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:
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.