A guide to ‘straw person’ oppositions

In European patent oppositions, the term ‘straw person’ is used to describe a person, natural or legal, who files an opposition against a patent on behalf of a third party, with the real opponent remaining anonymous throughout the proceedings.

It was clarified, in the European Patent Office’s (EPO) decisions G 3/97 and G 4/97, that such oppositions were admissible provided there was no circumvention of the law by an abuse of process. Examples of such abuses would be the patent owner opposing its own patent, or someone acting as a ‘straw person’ in order to circumvent the requirements for qualification to act as a professional representative before the EPO.

A ‘straw person’ opposition is a sensible route to take in circumstances where the hidden opponent doesn’t want to alert the patent owner to its concerns about the patent. For instance, the patentee may be a customer or a supplier of the opponent, or the opponent may simply want to avoid alerting the patentee that it is potentially infringing or planning to infringe at a later date.

Different representatives have different approaches to how they file oppositions as a ‘straw person’. Some file the opposition in the name of a legal entity which is set up solely to act in this role. However, once an opposition has been filed, it is not possible to freely transfer opponent status to another party.

An opposition can be transferred to a third party only as part of the opponent’s business assets together with the assets in the interests of which the opposition was filed. This can be extremely difficult to establish.

Limiting the risks

One way to avoid the risks associated with any later attempt to transfer opponent status, is to file the opposition in the names of at least one partner and one non-partner patent attorney (both European patent attorneys) acting together with the firm as a further opponent (which is an identifiable legal entity as an LLP). The firm is also named as the representative association.

This is because oppositions and subsequent appeals can extend over many years. The naming of multiple opponents means that in the event of death, change of employment, takeover or future conflict of interest, there should always be the possibility of carrying on the opposition. There is no extra cost associated with this approach as joint opponents acting together only need to pay a single opposition fee (G 3/99).