134 AR. Do not tell me that 134 AR are necessary! As there was a flaw in all requests, they were quickly dismissed, but it could have meant a lot of work.
What do you think?.
What do I think, Daniel? First, that the courts in England know “vexatious” litigation when they see it and are quick to sanction it, transparently. The EPO should figure out its own way to stop this mischief, like filing 134 AR’s. Your idea of imposing a fee on the 16th and successive AR’s strikes me as excellent but perhaps still not enough. Beware the danger of getting exactly the opposite result from the one you wanted. Remember that school that imposed financial penalties on those parents who were late collecting their sprogs at the end of the school day. The fines made the situation worse, by legitimating their rude and shameless behaviour. Rich parents then got into the habt of routinely using the school as an early evening child-minder.
In England, the Constitution functions only when those in positions of power behave like “Good Chaps” and follow the unwritten Rules. But with the arrival of a shameless liar in No. 10, Downing St, the “Good Chaps” theory of government collapsed. Turning to patents, not every litigant is a “Good Chap” who dehaves decently. The EPO should devise ways to stop wealthy litigants shamelessly pursuing deliberately a policy of exhausting the financial resources of less wealthy adversaries until they submit. Not easy but increasingly necessary.
Dear Max Drei,
I can fully support your comment. I agree that there are vexatious proceedings and some of the objections raised in opposition are prima facie without any merit. My idea with fees for too many AR, was at least a beginning.
On the other hand, you are right when you mention increasing schools fees and their contrary effect. One can however think of increasing the fees with every late coming until a pain threshold is reached, but not as for varous generations of divisinal applications. There must be a pain threshold!
In the early eighties, I represented a few times the EPO at the Inventor’s fair in Geneva. I remember an applicant, actually SME, in the field of packaging. I saw some of its inventions which were really brilliant. He was a thorn in the side of the big packaging companies, as for instance he obtained the same result with much less cardboard. Unthinkable for those!
The big packaging companies were inundating him with oppositions without much merit, or infringement actions at national level or simply taking over the inventions but refusing to pay any royalties. In the end he had to give up as he did not have the financial resources to fight all those vexatious actions.
It is thus not only at schools that the big buck reigns, but also in the field of patents. I agree with you that a stop should be put to wealthy litigants shamelessly pursuing deliberately a policy of exhausting the financial resources of less wealthy adversaries until they submit. I agree that it might not be easy, but increasingly necessary.
If the EPO, and the EU, really wanted to help SMEs when they make the effort of patenting, not only fees should be reduced, but also some help should be offered and just not nice buzzwords.
SMEs have been the fig leaf behind which the big industry and large internationally active lawyer firms were hiding when lobbying for the UPC. At a time there was question of a insurance for litigation in favour of SMEs. The idea quickly vanished and the ceilings in recoverable costs against SMEs are not really helping them. How will a SME be able to resist to a big firm with deep pockets-
Vexatious actions are not only a problem at the EPO, but will also occur at the UPC.