T 0384/15 - Intervention and straw man opponent

Key points

• The opponent was a straw man, intervention was later filed by two legal entities (within the same company). The patentee protested that the opponent (straw man) was already acting for the same company as now intervening. The Board decides that the interventions are admissible.
• " The board agrees with the proprietor that an intervener must be a different party to the opponent in order to be a "third party" within the meaning of Article 105(1) EPC. However, the board considers that there is no question that the interveners are "third parties", i.e. different legal entities, with respect to the opponent Santarelli SA whether or not one of Bose GmbH and Bose Limited is the principal instructing Santarelli SA." 
• "In the board's view, the same situation exists in the present case [as in T 305/08, in which case the opponent-appellant OI was alleged to be the patent department (although had an entirely different name) acting for interveners OII and OIII] . The respondent has produced evidence suggesting a relationship between the appellant and the interveners, but no proof, as admitted by the respondent, that Santarelli SA was acting directly on behalf of either Bose GmbH or Bose Limited. Further, the representatives for the appellant and the interveners expressly denied that this was the case."

EPO T 0384/15 - link

Reasons for the Decision

1. Admissibility of the opposition and the interventions (cf. respondent's requests 1.1 and 1.3)

1.1 The respondent argued that there was credible evidence that the opponent Santarelli SA was acting on behalf of one or more divisions of Bose Corporation, but had concealed this relationship. Further, all divisions of Bose, including the assumed infringers and interveners Bose GmbH and Bose Limited, were legally inextricably linked to the Bose Corporation. A requirement for an admissible intervention is that it be filed by a third party. By having chosen to protect its anonymity by filing the opposition in the name of a straw man, the true opponent has availed itself of the possibility of also intervening in the opposition proceedings because it is impossible, at least at first glance, for the EPO or any other party to ascertain whether the interveners are third parties or not. This constituted an abuse of process allowing circumvention of the law as laid out in Article 105(1) EPC. This anonymity also allowed Bose to pick and choose who they might subsequently wish to present as the true opponent, depending on circumstances, which also resulted in an abuse of process. As a consequence, the opposition filed in the name of Santarelli SA must be deemed inadmissible ex tunc. In turn, this meant that there were no pending opposition proceedings when the notices of intervention were filed by Bose GmbH and Bose Limited respectively. It followed that the interventions were also inadmissible.

1.2 The appellant further argued that all divisions, companies and legal entities within the Bose Corporation should be regarded as a group of joint opponents (cf. G 3/99, OJ EPO 2002, 347) with Santarelli SA acting as a common representative. On that basis, Bose GmbH (and by implication Bose Limited) would be one of the joint opponents and thus not able to intervene as a third party.

1.3 The board agrees with the proprietor that an intervener must be a different party to the opponent in order to be a "third party" within the meaning of Article 105(1) EPC. However, the board considers that there is no question that the interveners are "third parties", i.e. different legal entities, with respect to the opponent Santarelli SA whether or not one of Bose GmbH and Bose Limited is the principal instructing Santarelli SA. As stated in G 3/97 (OJ EPO 1999, 245), point 2.1 of the reasons:

"The status of opponent is a procedural status and the basis on which it is obtained is a matter of procedural law. The EPC addresses this in Article 99(1) in conjunction with Article 100, Rules 55 and 56(1) EPC. On this basis, the opponent is the person who fulfils the requirements of the EPC for filing an opposition; in particular, the person must be identifiable (see Rule 55(a) EPC). The EPC does not specify any further formal requirements to be met by the opponent. A person who fulfils the said requirements becomes a party to the opposition proceedings (Article 99(4) EPC). In these proceedings, only his acts are relevant. A third party (the "principal") who has incited the opponent to file the opposition cannot perform any procedural acts. The question whether the opponent's acts accord with the intentions or instructions of the principal is relevant only to the internal relationship between the latter and the opponent, and has no bearing on the opposition proceedings." (board's underlining).

1.4 Although the interveners are "third parties", it still has to be considered whether, by invoking Article 105 EPC, there has been an attempt by the opponent and/or interveners to circumvent the law by abuse of process and thus whether there are grounds for holding the opposition and/or interventions inadmissible.

1.5 In decision T 305/08, the opponent-appellant OI was alleged to be the patent department (although had an entirely different name) acting for interveners OII and OIII. The board of appeal in that case noted the evidence which appeared to suggest that OII and OIII belonged to the same group of companies as OI, but found that there was no attempt to circumvent the law by abuse of process. In this respect, the interveners were quite clearly distinct legal entities and were adhering to due process by filing interventions which was only possible by the actions of the respondent-proprietor against them (cf. point 1.5.8 of the reasons).

1.6 In the board's view, the same situation exists in the present case. The respondent has produced evidence suggesting a relationship between the appellant and the interveners, but no proof, as admitted by the respondent, that Santarelli SA was acting directly on behalf of either Bose GmbH or Bose Limited. Further, the representatives for the appellant and the interveners expressly denied that this was the case.

