In Australia, a patent application may be opposed by any third party after the acceptance of that application is advertised and before the application proceeds to grant. This is an inter parties proceeding before the Patent Office, which is intended to efficiently deal with validity issues. As there is no standing requirement to oppose, opponents may use a strawperson to act as their proxy in the proceeding. This is typically motivated by the opponent wishing to remain anonymous. Most commonly, the strawperson will be a patent attorney or lawyer.
The Institute of Patent and Trademark Attorneys (IPTA) has recently provided advice to its members discussing some of the difficulties which may arise in relation to oppositions involving a strawperson.
Challenges in Appeals and Attorney Involvement
One area of difficulty arises in relation to appeals. Opposition decisions may be appealed to the Federal Court within 21 days of the date of the decision. The strawperson will necessarily become party to the appeal. If the strawperson is a patent attorney, there are a number of reasons why they might not wish to be involved in an appeal, such as the risk of being subject to an adverse costs order or being required to provide security for costs. If an attorney is acting as strawperson for their own client, this makes it difficult, if not impossible, for the attorney to act in accordance with the Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018 (Cth) (Code of Conduct) when advising the actual opponent in relation to the appeal, as the attorney may have opposing interests to their client in relation to the appeal. This could in principle be avoided by transferring the opposition to the actual opponent prior to appeal.
Changes of opponent may be effected under reg 5.15 of the Patents Regulations 1991 (Cth), however, the change is at the discretion of the Commission of Patents and therefore creates significant uncertainty as to whether the opposition will be transferred from an attorney strawperson to the actual opponent.
Conflicts arising from unknown identities
Another area of difficulty is in relation to conflicts. Unsurprisingly, an adversarial proceeding where the identity of one of the parties is unknown provides a significant opportunity for conflicts. For example, a situation may arise where the attorney for a patent applicant becomes involved in a strawperson opposition where the actual opponent is, unbeknownst to the attorney, also one of their clients. The Code of Conduct requires that an attorney 'take all reasonable steps' to avoid conflict. The advice provided by IPTA suggests that this is not an absolute obligation or akin to a strict liability, therefore it should be sufficient that the attorney take 'reasonable' steps to meet their obligations.
Therefore, if the attorney suspects that they know the identity of the actual opponent, and that it may cause a conflict, they should make enquiries to ascertain the identity of the actual opponent. If the strawperson's attorneys do not assist (which is realistically the most likely outcome) the applicant's attorney can continue to act in the opposition. However, even if an attorney took the suggested steps, a conflict could be identified later during the cause of the opposition. If this occurred, resolution of the conflict would require the strawperson to cease acting and, potentially, withdraw from the opposition.
Given that strawperson oppositions can give rise to (unintended) conflict issues, create difficultly for the attorneys involved in complying with their ethical responsibilities, as well as raise practical difficulties in the context of the opposition or any subsequent appeal, they should be approached with considerable care. Ultimately, an opponent must weigh the benefit of maintaining anonymity against the substantial risks inherent in opposing an application via a strawperson.
Please contact our team if you would like to know more about how you can protect your interests and navigate the complexities of patent oppositions in Australia.