KNOCK, KNOCK: WHO’S THERE?
A DISCUSSION OF “STRAW PERSON” PROCEEDINGS
FICPI World Congress 2022, Cannes
Chair:
Anil Bhole
Bhole IP Law (Canada)
Reporter:
Neeti Wilson
Anand and Anand (India)
Straw Person Proceedings
Ability of “any person” to initiate a proceeding
Invalidity / opposition
Reduce barriers for legitimate IP challenges
Potential risks to IP owners
Potential risks to IP attorneys
1. Are straw person proceedings permitted in your jurisdiction and, if so, in what contexts?
2. In these contexts, is the Opponent permitted to submit evidence (which may be cross-
examined) or merely written representations?
3. Are you aware of any particular risks or limitations in your jurisdiction relating to the use
of straw person proceedings?
4. Are you aware of any actual instance in which a practitioner in your jurisdiction has been
placed in a difficult position due to their involvement in a straw person proceeding?
5. Do you recall your national/regional attorney groups raising concerns with the use of
straw person proceedings?
6. Have any positions been taken within the profession
in respect of straw person proceedings generally?
Consider
IP Owner
Straw person
(Attorney)
Challenger
Counsel
Duty to warn of
potential conflict?
Relationship?
Indemnification
for costs?
Inability to
change
counsel?
Experts
Relationship?
1. Are straw person proceedings beneficial and should they
continue to be made available?
2. Should FICPI lobby for harmonization or should any other
approaches be undertaken?
3. Should limitations be placed upon the use of such proceedings?
4. Could or should potential risks mitigated by legislation or by
private arrangements?
Consensus ?