European Patent Oppositions as Business Tools

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European Patent Oppositions as Business Tools

• Richard Bizley

Tel [phone]
richard.bizley_at_hlbbshaw.com
hlbbshaw.com
www.aplf.org
2
Oppositions can further the interests of a
business

• By making life more difficult for competitors
• By maximising the chance of freedom to use
• By providing a negotiating weapon

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3
Oppositions are easily and readily available to
all

• No disclosed interest needed
• Initial filing can be relatively cheap
• Prosecution files up to grant can readily be
  reviewed online
• Lack of familiarity with the process should not
  be a barrier to starting

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4
Some Advantages of Oppositions (1)

• EPO oppositions permit an attack against all
  individual national state patents in one
  procedure
• A final central decision to revoke made at the
  EPO is binding on the national states
• The process is slow
• Oppositions do not go away merely because an
  opponent withdraws a patentee is compelled to
  deal with the case made against him or lose
  control

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5
Some Advantages of Oppositions (2)

• Oppositions can be filed without revealing the
  name of the true opponent
• Oppositions can be filed for relatively minimal
  expense compared to potential costs in litigation
• There is no need necessarily to attend expensive
  oral proceedings in Munich or The Hague
• There is no costs penalty for early withdrawal

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6
Negative Effects of an Opposition to a Patentee

• Removes the relative certainty of grant
• Commits the patentee to expense and effort
  (management time)
• Might result in revocation across Europe
• Might be bad news for investors and raising money
• Might get in the way of commercial deals
• Might delay business development
• Might result in infringement proceedings being
  stayed

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7
Possible Suspension of Proceedings in National
States

• National courts sometimes suspend national
  proceedings pending the outcome of an opposition
• Respect given to Opposition Division decisions,
  even if not generally binding
• Even UK courts take judicial notice of Board of
  Appeal decisions
• New arguments? possibly no suspension
• Flaws in the EPO decision? possibly no
  suspension
• Timing financial considerations, administration
  of justice

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Some Drawbacks of Filing an Opposition

• Sometimes results in a patentee improving the
  claims
• Draws unwelcome attention, but consider a straw
  man
• Prevents a separate nullity action being started
  in Germany

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9
What is a European Patent Opposition?

• An opposition is the sole post-grant procedure of
  significance where the EPO retains jurisdiction
• Oppositions are initially dealt with by
  Opposition Divisions composed of patent Examiners
• The importance of text approval an opposition
  suspends this
• A patentee cannot presently self-oppose (G3/97)
• The public interest oppositions can be
  withdrawn, but opposition arguments cannot

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Possible Outcomes

• Total revocation
• Maintenance of the patent as granted
• Maintenance of the patent in amended form
• Effective for all designated States

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11
Basic Opposition Procedure The Start

• The grounds of opposition (Article 100 EPC) are
  lack of basic patentability, insufficiency
  (non-enablement), added matter
• Lack of patentability is not a unified ground
• At least one intelligible ground of opposition
  does the trick, but..
• It is good tactics to find something under every
  ground
• Filing the notice of opposition identify the
  opponent, identify the patent, identify the
  representative (if any) and indicate the facts,
  evidence and arguments relied upon (Rule 55 EPC)
• Pay the fee!!
• Intervention under Article 105 EPC (notice within
  3 months of being sued)

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Some Timing Considerations for Starting an
Opposition

• Nine months from grant, inextensible
• If no commercial reasons to the contrary, oppose
  late
• If likelihood of infringement, oppose early
  (possible stays in contracting States)
• Consider early disclosure of grounds of
  opposition in the context of negotiation

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13
Basic Opposition Procedure The Prosecution
Phase to an Initial Decision

• Timing
• The patentee gets four months to reply, with
  possible extensions
• The Opposition Division may request further
  submissions from the parties (but generally does
  not)
• The Summons to Oral Proceedings, and the
  provision of a preliminary opinion
• Rule 71a, last written submissions (one month or
  two?)
• The oral proceedings
• Total timing to an Opposition Division 2 to 3
  years, sometimes more
• The interlocutory nature of an Opposition
  Division decision
• If no appeal, provision of fresh translations
  required for an amended patent throughout Europe

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Good Tactics for an Opponent

• Be as clear as circumstances permit
• If possible, know your Opposition Division
• Give the Opposition Division what it wants
• Respond to evidence
• Respond to any concerns of the Opposition
  Division (the preliminary opinion)
• Discriminate between what must be filed by the
  end of the Rule 71a period and what can be left
  for Oral Proceedings
• Try to find additional arguments (not new
  grounds) for Oral Proceedings
• Do not go against existing case law
• Try for squeeze effects

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Appeals (1)

• Appeals to the Technical Board of Appeal
• The Technical Board of Appeal is at the EPO not
  of the EPO
• Boards of Appeal must be judicial
• The effect of an appeal is suspensive
• Tribunal quality is generally high

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Appeals (2)

• Timing and procedure is similar to that before
  the Opposition Divisions, but
• essentially the whole case should be presented at
  the start
• Boards of Appeal do their own research
• New philosophically- or legally-based arguments
  are more acceptable than to an Opposition
  Division
• in rare case there can be a referral to the
  Enlarged Board of Appeal (Article 112)
• Boards of Appeal are very conscious of the public
  duty

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17
Something for the Future!

• EPC 2000 comes into force on 13th December 2007
  at the latest amends basic EPC law
• New provisions for limitation or revocation of a
  patent at the request of the proprietor
• Extant opposition proceedings will take
  precedence over limitation or revocation
• Petitions for very limited appellate review by
  the Enlarged Board of Appeal if-
• a member of the Board of Appeal should not have
  been on the relevant board
• fundamental breach of Article 113 EPC
  (opportunity to comment on grounds or evidence,
  use of the right text)
• any other fundamental procedural defect
• criminal act
• Enlarged Board review will not have suspensive
  effect
• A patent may be surrendered (or lapsed), and
  opposition may still be filed

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European Patent Oppositions as Business Tools
Questions?

• Richard Bizley

Tel [phone]
hlbbshaw.com
richard.bizley_at_hlbbshaw.com
www.aplf.org