challenging european patents and applications in the epo jim boff member of the international...
Post on 23-Dec-2015
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Challenging European Patents and Applications in the EPOJim Boff
Member of the International Liaison Committee
(Non-European)
IN ASSOCIATION WITH
Why challenge
• European Patent is a bundle of patents.• Once opportunity to challenge at EPO is lost, cost of
country-by-country challenge is high.• EPO offers two routes to central challenge.• Third party observations [3PO].• Opposition.
Third party observations (3PO)
• Can be filed any time from publication through to grant [and during appeal procedure]
• Or during opposition if you have missed the deadline• If filed late, sits on the file to “poison” it• Inexpensive• Can be anonymous • Flexibility in approach ranging from a “postcard”
through to fully reasoned attack
Third party observations 3PO
• Observer not a party to proceedings• But can monitor the file and make repeated
observations • Entirety of case for invalidity need not be pleaded in
one go• PROS – Cheap, quick [if the examiner likes an easy
disposal], and if you have good art, effective• CONS – No official way to accelerate proceedings. No
way to participate in hearings. Can improve patent strength?
A-3PO B-3PO C-3PO
Opposition
• Deadline nine months from publication of grant [with extension in some very rare circumstances]
• Fully reasoned case required• Full party to the proceedings• Possibility of intervention by those sued or threatened
under patent
Opposition
• PROS – party status means attendance at any hearings. Cost usually less than national revocation in one country, certainly less than piecemeal national revocation
• CONS – more expensive than third party observations
Observations after grant
• Possible during pending opposition proceedings• Possible during limitation proceedings• If not admissible, observations can sit on the file to
“poison” it
Third Party Observation Statistics• Growing numbers but still rare
[0.75% of applications]• Useful to examiners• Varied rate according to
technology
Opposition Statistics
• Relatively static at about 5% of grants
• Twice as likely to win as lose• Twice as likely to lose as win• Varied rate according to
technology
Strategy
• 3PO cheap and early, but gives applicant flexibility• Opposition reduces patentee options but more
expensive and slower• Both significantly less cost than national revocation in
all or a few countries• Varied rate according to technology
Conclusions
• 3PO and Opposition part of the toolkit for patent attorneys in Europe
• Similar 3PO systems operational elsewhere• Will America Invents Act bring new “European”
concepts to US practice?• Will they be used to the same extent as in Europe?
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