Oppositions in the European Patent Office

Martin Vinsome, UDL

10 November 2009

AGENDA

Introduction

What are oppositions?

What are the benefits of oppositions?

How do we find out what to oppose?

How do we oppose?

Introduction

What do I know about my competitors’ products?

What do I know about my competitors’ prices?

What do I know about my competitors’ patents?

Introduction

Competitor’s patent could prevent sale of my product, or be used to persuade customers to buy competitor’s product rather than mine

Potentially much more harmful than competitors’ pricing

What can we do if we identify a potentially problematic patent application of a competitor?

Think about EPO opposition procedure

What are oppositions?

Definition

European Patent Convention Article 99

(1) Within nine months of grant of a European patent, any person may give notice to the European Patent Office of opposition to that patent.

(2) The opposition shall apply to the European patent in all the Contracting States in which that patent has effect.

What are oppositions?

Grounds for opposition

European Patent Convention Article 100

(a) Patented invention lacks novelty or inventive step, or is an excluded category

of invention - commonest reason for opposing

(b)  European patent does not disclose the invention in a manner sufficiently clear

and complete for it to be carried out by a person skilled in the art - rarely

succeeds on its own

(c)  subject-matter of the European patent extends beyond the content of the

application as filed – mainly used in combination with (a)

What are the benefits of oppositions?

i.e. 70% chance of opposition being at least partly successful

Results of Oppositions 2008

Patent Revoked, 39.80%

Scope Restricted, 31.60%

Patent Unamended, 28.60%

What are the benefits of oppositions?

70% chance of partial success

Almost 40% of opposed patents revoked

Over 30% of opposed patents restricted in scope

Affects patent in all EPC countries

What are the benefits of oppositions?

Who is applying for patents?

EPO Filings by Country 2008

25.50%

18.20%

15.70%

6.20%

5.00%4.10%

3.50%3.00% 3.00%

2.10%

0.00%

5.00%

10.00%

15.00%

20.00%

25.00%

30.00%

USA Germany Japan France Netherlands Switzerland UK Italy Korea Sweden

What are the benefits of oppositions?

Who is Opposing them?

EPO Oppositions by Country 2008

11.00%

50.20%

1.20%

5.40%4.40% 5.10% 5.50%

1.80%0.10%

4.20%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

USA Germany Japan France Netherlands Switzerland UK Italy Korea Sweden

How do we find out what to oppose?

Monitor competitors’ patent activities

1. Identify relevant classifications from Epoline – your own patent cases can help this

Please contact UDL for a link to this web page

2. Find out what classifications mean from WIPO classification guide

Please contact UDL for a link to this web page

3. Search in Epoline under relevant classification(s)

How do we oppose?

Search for relevant prior art by

(i)searching under relevant classifications in Espacenet

Please contact UDL for a link to this web pageor (ii) instructing firm of patent searchers to carry out prior art search

How do we find out what to oppose?

Example

Irvin Automotive Products Inc.

Abstract of EP 0911219  (A2) A security shade support assembly (10) for mounting a roller tube having a flexible panel wound thereon within a motor vehicle includes a housing (20) extending axially, an axle (36) extending through the housing, a bearing (58) receiving the axle and cooperating with the housing and attached to the roller tube, and a spring (50, 78) disposed within the housing for biasing the bearing and a groove (34, 72) extending axially along the bearing and the housing to allow the roller tube and shade panel to extend over at least a portion of the housing.

How do we find out what to oppose?1. Identify relevant classifications from Epoline

Please contact UDL for a link to this web page

Search under “Irvin Automotive” in “Applicant” field

How do we find out what to oppose?

2. Find out what classifications mean from WIPO classification guide

Please contact UDL for a link to this web page

How do we find out what to oppose?

How do we find out what to oppose?

3. Search in Epoline under relevant classification(s)

Please contact UDL for a link to this web page

Search under “B60R5/04” in “Classification” field

How do we find out what to oppose?

How do we find out what to oppose?

If too many search results – can limit by publication date

How do we find out what to oppose?

How do we find out what to oppose?

Monitor status on Epoline

Has it been granted yet?

Was it granted less than 9 months ago?

What are the benefits of this?

Even if we decide not to oppose, because patent application not a threat or obstacle, or because we cannot find relevant prior art

we know who is applying for patents in this field

we may have early warning of potential infringers

we may discover potential licensees (e.g. companies in other countries where we are not active)

Thank you