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EPO Oppositions by unidentified party

EPO Oppositions by unidentified party

01/05/99

Recent decisions of the Enlarged Boards of Appeal (G3/97 and G4/97) have dealt with the question of the admissibility of an opposition by a "straw man", i.e. one acting on behalf of an unidentified third party. In both cases, the patent proprietors had argued that a person acting on behalf of a (possibly unidentified) third party is not a ‘true’ opponent and it had previously been the practice of the EPO not to allow oppositions on behalf of anonymous opponents.

However, the Boards have now decided that an opposition filed on behalf of a third party complies with the provisions on filing oppositions and only in special circumstances would an investigation into the admissibility of the opposition be justifiable.

The Boards stated that whether or not the opponent is acting under the instructions or influence of a third party (who can remain unidentified) has no bearing on the opposition proceedings since the opponent is acting in his own right as a member of the public to file an opposition: Article 99(1) EPC states that opposition is open to "any person".

These decisions therefore open the way for the filing of an opposition by a "straw man". However, some restrictions remain in that the use of a straw man as an opponent in an attempt to circumvent the law by abuse of process would not be allowed and would render the opposition inadmissible.

Examples of such circumstances are:

(i) if a patent proprietor employs a straw man in an attempt to oppose his own patent contrary to a previous Enlarged Board of Appeal decision G9/93; and

(ii) if a person not entitled to act as a professional representative before the EPO files and prosecutes an opposition in the manner of a professional representative on behalf of another in order to circumvent the law on representation.

However, with regard to (ii) above circumvention of the law does not arise purely because a professional representative acts in his own name on behalf of a client, nor does it occur when an opponent with either a residence or principal place of business in one of the EPC contracting states acts on behalf of a third party who does not meet this requirement so long as the opponent is not acting in the manner of a professional representative.

If you would like further information concerning a particular circumstance please do not hesitate to contact us.

May 1999