2.1. Entitlement to file an opposition
2.1.4 Filing of opposition on behalf of a third party – straw man
With regard to the question whether an opposition is inadmissible if the opponent is a "straw man" acting for some other person, the Enlarged Board of Appeal clarified in G 3/97 and G 4/97 (OJ 1999, 245 and 270) that the opponent is the person who fulfils the requirements of Art. 99(1) in conjunction with Art. 100 EPC, R. 55 and 56(1) EPC 1973 (R. 76 and 77(1) EPC). Filing the opposition renders this person formally the legitimate opponent. 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. Such circumvention of the law arises, in particular, if:
- the opponent is acting on behalf of the patent proprietor. According to G 9/93 (OJ 1994, 891), a proprietor cannot oppose his own patent; opposition is an inter partes procedure, so the patentee and opponent must be different persons.
- if the opponent is acting on behalf of a client in the context of activities which, taken as a whole, are typically associated with professional representatives, without possessing the necessary qualifications (Art. 134 EPC 1973). This would be the case if a person not entitled to act as a professional representative were acting on a client's behalf and carrying out all the activities typically carried out by professional representatives, while himself assuming the role of a party in order to circumvent the prohibition on his acting as a professional representative.
However, circumvention of the law by abuse of process does not arise merely because a professional representative files an opposition in his own name on behalf of a client. In any case, the principle of the free evaluation of evidence applies. The burden of proof lies with the person alleging that the opposition is inadmissible. The deciding body has to be satisfied, on the basis of clear and convincing evidence, that such abuse is occurring.
Previously relevant case law (see e.g. T 10/82, OJ 1983, 407; T 635/88, OJ 1993, 608; T 25/85, OJ 1996, 81; T 289/91, OJ 1994, 649; T 590/93, OJ 1995, 337; T 798/93, OJ 1997, 363) has been superseded by G 3/97 and G 4/97.
In T 2365/11 the notice of opposition was filed by a natural person; however, in a submission (to indicate the language which would be used during the oral proceedings) the opponent's attorney had referred to a certain company as the opponent. The board held that the opponent was clearly identified in the notice of opposition. Whether or not the correctly identified opponent was acting on behalf of a third person did not affect the admissibility of the opposition. The situations described in G 3/97 (order 1(b) and (c)) as circumvention of the law by abuse of process could be excluded in the present case.
In parallel cases T 1553/06 and T 2/09, involving the same parties but different patents, the board examined whether the parties and their representatives had worked together on a test case in order to obtain answers from the EPO to specific legal questions regarding prior art. Following the principles set out in G 9/93 and G 3/97, the board emphasised the contentious nature of opposition proceedings as a necessary condition for the admissibility of the opposition and examined whether an abuse of procedure, i.e. because the opponent acted on behalf of the patent proprietor ("straw man"), rendered the opposition inadmissible. The board could not find a circumvention of the law by abuse of process as it saw no reason to doubt the parties' submissions that the opponent was not bound by any instructions from the patentee or the study committee. An opposition filed within the framework of a test case was not inadmissible for that sole reason, provided that the prosecution of the proceedings thereby instituted was contentious because the parties defended mainly opposing positions.
In T 1839/18 the board noted that labelling an opponent as a "straw man" was misguided, as no interest in raising an opposition was necessary or needed to be proven, and consequently any argument based on an opponent's alleged lack of "real interest" had to fail.
- T 846/22
Abstract
In T 846/22 the respondent (patent proprietor) questioned the status of the appellant as a legal person in the context of Art. 99(1) EPC, according to which "any person may give notice to the European Patent Office of opposition [ ... ] in accordance with the Implementing Regulations". "Any person" is to be interpreted in line with Art. 58 EPC as "any natural or legal person, or any body equivalent to a legal person by virtue of the law governing it" (G 3/99, OJ 2002, 347; G 1/13, OJ 2015, 42).
The respondent had submitted that the appellant, a UK company, had been a "dormant company" under UK law at the time of filing the opposition and had never changed this status. The respondent argued that this meant that the appellant was not entitled to conduct any business and could not be equated to a legal person.
The board noted that the status of a legal person as such, i.e. the question as to whether they had the capacity to sue or be sued, was a matter of national law. The right to bring opposition proceedings, to take part in such proceedings, to file an appeal and to take part in appeal proceedings was, by contrast, a matter of procedural law governed by the EPC (G 1/13, point 5.3 of the Reasons with reference to G 3/97, OJ 1999, 245, point 2.1 of the Reasons). Hence, it had to be established whether the appellant, in particular at the time of filing the notice of opposition and the notice of appeal, had the status of a legal person.
The board referred to Section 1169 of the (UK) Companies Act 2006, according to which a company is dormant during any period in which it has no significant accounting transactions. Although inactive, a dormant company was not struck off, but remained on the Companies House register. This meant that a dormant company maintained the status of a legal person. The board thus agreed with the conclusion drawn to this effect in T 184/11.
It followed therefore that the appellant had the status of a legal person at the time of filing the notice of opposition and throughout the opposition and appeal proceedings. The respondent's argument in this respect was therefore not convincing.
Whether the appellant had engaged in transactions which could have led to the loss of its dormant status went beyond the assessment of its status as a legal person. The assessment of potential financial relationships between a dormant company and an appointed representative was of no relevance to establishing the legal status of the company as a legal person either. Moreover, the opponent's representative was appointed in accordance with the requirements of the EPC. Hence, there was no reason for the board to doubt that the representative was duly authorised. The remaining provisions under the EPC for the admissibility of the opposition and appeal, including the payment of the relevant fees, were also complied with.
As regards the contention that the appellant had been acting on behalf of a third party with the intention of avoiding any liability for possible costs apportioned to the appellant under Art. 104 EPC, the board noted that acting on behalf of a third party could not be seen as a circumvention of the law unless further circumstances were involved and there was no requirement under the EPC that a party be equipped with sufficient financial means to comply with a merely hypothetical costs order. Moreover, the EPC did not offer the patent proprietor any kind of guarantee that an opponent would be able in fact to reimburse costs awarded against them (G 3/97, point 3.2.6 of the Reasons).
For these reasons, the board did not see any abuse of procedure by the appellant which might render the opposition and/or the appeal inadmissible.
The board thus refused the respondent's requests that the decision under appeal be set aside and the opposition be held inadmissible or that the appeal be held inadmissible.