1.7 The argument that it is impossible for either the EPO or the proprietor to determine whether the interveners are third parties or not is here not relevant, since the board is satisfied that in the present case the interveners are third parties in the sense of being separate legal entities and not being the principal behind the opponent.

1.8 The argument that the anonymity created by using a straw man allowed Bose to pick and choose who they might subsequently wish to present as the true opponent, depending on circumstances, is also not convincing. In the present case, neither Bose GmbH nor Bose Limited were apparently involved when the opposition was filed. Bose has not presented anyone as the "true opponent", and indeed has had no need to do so.

1.9 The argument that all divisions, companies and legal entities within the Bose Corporation should be regarded as a group of joint opponents (cf. G 3/99) with Santarelli SA acting as a common representative is not convincing either. The opponent in this case is the legal entity which filed the opposition (Santarelli SA). There is no request by either Santarelli SA or Bose GmbH and Bose Limited that the oppositions should be considered as joint oppositions and therefore no basis for considering them as such.

1.10 The other requirements set out in Articles 99(1) and 105(1) EPC and Rule 77(1) EPC being met, which was not contested by the respondent, the board concludes that the opposition of Santarelli SA and the interventions by Bose GmbH and Bose Limited are admissible.

2. Party status of the interveners

The interveners are treated as opponents in these opposition appeal proceedings (cf. Article 105 EPC).

3. The respondent's request for referral of a question to the Enlarged Board of Appeal (cf. respondent's request 1.2)

3.1 The appellant requested, to the extent that the board does not deem Santarelli SA's opposition inadmissible, that the following question be referred to the Enlarged Board of Appeal:

"If evidence clearly indicates that a strawman opponent is acting on behalf of a party who intervenes in opposition proceedings (Art. 105 EPC), is the involvement of the opponent to be regarded as circumventing the law by abuse of procedure (cf. G 3/97 and G 4/97 [OJ EPO 1999, 245 and 270)]), the consequence of which being that the opposition is inadmissible?".

3.2 For the reasons given above (cf. points 1.6 and 1.7), the board has concluded that the opponent, even if a strawman, is not acting on behalf of the interveners. Consequently, the board does not need an answer to this question to decide the case. The request for referral is therefore refused.

4. Request of the respondent for remittal to the department of first instance (cf. respondent's request 1.4)

4.1 In the case that the board deems the interventions to be admissible, the respondent requested that the case be admitted to the first instance to have all new grounds, facts and evidence examined in order that they be in a position to defend the patent before two instances of jurisdiction.

4.2 In accordance with decision G 1/94 (OJ EPO 1994, 787), "in application of what has been stated by the Enlarged Board in case G 10/91 [OJ EPO 1993, 420] for the exceptional situation of the introduction of new grounds in ordinary appeal proceedings, if a fresh ground for opposition is raised by the intervener, the case should be remitted to the first instance for further prosecution, unless special reasons present themselves for doing otherwise, for example when the Patentee himself does not wish the case to be remitted".

4.3 As regards the fresh ground for opposition under Article 100(c) EPC, the respondent stated that it did not wish this ground to be discussed in these appeal proceedings. Further, the respondent argued that the normal sequence of examination was to determine compliance with Articles 83 and 123(2) EPC (cf. the grounds for opposition pursuant to Articles 100(b) and 100(c) EPC) before examining for novelty and inventive step. It followed that the case should be remitted with no discussion of the ground for opposition pursuant to Article 100(a) EPC.

4.4 The board agreed with the respondent that there were no special reasons not to remit the case in accordance with G 1/94 as regards the ground for opposition pursuant to Article 100(c) EPC. However, that did not mean that the other grounds for opposition, in particular Article 100(a) EPC, could not be discussed insofar as being within the scope of the opponent's case presented during the opposition proceedings and decided on by the opposition division. In any case, the respondent considered that claim 1 as granted complied with Articles 83 and 123(2) EPC, so that there was nothing illogical in discussing novelty and/or inventive step within the framework of the original opposition.

4.5 The request for remittal of the case was therefore refused.

5. Ground for opposition pursuant to Article 100(a) EPC (cf. respondent's request 1.5)

5.1 Claim 1 as granted - novelty

[...]

8. Conclusion

As there is no allowable request, the patent must be revoked.

9. Request for reimbursement of the appeal fee by the first intervener

9.1 The first intervener Bose GmbH has paid both the opposition fee and the appeal fee. At the same time, it requests reimbursement of the appeal fee, citing G 3/04 (OJ EPO 2006, 118).

9.2 In accordance with G 3/04 (cf. point 11 of the reasons), a party which intervenes during opposition appeal proceedings cannot have the status of an appellant. There is therefore no legal basis to pay an appeal fee. The appeal fee is therefore to be reimbursed.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

3. The appeal fee paid by the first intervener is reimbursed.