Albright IP Limited

Protecting your innovation

+44 (0)1242 691 801

Speak to a UK and European Patent and Trade Mark Attorney

  • Korean
  • Japanese
  • Simplified Chinese
  • Traditional Chinese
Menu
  • Home
  • About Us
    • Close
    • About Albright IP
    • How We Work
    • Our Values
    • Sectors
    • The Story So Far
    • Attorneys
    • Careers
    • Testimonials
      • Close
      • What They Say
  • Patents
    • Close
    • Overview
    • UK Patents
    • European / Euro-PCT Patents
    • International Patents
    • US Patents
    • Product Development
    • Patent Infringement
    • Patent Opposition
    • Costs
    • FAQs
  • Trade Marks
    • Close
    • Overview
    • UK Trade Marks
    • European Trade Marks
    • International Trade Marks
    • Trade Mark Infringement
    • Trade Mark Opposition
    • Costs
    • FAQs
  • Designs
    • Close
    • Overview
    • UK Designs
    • European Designs
    • International Designs
    • Costs
    • FAQs
  • Infringement
    • Close
    • Patent Infringement
    • Trade Mark Infringement
  • Opposition
    • Close
    • Patent Opposition
    • Trade Mark Opposition
  • IP Strategy
    • Close
    • Obtaining Protection
    • Enforcing Your Rights
    • Defending an Infringement Action
    • Intellectual Property Insurance
    • The Patent Box
    • Your competitors’ IP
    • IP Audits Plus
  • Brexit
    • Close
    • Brexit News
    • Brexit Attorney Update
  • Articles
    • Close
    • Blog
    • Figure 1 Magazine
    • Videos
    • Albright in the News
  • Contact

Winning An Opposition Against A European Patent

19th December 2020 by Will Doherty

Winning a Patent Opposition

 

This brief case study provides an overview of strategies for winning an opposition submitted against a European Patent.

The statistics for opposition of a European patent before the European Patent Office (EPO) suggest that the process can be considered something of a gamble.

There is a relatively consistent spread between the three possible outcomes in opposition, where a decision is communicated by the EPO examiners:

  • upholding of the patent as granted (~30%);
  • upholding of the patent in an amended form (~40%); or
  • revocation of the patent (~30%).

At first glance, this might seem to be more favourable to the patentee, as there is an approximately 70% chance of the patent being maintained in some form. However, it is equally likely that a limitation of the patent as granted may actually be more favourable to the opponent than the proprietor, since a potential infringement scenario could be excluded.

The number of opposition filings over the past few years has remaining relatively constant. However, from January 2021, newly-filed oppositions will be presumed to be conducted by video-conference by default, in the absence of strong persuasive reasons to the contrary. This reduces the cost of filing oppositions for many prospective opponents, as the representative will no longer need to spend time travelling to and from the EPO offices. Opposition filings may therefore become more common.

Regardless of whether you are a prospective opponent, considering the possibilities for opposing your competitors’ patents, or whether you are looking to strategically prepare in the potentially increased likelihood of a speculative opposition being filed against your own commercially critical patents, then it is worthwhile giving thought to how to improve your prospects for success during opposition proceedings.

To do so, we can look back at an Albright IP success story as a Case Study:

EP2963134

We received a notice of opposition for EP2963134 on 21 February 2019.

Oral proceedings then took place on 3 March 2020, in which a notice of rejection of the opposition was communicated.

How did we go from a potential disaster for the patent owner to complete maintenance of the patent as granted in just over a year, which is a remarkably quick turnaround for an opposition?

  • Preparation – ensuring that you are fully prepared for events during opposition proceedings is key to success.

Whilst we were confident in the merits of the facts and our arguments which we had prepared in respect of the patent as granted (which proved to be well-placed), there is no substitute for thinking through the potential fall-back positions which would be acceptable and ensuring that the merits of those fall-back positions are completely considered.

In this instance, several auxiliary requests were entered into the proceedings in order to address potential issues, in case the Opposition Division did not agree with the merits of our initial arguments.

Taking this approach provides you with options for limitation, instead of the binary choice between maintenance and revocation.

  • Focus on Detail – the Opposition Division issued a preliminary opinion on patentability with the summons to oral proceedings on 10 September 2019, which appeared to be prejudicial to the maintenance of the patent.

