The patent relates to methods, reagents and kits for assessing the risk or presence of facioscapulohumeral dystrophy (FSHD) in a mammalian subject.
Brief outline of the case
The opponent was a “man of straw” according to G 4/97, OJ 1999, 270. The opposition was filed by firm of patent attorneys.
The patent was maintained in amended form according a MR filed during OP before the OD.
The opponent appealed the decision, paid a reduced appeal fee and requested revocation.
The proprietor contested the quality of SME of the opponent.
The board decided in favour of the opponent as far as the appeal fee is concerned. The firm of patent attorneys was eligible to a fee reduction.
The board further decided to remit the case to the OD with the order to maintain the patent on the basis of claims 1 to 13 of AR 2 filed with the reply to the statement of grounds of appeal and a description to be adapted thereto.
Does a firm of patent attorneys benefits from a reduced appeal fee?
The proprietor’s point of view
The proprietor objected that the appeal was not deemed to be filed in view of Art 108, second sentence, due to an apparent lack of entitlement to the reduced appeal fee by the appellant/opponent, “a patent attorney firm”. The conditions for an appellant be entitled to pay a reduced appeal fee were not fulfilled.
The proprietor did not dispute that the appellant in the present proceedings was the patent attorney firm and that, as such, qualified as a small and medium-sized enterprise (SME) within the meaning of Article 2 of the Commission Recommendation.
However, the proprietor submitted that in cases in which a notice of opposition, and later an appeal, were filed by a patent attorney firm acting as a straw man, in accordance with established EPO practice, i.e. G 4/97, for the purpose of eligibility to pay a reduced appeal fee, the appellant/opponent and the interested party instructing the appellant should be regarded as linked enterprises within the meaning of Article 3(3) of the Commission Recommendation.
The contractual relationship between the opponent/appellant and the interested party instructing the appellant necessarily implied that they were linked enterprises so that the staff headcount and the financial ceilings of both entities should be taken into account in order to assess if the appellant fulfilled the requirements of an SME.
There were strong doubts as to the veracity of the declaration made by the opponent, as it was unlikely that the opposition had been filed by an SME in the light of the invention at stake, particularly the fact that only claim 14, which related to treatments for FSHD, had been opposed.
The appellant’s/opponent’s point of view
The appellant/opponent referred as well to G 4/97 as allowing that a professional representative acting in his own name on behalf of a client could file an opposition. There was no circumvention of the law by abuse of process.
According to the established case law, the burden of proof was on the party alleging that an opposition was inadmissible. In the present case, the proprietor’s objection was solely based on a speculation, namely that the appellant’s/opponent’s client was “overwhelmingly more likely” to be a large entity because the objected subject-matter was directed to a medical use claim.
However, no evidence was filed to support this speculation and thereby that the appellant/opponent was not entitled to a reduced appeal fee. Thus, the appeal was validly filed.
The board’s decision
The patent attorney’s firm is the only appellant in the present proceedings.
The entitlement to pay a reduced appeal fee under specific conditions must be assessed vis-à-vis the entity which has assumed the procedural status of an appellant.
A reduced appeal fee may be paid for an appeal filed by a natural person or an entity referred to in R 6 (4 and 5), i.e. inter alia SMEs as defined in the Commission Recommendation. For this purpose appellants must file a declaration that they are a natural person or an entity covered by R 6(4).
For the board, to assess eligibility for paying a reduced appeal fee, the status of appellant, at the time of filing the notice of appeal, is the only relevant question under Art 2, item 11, RFees and R 6(4), see also point 9 of the EPO Notice.
In the present case, in conformity with the established jurisprudence of the boards set in G 3/97, OJ 1999, 245 and G 4/97, the status of appellant is vested in the patent attorney’s firm. This fact was not disputed by the proprietor, who explicitly acknowledged that the opponent was entitled to file an opposition and an appeal, when asked during the OP before the board.
The status of opponent is a procedural status, which is acquired by any person filing an opposition in compliance with the provisions under Art 99 in conjunction with R 76.
Accordingly, the opponent is exercising its own right as a member of the public to file an opposition, even if a third party (the “principal”) had incited the opponent to file the opposition.
In such a case the opponent cannot be regarded to act on the basis of the principal’s personal entitlement. The question whether the opponent’s acts in accord with the intentions or instructions of the principal is relevant only to the internal relationship between the latter and the opponent, and has no bearing on the opposition proceedings. Accordingly there cannot be another true opponent apart from the formally authorised opponent so that the principal can under no circumstances be treated as a party.
The board considered that the application of the principles set out in the decisions G 3/97 and G 4/97 has a direct impact on the question of eligibility to pay a reduced appeal fee. Indeed the latter depends in this case on whether a straw man opponent may validly acquire the status of opponent/appellant.
With regard to the present case the patent attorney firm has validly acquired the procedural status of opponent and no special reasons were raised, nor does the board see any, to regard the filing of the opposition in the present case as a circumvention of the law by abuse of process as referred to in decisions G 3/97 and G 4/97, i.e. the patent attorney firm is clearly neither acting on behalf of the patent proprietor, nor is it lacking entitlement to act as a European professional representative.
The patent attorney firm was entitled to pay a reduced appeal fee in accordance with Art 2, item 11, RFees and R 6(4).
The decision appears to be correct in law and in fact.
One should not forget that a man of straw acting as opponent for an unnamed “third party” or “principal”, is free to withdraw the opposition at any moment. The “principal” can then not be substituted to the “man of straw”. Whether the man of straw is not abiding by the contractual rules he has possibly accepted vis-à-vis the “principal” is of no relevance to the EPO.
One could also argue that since the opponent does not have a right of disposition over his status as a party, this should be sufficient to allow a firm of patent attorneys to benefit from a reduced appeal fee if it actually is a SME according the valid rules.
I do not see that the EPO will lose money in the long run if there are more oppositions filed by firms of patent attorneys.
The fee differential will not become a further source of revenues for small patent attorney’s firms.
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, but did not succeed.
Filing of an opposition by a man of straw has also some drawbacks.
In T 103/15, the opposition was filed by a man of straw but neither the OD nor the BA did taken into consideration anonymous experimental data.
Furthermore, when filing an opposition as man of straw, do not request postponement of the OP when your “technical expert” cannot be present on the scheduled day!