Filing An Opposition As A Straw Man: The Pros And Cons

• Published date: 15 June 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Mathys & Squire
• Author: Mr Andrew White and Conor McGuinness

European patents can be opposed by 'any person' within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin. The phrase 'any person' includes anyone other than the patent proprietor themselves (G 3/93, G 3/97). Even a person listed as an inventor on a particular patent can oppose that patent (T 3/06).

In a recent appeal at the European Patent Office (EPO) (T 1839/18), the patent proprietor argued that the opponent did not have a legitimate interest in the outcome of the opposition and, therefore, the opposition should be found inadmissible. However, the EPO reaffirmed the principle of 'any person' oppositions, stating in the decision, among other things, that any person who starts opposition proceedings provides three main contributions to society at large:

1. Undeserved monopolies may be revoked or limited to their due scope;
2. industrial development is fostered in that the direction of innovation is not led astray by wrongfully granted monopolies and
3. legal certainty is enhanced.

Given that the opponent can be 'any person', this allows potential opponents to hide their true identity by filing the opposition as a 'straw man'. Filing an opposition as a 'straw man' can have a number of advantages and disadvantages.

'Straw man' opposition advantages

A potential opponent may wish to avoid alerting the patent proprietor to their interest in the patent potential infringement - for example, the potential opponent may wish to avoid bringing their activities to the attention of the proprietor.

Another reason may be to avoid upsetting an amicable relationship with the proprietor - for example, the potential opponent may be a business partner of the patent proprietor or even a licensee of one or more of the proprietor's patents.

Additionally, a potential opponent may wish to avoid submitting publicly available arguments regarding, for example, particular interpretations of the patent. In this way, a potential opponent may avoid issues arising from prosecution history estoppel because the arguments filed in the opposition would not be attributed to the company behind the 'straw man'.

'Straw man' opposition disadvantages

In one example, a 'straw man' opponent requested the opposition proceedings to be accelerated to provide certainty regarding the fate of the opposed patent before the company behind the 'straw man' invested large sums of money into an area which...