Whilst disappointing at this early stage, it forced us to focus on the perceived deficiencies in the submitted arguments, rather than merely relying on repetition of the arguments used during substantive examination before the Examining Division.

  • Procedural Expedience – ultimately, the Opposition Division only has a limited amount of time to spend on each case.

Ensuring that our arguments in counter to each of the points in the opposition were clear, but more importantly concise, will make the Examiner’s job easier.

There can be a temptation to prepare expansive arguments to support any given point, particularly in written proceedings, but the final message is the one which needs to be followed by the Examiner.

  • Co-operation – we sent two attorneys to the oral hearing, and this was invaluable.

Time could be well-spent stress-testing the arguments to be used in advance of the oral hearing, and in the recession periods, strategic considerations were made which might not have occurred to a sole representative. Two heads are usually better than one!

In the end, the facts and arguments were on our side, and the patent was successfully maintained in full. This may well have come as a shock to the opponent, who had the advantage of the preliminary impression of the Opposition Division being in their favour at the time of issuing the summons to oral proceedings.

What, therefore, can you do to improve your prospects when opposing a patent?

  • Preparation – it is clear now that the evidence favoured our client, being the patent proprietor.

Although the opponent found new prior art documents which they cited against the patent, it was not pertinent once considered in full.

This shows the value of comprehensive searching prior to filing an opposition. The more searching that is performed, the more likely it will be that relevant and damaging prior art can be found.

  • Focus on Detail – we submitted counter-arguments and possible auxiliary requests in response to the summons to oral proceedings.

These counter-arguments provided the basis for our successful defence of the patent.

The written correspondence prior to oral proceedings gives you a good understanding of what the other side’s position will be. It is imperative that time is spent understanding their position in detail, so that you can demolish it during a hearing.

  • Procedural Expedience – rambling arguments will frustrate the Opposition Division, but not nearly as much as revisiting points already discussed during the hearing.

It is critical to have a skeleton plan for arguing your case. You must be succinct, and not revisit grounds which the examiners will have already reached an opinion on.

  • Co–operation – whilst having a partner present for the oral hearing will help you to quickly think our arguments on the fly, it is also worth considering how best to co-operate with the examiners.

Having prepared documents ready for use in the hearing which you can refer to will be of enormous value to both your case and to helping the Opposition Division understand your arguments.

It is transparent that, regardless of whether you are the opponent or proprietor in an opposition, preparedness is key.

There is no reason why decisions should be made last-minute: the opposition window is nine months from publication of grant. There is plenty of time for an opponent to get their arguments in order; similarly, there will be ample periods for reflection for the proprietor in the written correspondence prior to any oral hearing in which a full and complete defence can be prepared.

Given the comparative cost-effectiveness of opposition against revocation in national offices, it is well-worth being prepared now to revisit any opposition strategies you may have, in order to sure up your commercial position.

If you need to defend or oppose a European Patent, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you. 

 

ASK AN EXPERT


reCAPTCHA
Please leave this blank
Sending

Filed Under: Patents

Will Doherty

Will Doherty

Will graduated from the University of Oxford with an MChem in Chemistry and a DPhil in Physical and Theoretical Chemistry. His postdoctoral research focussed on the creation and magnetic trapping of ultracold matter, during which time he studied a broad spectrum of topics across the physical sciences. He previously worked for a computer software firm, joining Albright IP in 2013.

Subscribe to our Newsletter

reCAPTCHA
Please leave this blank
Sending

Most Popular Posts

Patents

The BBC’s Dragons’ Den is Back – Free Patent Pack

Robert Games
29th August 2013

Before you start contacting investors it is essential that you have protected your Intellectual Property. This includes Patents, Designs and Trademarks. Here at Albright IP we have put together a pack to help get you started. For your FREE patent pack, …

Designs

Plans to Reduce UK Design Fees


14th July 2016

The UK IPO recently announced that the official fees for UK Registered Designs are due to be reduced. It is planned that, from October 2016, the costs for renewing a UK Registered Design will be significantly lower. Savings on official renewal fees wil …

Trade Marks

Don’t fall into the trademark trap!

