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

Cost-time considerations

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?

For more information please contact:

Chartered Institute of Patent Attorneys

95 Chancery Lane, London WC2A 1DT

Telephone: +44 (0) 207 405 9450

Email: info@cipa.org.uk

www.cipa.org.uk

IN ASSOCIATION WITH