Presenting a live 90-minute webinar with interactive Q&A Coordinating Post-Grant Patent Opposition in Europe and the U.S. Navigating Timing, Grounds for Opposition, Discovery, and Amendments to Maximize Protection in Both Jurisdictions THURSDAY, FEBRUARY 26, 2015 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: Michael J. Flibbert, Partner, Finnegan Henderson Farabow Garrett & Dunner , Washington, D.C. Leythem A. Wall, European Patent Attorney, Finnegan Henderson Farabow Garrett & Dunner , London The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10 .
FOR LIVE EVENT ONLY Sound Quality If you are listening via your computer speakers, please note that the quality of your sound will vary depending on the speed and quality of your internet connection. If the sound quality is not satisfactory, you may listen via the phone: dial 1-866-570-7602 and enter your PIN when prompted. Otherwise, please send us a chat or e-mail sound@straffordpub.com immediately so we can address the problem. If you dialed in and have any difficulties during the call, press *0 for assistance. Viewing Quality To maximize your screen, press the F11 key on your keyboard. To exit full screen, press the F11 key again.
FOR LIVE EVENT ONLY For CLE purposes, please let us know how many people are listening at your location by completing each of the following steps: In the chat box, type (1) your company name and (2) the number of • attendees at your location Click the SEND button beside the box • If you have purchased Strafford CLE processing services, you must confirm your participation by completing and submitting an Official Record of Attendance (CLE Form). You may obtain your CLE form by going to the program page and selecting the appropriate form in the PROGRAM MATERIALS box at the top right corner. If you'd like to purchase CLE credit processing, it is available for a fee. For additional information about CLE credit processing, go to our website or call us at 1-800-926-7926 ext. 35.
FOR LIVE EVENT ONLY If you have not printed the conference materials for this program, please complete the following steps: Click on the ^ symbol next to “Conference Materials” in the middle of the left - • hand column on your screen. • Click on the tab labeled “Handouts” that appears, and there you will see a PDF of the slides for today's program. • Double click on the PDF and a separate page will open. Print the slides by clicking on the printer icon. •
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Coordinating Post-Grant Patent Opposition in Europe and the U.S. February 26, 2015 Presented by Michael J. Flibbert and Leythem A. Wall
‘The European Patent’ • 38 EPC Member States as of 1 January 2014 • 28 EU States, 10 non-EU States • Centralized prosecution • Bundle of national patents • Articles 69 EPC and 138 EPC - National Law ‘largely’ harmonized • Theoretically, same results for parallel national proceedings • In practice, can be very different results and very expensive 6 6
Overview • What is an Opposition? - Post-grant inter-partes procedure at the EPO (administrative, not litigation) - Allows public to challenge grant of European patent - No limit to number of opponents - No commercial or other interest whatsoever need be shown - May result in limitation or revocation of patent • Reasons for opposing a patent - Infringement - Licensing/cross-licensing - Strategy - Patent intelligence - Political/ethical reasons 7 7
Who Can File - “Any person” may have an Opposition filed on their behalf - Have to be represented by a European Patent Attorney - Opponent cannot be anonymous but can be “straw man” - No limit to the number of Opponents per patent, automatically consolidated into single Opposition proceedings 8 8
Grounds • Grounds of Opposition - lack of novelty - lack of inventive step - invention is insufficiently described - added matter - non-patentable subject matter - not susceptible to industrial application - clarity and unity are not available grounds of opposition 9 9
Filing the Opposition • Opposition must be filed in writing at EPO (Munich, The Hague, Berlin) within 9 months from publication of mention of grant of patent. No extension available even if patent republished after voluntary post grant limitation or correction • Must set forth fully the Opponent’s case, including “an indication of the facts, evidence and arguments”. At least one ground must be cited • No page limits • Needs to be in an EPO Official Language (English, French, German) • Opposition Fee is 775 EUR • All oppositions instituted if the above requirements satisfied • All reasoned grounds considered. No concept of redundant grounds • On public file 10 10
Opposition Written Procedure The Opposition Division • 3 EPO Examiners including Examiner who conducted examination Written Proceedings • Patentee given a 4-6 month period to reply to opposition once ‘instituted’ • No further formal written deadlines until Summons to Oral Hearing - Summons includes Opposition Division non-binding preliminary opinion - Summons sets a deadline for final written submissions, including Auxiliary Claim Requests from the patent proprietor , for 1 month before Hearing • No Discovery • Expert declarations rare 11 11
Claim Amendments Formal • Theoretically no limit to number of Auxiliary claim sets (3 to 10 is typical) • Can be filed in reply to opposition and summons to Oral Hearing (and also during hearing but no guarantee will be admitted) Substantive • Must satisfy EPC requirements including added matter. Strict assessment , express basis often requested • Must not broaden scope of granted claims • Added Matter is a ground of Opposition and claim broadening after grant not permitted – “The Inescapable Trap” (G1/93) 12 12
Claim Construction Article 69 EPC: “ the extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.” The Protocol on Article 69 EPC “Article 69 EPC should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties” 13 13
Oral Proceedings - Inter-partes Oral Hearing takes place in Munich, The Hague or Berlin - Language of the patent (English, French or German). Interpreters provided. - Hearing is very rarely more than a day - Opposition Division issue Decision at the end of the Hearing i.e. same day - Decision will either: • revoke the patent (‘kill’) • uphold the patent (‘miss’) • maintain patent in amended form (‘wound’) - Written Decision with full and detailed reasoning issued within a few months - Appealable only at the EPO - Whole Process 18-30 months, sometimes quicker 14 14
Opposition Timeline 15 15
EPO Stats – Technical Areas Opposed • Industrial Chemistry, Polymers and Organic Chemistry account for over a third of all oppositions* * “The Opposition Procedure and limitation and revocation procedures”, Daniel Closa, Beauce Gaetan, European Patent Office 30 November 2012 16 16
EPO Stats – Opposition Outcome • Approximately 5% of all EP patents granted are opposed • Approximately 70% of patents at least wounded, over a quarter killed* * European Patent Office “Facts and Figures 2014” 17 17
Reasons for Revocation • Revocation mainly on grounds for lack of inventive step • Added matter revocation relatively high at 11%* * van de Kuilen, Aalt (2013) ” Successful European Oppositions: Analysis for the patent information professional”. World Patent Information (Elsevier) 35 (2): 126 – 129 18 18
Appeals - Notice of Appeal must be filed at EPO within 2 months of Written Decision - Grounds of Appeal must be filed at EPO within 4 months of Written Decision - Board of Appeal is entirely independent of Opposition Division. 3 members, an EPO in-house lawyer and two technical EPO members (ex-Examiners or ex- patent attorneys) - Written Procedure similar to Opposition - Hearing similar nature to Opposition Hearing. Decision will either: • remit case back to Opposition Division • revoke the patent • uphold the patent • maintain patent in amended form - Decision is not appealable (unless procedural violation by Board of Appeal). Points of Law can be referred to Enlarged Board of Appeal - Whole Process 18-30 months, sometimes quicker, can request acceleration 19 19
Recommend
More recommend