Katie Oliver
24th June 2013

  On a number of occasions each month, anxious clients contact us having received an urgent email, often from Chinese Domain Registration companies, informing them that a third party has applied to register a domain name that includes their trade …

Article Archive

  • Patents
  • Trade Marks
  • Designs
  • IP Strategy
  • Infringement
  • Costs
  • Other Law
  • Charity
  • Brexit

Ask an Expert

reCAPTCHA
Please leave this blank
Sending

Search the Blog

What Our Customers Say...

Albright IP Limited
Albright IP Limited
4.9
powered by Google
David Chalk
David Chalk
21:43 02 Jun 20
Great service, attention to detail and truly actionable advice. I've no hesitation in recommending Albright IP and Adrian in particular. Many thanks.read more
George Tatham-Losh
George Tatham-Losh
13:29 05 Feb 20
Fantastic service as always, detailed, informative and all the hard work was done with minimal input from myself. I have been working with Katie and her fantastic team for years and would highly recommend.read more
Christopher James
Christopher James
16:59 20 Jan 20
Choosing Albright IP was one of the best decisions I have made. Adrian and Cloe have both helped me tremendously so far, they are very professional, friendly, prompt and always there to help and answer any questions. Katie Oliver has also been wonderful assisting with the trademark. Thank you all and looking forward to continue to work with you.read more
Richard Hearn
Richard Hearn
16:05 22 Nov 19
Excellent professional advise and extremely honest and upfront people. Many thanks Adrian and your team!
Brian Gibbs
Brian Gibbs
07:32 23 Aug 19
I have absolutely no hesitation in recommending Albright IP Ltd having received superb service and support throughout. Every query I raised was dealt with professionally and very quickly by Will who provided fully detailed and regular updates as well being approachable and friendly at all times. I have full confidence in Albright IP!read more
Warren Philbey
Warren Philbey
10:54 18 Jul 19
From the first call I had a great feeling, polite, friendly, informative and professional. From then it just got better and after a great deal of help and support in understanding our needs we contracted with Albright and they did a fantastic service, exceeding any expectations and proving themselves to be a truly wonderful company to work with. 10 stars! A big thank you to Adrian and his team.read more
Terence Hodgson
Terence Hodgson
23:06 12 Jun 19
I have not had reason to contact Albright for several years since the granting of my Patent but quite recently I did get in touch. It was as I remembered, friendly, professional, honest and informative. It appears that Adrian and the Albright team are there for me no matter the length of time. T Hodgson. UMU HSA Ltdread more
Paul Sims
Paul Sims
12:40 12 Apr 19
Adrian and The Albright Team are Professional and Helpful. It has is a real gem to found such great people to act as part of my extended legal team regards Patents. I am pleased to recommend and have them represent my Registered Patents. Thank you. www.thebluebearpartnership.comread more
Nick Ball
Nick Ball
19:16 12 Mar 19
High quality service at a reasonable price. With Albright you feel you're in very good hands. Marc was always courteous, responsive, well informed and generous with his time. I would have no hesitation recommending Albright or working with them again.read more
Andrew Stewart
Andrew Stewart
16:27 26 Feb 19
Great depth of expertise, advice and counsel. Not only expert advisors, Albright IP provide valuable, balanced and cogent advice on complex (and simple) matters of patent and trademark law. Delivered with great clarity, always available and keen to provide balanced perspectives in support of good outcomes. Great partners, highly recommend.read more
Simon Bradbeer
Simon Bradbeer
11:37 05 Feb 19
After leaving a well known London based attorney Albright IP were recommended to me by a colleague within the group. Since then Adrian and his team have consistently given me superb advice and support whatever the project. With their help the company has been granted a number of robust patents, registered designs and trademarks.read more
Scott Johnson
Scott Johnson
14:59 11 Jan 19
I have known Adrian Hocking for over 10 years. The service he and his colleagues offer is professional, transparent and friendly. If you have an idea that is either completely new or you think is a step-change from what is currently available, I recommend that you contact Albright IP.read more
Hannah Azar
Hannah Azar
11:10 24 Dec 18
Adrian is an exceptionally talented and experienced patent attorney. I was very impressed by the quality of work produced by the team at Albright. A fast, helpful and friendly service.read more
Oliver Pearce
Oliver Pearce
19:11 01 Dec 18
Fantastic one to one service. Knowledgeable. Friendly. Competent. And very rapid response to queries. Very impressed!read more
Simon Folmann
Simon Folmann
21:32 26 Nov 18
Adrian Hocking and Albright IP have offered us excellent service, and expertise over the last 12 months. They explain in detail the processes, implications, and opportunities with obtaining and securing Intellectual Property and for a Product Development company such as ours, it is crucial that the terminology and quality of work be above industry standard. I can with high confidence say, that the delivered work so far from Albright IP and their team, is unparalleled to prior partners we have had in IP; and I am sure it will continue to do so in our future endeavours together.read more
Martin Boyd
Martin Boyd
15:17 03 Nov 18
Excellent technical and legal knowledge. Amazing friendly customer service catered to individual customer needs. Highly recommended.read more
Mike N
Mike N
16:14 08 Oct 18
