Le blog du droit européen des brevets has reported on two recent (still to be published) decisions on a test case built by two Dutch companies working together in the study committee for intellectual property of VNO-NCW, the Confederation of Netherlands Industry and Employers. The decisions are quite voluminous and cannot possibly be dealt with in a single post.
A first aspect, which is discussed in both decisions, is related to the very fact that the oppositions opposed two parties that were not really opposed to each other. Can such proceedings be considered to be contentious?
Here is what the Board had to say on this topic:
The case law of the Enlarged Board of Appeal (EBA)
[1.1] […] For the board it follows from the decisions of the EBA delivered in cases G 9/93 and G 3/97 that it is a condition for an opposition to be admissible that the opposition proceedings thereby instituted are contentious.
In G 9/93 [1] the EBA said:
... [I]n G 9/91 and G 10/91 ... the EBA held that in view of their special post-grant character, opposition proceedings under the EPC are in principle to be considered as contentious proceedings between parties normally representing opposing interests. (emphasis added)
Against this backdrop the EBA judged that:
the patent proprietor is not covered by the term “any person” in A 99(1) EPC [1973] and is therefore not entitled to oppose his own patent under that provision. (see ibid., at point 3 in fine).
The EBA’s ruling in G 3/97 dealt inter alia with the question of whether an opposition filed by an indirect representative (“straw man”) was admissible. The EBA decided (see the order) that:
1(a): An opposition is not inadmissible purely because the person named as opponent according to R 55(a) EPC [1973] is acting on behalf of a third party.1(b): Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process.1(c): Such a circumvention of the law arises, in particular, if: the opponent is acting on behalf of the patent proprietor … (emphasis added)
[In] G 3/97 [4.1] the EBA explained in this respect that:
Attention has already been drawn to the decision in G 9/93 … Here, it was decided that the patent proprietor is not entitled to oppose his own patent, since opposition proceedings are contentious and the opponent must therefore be a person other than the patent proprietor. This in itself requires no further comment. However, if the patent proprietor employs a straw man, then the latter, too, is representing the patent proprietor’s interests. The identification of the straw man as opponent according to Rule 55(a) EPC [l9731 does nothing to alter the fact that the person who is formally a party to the proceedings is on the patent proprietor’s side. From this it follows that in this situation, too, the proceedings are not contentious. The employment of the straw man merely serves to conceal this circumstance and to circumvent the legal consequences arising from it. The action of the opponent on behalf of the patent proprietor therefore renders the opposition inadmissible. (emphases added)
The present board cited the above case law of the EBA in its communication annexed to the summons to oral proceedings (OPs). It would add what the EBA said in G 3/97 [5] on proof-related issues:
The burden of proof for a straw man objection is to be borne by the person raising the issue, i.e. the patent proprietor or, in the case of an objection by the Office of its own motion, the relevant EPO department.
Regarding the standard to be applied in assessing evidence, it must be remembered that any person is entitled to file an opposition. Withholding this legal entitlement from anyone requires a particular justification, which cannot be based on a mere balance of probabilities. Instead, before considering an . opposition to be inadmissible, the deciding body has to be satisfied, on the basis of clear and convincing evidence, that the law has indeed been circumvented in an abusive manner by the employment of a straw man.
The opponent’s assertions
[1.2] In its reply of 11 March 2011 to the board’s communication, the opponent relied on the following arguments to establish the admissibility of the opposition […]:
- that oppositions were “contentious proceedings” was not a general principle,
- the parties satisfied the criteria for “contentious proceedings”,
- VNO-NCW (the Confederation of Netherlands Industry and Employers) did not control either party,
- co-operation between parties’ representatives did not make proceedings non-contentious, -
- there would be undesirable consequences from a ruling of inadmissibility.
Analysis
[1.3] On the basis of the parties’ submissions, the board cannot find a circumvention of the law by abuse of process in the sense mentioned above, i.e. because the opponent acted on behalf of the patent proprietor.
In their submissions in reply to the board’s communication annexed to the summons, both in writing and in the OPs before the board, the parties admitted that they co-operated on a test case that arose out of a discussion in the study committee for intellectual property of VNO-NCW. It was only by these submissions that the parties informed the board of the test case. They may have conveyed pertinent information to the first instance as long ago as in 1998, as they contend. Yet the board, in its preparation of the file for the OPs, which is reflected in the communication annexed to the summons, found no hint of the parties having provided express information to the EPO that this was a test case. Rather, as follows from the facts enumerated in said communication under the section dealing with the admissibility of the opposition, the opposite would have to be concluded from the file as it stood at that time.
As for the prosecution of the test case, the parties agreed that the opponent was not bound by any instructions from either the patentee or the study committee. The board has no reason to cast doubt on these submissions. The fact that a test case was created does not necessarily imply that the various submissions made as part of it must have been under the control of one party (or of both parties jointly).
A further question is whether the opposition proceedings are not contentious because of the very fact that the parties defended their positions within the framework of a test case in order to obtain answers from the board to specific legal questions, i.e. whether and under what conditions disclosures via the Internet constitute prior art within the meaning of A 54 EPC 1973.
The board is of the opinion that the prosecution of the opposition proceedings was contentious, as required by G 3/97, because the parties defended mainly opposing positions. The fact that the parties defended their positions within the framework of a test case and will obtain answers from the board to certain specific legal questions is immaterial in this regard. Therefore the opponent’s challenge to the soundness of the requirement of contentious proceedings established in G 3/97 need not be afforded any consideration.
From the above analysis the board concludes that the opposition is admissible. […]
To download the whole decision or have a look at the file wrapper, click here.
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