Straw man


If one of your competitors has applied for a UK or European patent that you fear may have the potential to cause you problems, it is possible to take pre-emptive action, whilst the application is still pending, by way of filing “third party observations”.

The procedure involves writing to the UKIPO or EPO explaining why a patent shouldn’t be granted for the invention, usually because the invention is believed to be lacking in novelty and/or inventive step.  The letter usually contains a written statement by the third party explaining the reasons why a patent shouldn’t be granted, and can rely on prior art already under consideration by the relevant IPO, or indeed any new prior art identified by the third party.  The third party does not become a “party to the proceedings”, however, and the IPO is under no obligation to respond to the third party or to include the arguments presented in an Office Action to the Applicant. However, the applicant will be sent a copy of the observations, and if deemed to be sufficiently relevant, will usually be asked to rebut them.

The other option that is available, for European patents only, is the possibility of filing an Opposition once the European patent has been granted.  An Opposition must be filed within an inextensible period of nine-months from the date that the grant of the patent in question is mentioned in the European Patents Bulletin.  The main advantage of an Opposition, compared to pre-grant third party observations, is that the Opponent does become a party to the proceedings, which means that the Opponent will be able to play a part, including attending Oral Proceedings, in the decision regarding whether the patent should be upheld.

There are three possible outcomes of an Opposition, namely that the European patent is upheld un-amended, that it is upheld in an amended form, or that it is revoked.  Because revocation takes place centrally, the Opposition route avoids the necessity to apply for revocation in each of the countries in which the European patent has been validated.  The “central attack” facet of the Opposition procedure, and the fact that the Opponent has locus standi makes it a particularly attractive option.

Third party observations and oppositions can be filed by “any person”, which means that they can, in effect, be anonymous.  A so-called “straw man” opposition usually involves a person opposing on behalf of somebody else – to conceal the identity of the real opponent.  A straw man opposition, or anonymous third party observations are particularly useful if you wish to oppose one of your customer’s or supplier’s patents/patent applications.  Crucially, a straw man opposition cannot be used to oppose one’s own patent.

If, on the other hand, you are on the receiving end of third party observations or an opposition, we can help you to defend your position.  Moreover, even if your patent/application has been struck-out, we can offer advice in relation to converting the refused European patent or application into various national rights, such as utility models and designs.

At Hutchinson IP we can advise and represent clients in relation to third party observations and oppositions.  We also offer “straw man” services or can represent you directly.  Please contact us for further advice and prices.