T 2095/21 - Strawman opponent and Art.15(9) RPBA

Key points

• The decision was taken on 10.10.20213 and issued in writing on 28.03.2024. The public online file shows no items between 13.10.2024  2023(the minutes) and 28.03.2024 (the decision) as of the date of writing (02.04.2024). Hence, no Communication to the parties under Art. 15(9) RPB (to be issued at the end of the three-month period, i.e. by 10.01.2024) is visible. Was the President of the Boards informed (as is required under amended Art. 15(9), which entered into force on 01.01.01.2024)?  
• Note, possibly the delay was for good reason in the case. And possibly the parties were informed with a notification that is in the non-public part of the file. 
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• The opponent is a patent attorney firm. 
• "The appellant [proprietor] submitted that the representative firm was no longer the legitimate opponent because during the oral proceedings before the opposition division they openly admitted that they acted on behalf of a third party. This open admittance not only constituted clear evidence that the opposition was inadmissible, but also created confusion as to the opponent's actual identity. " 
• " The board does not agree with this argumentation. As clarified by decisions G 3/97 and G 4/97 an opposition is not inadmissible purely because the entity named as opponent is acting on behalf of a third party."
• "as it was clarified in G 3/97 and G 4/97 (Headnote 1(d)): "...a circumvention of the law by abuse of process does not arise purely because: a professional representative is acting in his own name on behalf of a client...". The filing of an opposition by a straw man is not as such an abuse of process, but it would require additional facts and evidence, as for instance if it were shown that the representative was acting on behalf of the patent proprietor, or was lacking entitlement to act as a European professional representative. "
•  The opposition was therefore admissibly filed (Article 99(1) in conjunction with Rules 76 and 77 EPC).

EPO 

The link to the decision and (an extract of) the text of the decision are provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t212095eu1

Admissibility of the opposition (Article 99(1) in conjunction with Rules 76 and 77 EPC)

1. With their statement of grounds of appeal, the appellant raised an objection to the admissibility of the opposition. It was submitted that the opposition filed in the name of Bardehle Pagenberg Partnerschaft mbB constituted a circumvention of the law by abuse of process in the sense of decisions G 3/97 (OJ EPO 1999, 245) and G 4/97 (OJ 1999, 270). The appellant submitted that the representative firm was no longer the legitimate opponent because during the oral proceedings before the opposition division they openly admitted that they acted on behalf of a third party. This open admittance not only constituted clear evidence that the opposition was inadmissible, but also created confusion as to the opponent's actual identity. Whereas the motives for filing an opposition were irrelevant, pursuant to Article 99(1) EPC the opponent's identity was of fundamental procedural importance, and any doubt about it resulted in the inadmissibility of the opposition.

2. The board does not agree with this argumentation. As clarified by decisions G 3/97 and G 4/97 an opposition is not inadmissible purely because the entity named as opponent is acting on behalf of a third party. An opponent status is a procedural status and the basis on which it is obtained is a matter of procedural law, i.e. any person, who files an opposition in compliance with the provisions under Article 99 EPC in conjunction with Rules 76 and 77 EPC, acquires the status of an opponent. 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. On the same vein, 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.

3. In addition, as it was clarified in G 3/97 and G 4/97 (Headnote 1(d)): "...a circumvention of the law by abuse of process does not arise purely because: a professional representative is acting in his own name on behalf of a client...". The filing of an opposition by a straw man is not as such an abuse of process, but it would require additional facts and evidence, as for instance if it were shown that the representative was acting on behalf of the patent proprietor, or was lacking entitlement to act as a European professional representative. None of these situations appear to be present in this case. Nor can an opponent cease to be the legitimate opponent once the existence of a client instructing the representative acting as opponent is confirmed or identified, as the appellant argued. The opponent does not have a right of disposition over his status as a party. If he has met the requirements for an admissible opposition, he is an opponent and remains such until the end of the proceedings or of his involvement in them (cf. G 3/97 and G 4/97, Reasons 2.2). Accordingly the internal legal relationship between the opponent and any instructing party has no legal significance for external purposes (see also T 84/19, Reasons 5.3 issued by the present board in a different composition).

4. Thus in the present case Bardehle Pagenberg Partnerschaft mbB was the true opponent having acquired the relevant procedural status and there cannot be another true opponent apart from the formally authorised one (cf. G 3/97, Reasons 2.1 and 2.2).