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FILING AND DEFENDING EUROPEAN PATENT OPPOSITIONS

INDEX

 

The only way to challenge the validity of a European patent in all of the territories where it is in force in a single action is to file an opposition against the grant of the European patent.

 

Opposition proceedings must be initiated within nine months of the date of grant of a European patent and if successful, can result in the complete revocation or knock-out of the patent in all of the designated states or territories covered by the patent.

 

The opposition procedure is thus a consolidated process which allows a single challenge to be made that is effective in all countries covered by the patent.

WHY FILE AN OPPOSITION TO A EUROPEAN PATENT?

 

A granted European patent provides a monopoly right to the owner over an invention in any of the 38 member states (and six validation or extension states if relevant) where the patent is brought into force. Without the opposition system, a challenger would need to issue invalidation proceedings in each of the states where the patent was in force and they wished to work the invention. This would be time consuming and very expensive.

 

As such, filing an opposition is a cost-effective way of knocking out a patent in multiple territories.

 

Additionally, filing an opposition, which can only be done after grant, means that the owner of the patent cannot amend the claims to extend the scope of protection. This can therefore restrict the owner’s options in responding to the challenge, as compared to challenging a patent application when it is pending (via third party observations).

EUROPEAN PATENT APPLICATION WATCHING

 

Since an opposition can only be filed within nine months of grant of the European patent, it is vital that, if you become aware of a potentially troublesome European patent application, it is monitored so that you know when the period for filing opposition begins.

 

Albright IP can set an excellent watching service to monitor the progress of a competitor’s European patent application. Please contact us as soon as you become aware of a competitor’s European patent application.

HOW TO FILE AN OPPOSITION AGAINST A EUROPEAN PATENT

 

A European patent can be challenged or opposed on the grounds of:

  • Non-patentability: 

The invention is not a patentable invention (for example, it is not new or inventive).

 

  • Insufficiency: 

The patent specification does not disclose the invention clearly and completely enough for it to be performed.

 

  • Added matter:

The subject-matter of the patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application or a new application filed stemming from a base parent application, beyond the content of the earlier application as filed.

 

To initiate opposition proceedings, the opponent must (among some other requirements):

 

  • Provide a written reasoned statement of case which provides an indication of the facts, the evidence relied on and the arguments in support of the grounds upon which the opposition is based.

 

  • Pay the opposition fee.

 

  • Provide an address for service in a European Patent Convention contracting state. This must be either the opponent’s own address, or that of a valid representative under the European Patent Convention, such as a European Patent Attorney.

OPPOSITION PROCEDURE

 

On acceptance of the opposition, the European Patent Office (EPO) will forward the notice of opposition to the proprietor of the patent which is being challenged for their review. The proprietor is set a deadline in which to consider the opposition and respond, by filing counter-arguments and/or amendments to overcome the objections. The opponent is provided the proprietor’s response and may submit further arguments. The case is then typically considered by the Opposition Division at the EPO and a provisional opinion is issued. An oral hearing is then usually set, and the Opposition Division issues its decision following the hearing.

 

Depending on the outcome of the decision, which may be that the patent is entirely revoked, is only partially revoked and thus maintained in amended form, or that the opposition was dismissed and the patent is fully maintained in unamended form, the losing party may be able to file an appeal. If the appeal maintains the decision, validity of the patent may still be challenged in each country via the national court.

 

Opposition proceedings normally take more than a year and can attract some significant costs. However, the centralised procedure does provide a cost-effective way to challenge a European patent, before the need arises to challenge the patent separately in each country in which the patent is validated.

HOW TO DEFEND YOUR EUROPEAN PATENT

 

There are a number of options available to the owner to defend their European patent and the merits of these will depend upon the circumstances of the opposition. Expert attorney guidance should be obtained to advise you.

 

If you would like further information, please email us directly here or call +44 (0) 1242 691 801 to speak to a qualified European Patent attorney.