Albright-IP - We can highly recommend Albright-IP, after contacting several patent companies prior to application - we were after a patent company to offer realistic and practical advice, be able to process our claim from start to finish, After speaking with Mr Doherty on the telephone we decided Albright -IP would be able to offer the skills and knowledge required for our application and asked them to represent us. Albright-IP were on hand to explain the complexities of the process and how our claim may or may not be defended in the real world, Mr Will Doherty is our patent attorney, he was professional and attentive, his knowledge and customer service is very good. We are confident our patent application is in good hands and we are pleased to have Alrbight IP there to assist us with our application, without their input we may well have been wasting our time due to our lack of knowledge in this complex matter.read more
Jeffrey Chua
Jeffrey Chua
08:47 14 Sep 18
We worked with Albright IP Limited on patent applications in EU and UK, specifically through Cloe Loo. Cloe and her team have done a fantastic job. We were glad to have assistance from Albright on our patent application journey. I am impressed by the team's professionalism and we will be engaging Albright to be our long-term legal adviser in patent applications.read more
Graham Kelly
Graham Kelly
17:49 07 Sep 18
I have a granted patent! thanks to Will and the team at Albright. ? Friendly and helpful service, it's great how they can very quickly grasp the required understanding of your idea and put pen to paper and draft a patent. Will was great at pointing out what are valid aspects of my idea and taking me through the process of what that means in patent language! A few more steps to go to hopefully gain the overseas coverage. ?read more
Geraint Morgan
Geraint Morgan
09:44 21 Aug 18
Albright IP provided an excellent, efficient, affordable high quality service that made the whole patent filing experience an enjoyable one - contrary to previous experiences. We are certainly more likely to consider patenting our innovations in the future based on our recent experience and would highly recommend Albright IP to others.......read more
Don Spence
Don Spence
12:07 09 Aug 18
Filing patents can be a steep learning curve but Adrian does an excellent job explaining the process. Adrian and his associates are easy to contact and they will always answer your questions. Money and cost are important and the Albright team do their best to make sure your $$ is spent in a wise fashion. After working with Albright for 6 years, I am happy with their work and I have no reason to change companies. My many thanks for professional service.read more
Graeme Allison
Graeme Allison
22:54 31 Jul 18
Adrian and his team provided and excellent service, their technical understanding is fantastic and patent advice has been impeccable, I’d highly recommend Albright IP should you be looking for patent expertise.read more
Mark Hendriksen
Mark Hendriksen
16:12 17 Jul 18
Exceptional. Guided me through the process in clear understandable steps. Hoping we have a long and successful future ahead with the patents they've so expertly managed for me so far.read more
jing cheng
jing cheng
13:12 19 Jun 18
I contacted Adrain for advise in a short time frame. He is very professional and clear about price policy. He has very good understanding of online business and IP law. He is very quick responding and speakes the language I understand. Highly recommended.read more
Lorenzo Rimoldi
Lorenzo Rimoldi
12:44 07 Jun 18
Adrian was very helpful, upfront and clear on processes, costs and timeline. He's very professional and proactive in his involvement and support. I would definitely recommend Albright IP.read more
Mohammed Deria
Mohammed Deria
04:06 01 Jun 18
Adrian is a true professional at the top of his field! Due to his background in engineering, Adrian effortlessly understand the needs of his client even when it is highly technical in nature. An attentive ear and huge generosity with his time, Adrian's support to us as a client has been extremely valuable. I would highly recommend Adrian and the team at Albright IP for protecting your IP.read more
Guy Procter
Guy Procter
17:36 21 May 18
What can I say, excellent help so far! Very clear and helpful service, explained in terms you can understand covered everything I thought I needed and then some more to give me all the options available. More than willing to recommend Albright IP.read more
Kirishan Siva
Kirishan Siva
09:14 17 Dec 17
The Albright team were extremely helpful and knowledgeable in the whole patent process for our product and went through each process in registering patent to help us understand this fully. Highly recommend Adrian and team for their knowledge, efficiency and professional service!read more
Jade Baron
Jade Baron
16:05 25 Nov 17
Adrian Hocking at Albright handled my recent patent application. I've been very happy with his service. He was very responsive to my questions and explained everything thoroughly. He was very supportive of my idea and consistently positive, which was also helpful. Albright has relationships with various other businesses that help inventors, so it's kind of a like a one-stop-shop. Highly recommend.read more
Meopham Fencing
Meopham Fencing
15:27 08 Nov 17
Great advice and customer service at a reasonable price. They have enabled us to finalise our case satisfactorily. Would happily recommend them and use them again.read more
James Garritt
James Garritt
09:17 17 Oct 17
Adrian and his team have been fantastic in all works asked to do. They have ensured my idea has been protected in every way. They have helped with the design process also and I could not wish for a better team. You may be paying a little more than you feel is expected....but you get what you pay for and you probably save money in the long run. Highly recommended.... use without worry.read more
Tony Laycock
Tony Laycock
16:06 02 Oct 17
I have found that the company has given me excellent service in getting my patent through the process. Every time I have had a phone conversation I have felt I was given plenty of time to discuss what was happening. Along with sound advice I have been able to make great progress. In my opinion it is one of the best companies I have ever dealt with and would be happy to recommend them.read more
Next Reviews

