Attacking a UK Patent using a 'straw man'

In the UK and at the European Patent Office, there is a general principle that it is in the public interest that invalid monopoly rights are not maintained. As such, revocation proceedings are seen as being prosecuted in the public interest and not merely as contentious proceedings between two parties. This has resulted in the allowance of patent revocation proceedings using ‘straw man’ litigants to conceal the identity of the real instigator of the proceedings.

For example, in the UK courts, revocation proceedings have been allowed to proceed when the claimant was an “off-the-shelf” company which did not trade (Cairnstores Ltd v Aktiebolaget Hassle [2002] F.S.R. 35), and when the claimant was a firm of patent attorneys (Oystertec Plc’s Patent [2003] R.P.C. 559). Similarly, the Enlarged Board of Appeal of the European Patent Office has stated that for Opposition Proceedings at the European Patent Office the status of an opponent was purely procedural, and the opponent did not have to show any commercial interest in the outcome (G 3/97 INDUPAK).

Revocation proceedings are usually filed in an attempt to gain access to a patented technology. Generally, the instigator of a revocation is concerned either that the patent covers an existing product or that the patent covers a planned future product. As well as providing the possibility of revoking the patent, filing revocation proceedings may also give a strengthened position for a negotiated settlement involving a licence agreement.

There are two main advantages to using a straw man to open revocation proceedings, namely:

1)         to prevent attention being drawn to a potentially infringing product; and

2)         to prevent the patentee from filing a retaliatory revocation action.

There is also anecdotal evidence that a straw man has been used in circumstances where there exists an agreement with the patentee not to challenge the patent validity (for example when the instigator is an existing licensee of the patent). This might sometimes be contrary to the doctrine of “circumvention of the law by abuse of process” mentioned in G 3/97 as an exception to the rule of irrelevance of opponent status.

A negotiated settlement involving a licence agreement may, in fact, be preferable to revoking the patent, particularly if a sole or exclusive licence agreement can be negotiated, as the continued existence of the patent may prove a deterrent to other competitors using the patented technology. In practice, it is extremely unlikely to be possible to negotiate such a settlement without revealing the true identity of the party involved. Therefore, if a negotiated settlement is envisaged as being a real and attractive potential outcome, then it will not usually be appropriate to use a straw man to file a revocation proceedings.

One instance where negotiating a settlement is unlikely to be attractive is if there is a strong case for revocation based on easily available prior publications, as then other competitors would also be in a strong position to apply for revocation. In this circumstance, if it is desired to revoke the patent for commercial certainty then the use of a straw man litigant may be appropriate.

There are also occasions when it is known in advance that the patentee either will not, or can not (e.g. if there already exists an exclusive licence arrangement), negotiate a settlement. Again, in those circumstances, the use of a straw man litigant may be appropriate.

In the UK, patent revocation proceedings can be initiated either in the Courts (in particular the Patents Court and the Patents County Court) or in the UK Intellectual Property Office (the new name of the UK Patent Office). In addition, if the UK Patent corresponds to a European Patent granted less than nine months previously, then it is also possible to file an Opposition at the European Patent Office to revoke the European Patent in all countries in which it has been brought into effect. Each forum has its strengths and weaknesses, and the choice of the best forum will depend on many factors.

To conclude, one should consider using a straw man to apply for the revocation of a UK Patent if a negotiated settlement is either unsatisfactory or extremely unlikely. Using a straw man litigant has the advantages of (i) not drawing attention to a possibly infringing product and (ii) reducing the ability of the patentee to file a ‘tit-for-tat’ action.