2.1. Entitlement to file an opposition
2.1.5 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 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). The EPC does not specify any further formal requirements to be met by the opponent. 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 their 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 they themselves assumed the role of a party in order to circumvent the prohibition on their 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 their 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OJ 1993, 608; T 25/85, OJ 1996, 81; T 289/91, OJ 1994, 649; T 590/93, OJ 1995, 337; T 798/93, OJ 1997, 363) has been superseded by G 3/97 and G 4/97.
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. 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 (T 2095/21, see also T 2365/11). 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.
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 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 T 84/19 the issue at stake was whether the filing of the opposition/appeal by a straw man (the patent attorney firm) constituted a circumvention of the eligibility criteria to pay a reduced appeal fee. The board had no doubts as to the veracity of the appellant's original SME declaration and found the filing of the opposition and the appeal by the patent attorney firm constituted no circumvention of the law regarding the entitlement to pay a reduced appeal fee. The board further disagreed that decision T 1839/18 availed the argument that companies employing "straw men" to file their oppositions/appeals could abuse the provisions relating to entitlement to pay a reduced appeal fee. See also chapter V.A.2.5.4c) "Reduced fee for appeal filed by a natural person or a particular entity". The Rules relating to Fees are discussed further under chapter III.U.
In T 846/22 the respondent contended 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 (G 3/97) and found 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). On the apportionment of costs, see chapter III.R.
- T 1469/24
In T 1469/24, the appellant-proprietor contested the admissibility of the opposition, arguing that the opponent had not been correctly identified, so that the requirements of Art. 99(1) and R. 76(2) EPC were not met. They argued that the opponent, Mr N.N., was the representative of one of the subsidiaries of the group of companies against which the proprietor had initiated infringement proceedings before the UPC, and which, in turn, had initiated a central revocation action against the contested patent at the UPC in reaction to the infringement proceedings. Mr N.N. had therefore not been the real opponent, but had acted as a straw man for the group. The real opponent thus 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. Consequently, the use of a straw man in this case was a clear attempt to circumvent the law by abuse of due process. In addition, according to the proprietor, the straw man, being a patent attorney, did not have a legitimate interest in the outcome of the opposition proceedings.
The board observed that, in an opposition in which the person named as opponent is acting on behalf of a third party, decision G 3/97 identifies two cases where the law is circumvented by abuse of process: 1) if the opponent is acting on behalf of the proprietor, 2) 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 relevant qualifications required by Art. 134 EPC. The board found that neither of these cases applied here..
The board indicated it was aware that these two cases did not constitute an exhaustive list. Nevertheless, G 3/97 sets out some further considerations as to what is not considered a circumvention of the law by abuse of process. For instance, in point 3.2.1 of the Reasons, the Enlarged Board stated 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". In the present case, even if the group of companies involved in the infringement action had actually avoided being identified, this would not have constituted an attempt to circumvent the law by abuse of due process within the meaning of decision G 3/97..
Moreover, the board recalled the Enlarged Board’s observation in G 3/97 that since the EPC legislator explicitly designed the opposition procedure as a legal remedy in the public interest, which is open to any person, it cannot be required that the opponent has an interest in the revocation of the patent. Consequently, the board held that it was irrelevant in the present case whether the opponent Mr N.N. had a genuine personal interest in the outcome of the opposition proceedings.
The board found that, while G 3/97 and G 4/97 may not explicitly state that any opposition by a straw man is admissible, they essentially conclude that an 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. In particular, the Enlarged Board held that an abuse of process needs not be assumed in those cases where the third party instructing the presumed straw man could have filed an opposition itself. The board recalled that G 3/97 and G 4/97 do not state that the opposition division would be required to investigate ex officio whether any of the identified situations that could be considered an abuse of process might be present and concealed by the formally named opponent. On the contrary, the burden of proof is borne by the person alleging that the opposition is inadmissible. The board did not see any such evidence in the file.
The board concluded that the requirements of Art. 99(1) and R. 76(2) EPC were met and that the appeal must be dismissed.
- T 1403/24
In T 1403/24 the appellant (patent proprietor) contested the admissibility of the opposition filed by opponent 2. It argued that opponent 2 was acting on behalf of opponent 1 or opponent 3. In the appellant’s view, this followed from the citation of document D24 in the notice of opposition by opponent 2, because D24 concerned the non-public infringement complaint by the patent proprietor against opponent 1 and opponent 3 in Germany. Moreover, opponent 2 had previously represented a member of the same company group to which opponent 1 belonged in the opposition against the parent patent. Furthermore, the notices of opposition filed on the same day by opponent 2 and opponent 3 included large sections of identical language. As explained in T 9/00, it would be an abuse of procedure for one opponent to file two oppositions. Therefore, according to the appellant, the filing of the opposition by opponent 2 on behalf of opponent 1 or opponent 3 represented an attempt to circumvent the law, which was in view of the considerations in G 3/97 and G 4/97 not admissible.
The board observed that in contrast to the situation in T 9/00, opponent 2 was a distinct legal person from opponent 1 and opponent 3. According to decisions G 3/97 and G 4/97, an opposition filed on behalf of a third party was inadmissible if the involvement of the opponent was to be regarded as circumventing the law by abuse of process, in particular if the opponent was acting on behalf of the patent proprietor or on behalf of a client without possessing the relevant qualifications required by Art. 134 EPC. The decisions G 3/97 and G 4/97 explicitly concluded that a circumvention of the law by abuse of process did not arise purely because a professional representative was acting in its own name on behalf of a client and that the burden of proof regarding the circumvention of the law by abuse of process was to be borne by the party alleging that the opposition was inadmissible.
The board held that, given the shared interest among opponents in revoking the patent, it was not uncommon for them to exchange documents and coordinate their submissions during opposition proceedings. Therefore, the citation of document D24 by opponent 2, and the presence of similar or identical passages in the notices of opposition filed by opponents 2 and 3, did not establish that opponent 2 acted on behalf of opponent 1 or opponent 3. The appellant had thus not provided convincing evidence that the opposition filed in the name of opponent 2 was filed on behalf of opponent 1 or opponent 3 to circumvent the law by abuse of process. Accordingly, the board confirmed the admissibility of the opposition filed by opponent 2.