Helpful Tips

You can avoid large extra official fees when filing your US patent application by changing any multiple dependency claims to single dependency, so that your later claims only depend back to one previous claim.

By also limiting your claims to no more than three independent claims and to no more than twenty claims altogether, extra official fees will also be avoided.

Quicklinks & Glossary

  • A
  • B
  • C
  • D
  • E
  • F
  • G
  • H
  • I
  • J
  • K
  • L
  • M
  • N
  • O
  • P
  • Q
  • R
  • S
  • T
  • U
  • V
  • W
  • X
  • Y
  • Z

Cheltenham Head Office

Albright IP
County House
Bayshill Road
Cheltenham
Gloucestershire
GL50 3BA
United Kingdom

 

(use for all correspondence)

Cornwall Office

Pool Innovation Centre
Redruth
Cornwall TR15 3PL

 

London Meeting Room

5 Merchant Square
London, W2 1AY

 

See the Contact Us page for details

Contact Us

Cheltenham: +44 (0)1242 691801
Cornwall: +44 (0)1209 316161
London: +44 (0)20 3813 2885

Email: info@albright-ip.co.uk

Vat No: 891 4780 86


  • Facebook
  • LinkedIn
  • Twitter
  • Vimeo

Newsletter

reCAPTCHA
Please leave this blank
Sending

Copyright © 2021 · Dynamik-Gen on Genesis Framework

/* ----------------------------------------- */ /* Content Template: Loop item in Most Popular Posts - start */ /* ----------------------------------------- */ .ab-entry-header-info { margin-bottom: 15px; } .ab-button { color: #fff !important; } h3.ab-archive-post-title { text-transform: none !important; } /* ----------------------------------------- */ /* Content Template: Loop item in Most Popular Posts - end */ /* ----------------------------------------- */ /* ----------------------------------------- */ /* Content Template: Loop item in Most Popular Posts – Design - start */ /* ----------------------------------------- */ .ab-entry-header-info { margin-bottom: 15px; } /* ----------------------------------------- */ /* Content Template: Loop item in Most Popular Posts – Design - end */ /* ----------------------------------------- */ /* ----------------------------------------- */ /* Content Template: Loop item in Most Popular Posts – Trade Marks - start */ /* ----------------------------------------- */ .ab-entry-header-info { margin-bottom: 15px; } /* ----------------------------------------- */ /* Content Template: Loop item in Most Popular Posts – Trade Marks - end */ /* ----------------------------------------- */