Attacking a Patent or Patent Application at the European Patent Office

In accordance with Article 99 EPC, a European patent may be opposed at the EPO within 9 months of the mention of the grant of the European patent in the European Patent Bulletin. If a patent has not been granted, an opposition cannot be filed (yet). Article 115 EPC enables third parties to file observations at the EPO during the examination of a European patent application. A pertinent question to be asked is: should we file third party observations under Article 115 EPC during examination, or file an opposition after grant?

Third Party Observations: An Overview

Third party observations may be filed at the EPO following the publication of a European patent application. Strictly speaking, only patentability questions may be raised in third party observations (i.e. relating to Articles 52 to 57 EPC). However, in practice the EPO tends to allow observations to be made on other grounds, such as clarity (Article 84 EPC), insufficient disclosure (Article 83 EPC) and lack of unity (Article 82 EPC). A third party that files observations does not become a party to the examination procedure at the EPO. The observer will not, for example, receive copies of office actions that are issued on the European patent application by the EPO. Third party observations may be filed during examination up until the examination procedure at the EPO has closed. Third party observations may also be filed in respect of a European patent if opposition proceedings are on-going.

Oppositions: An Overview

According to Article 100 EPC, a European patent may only be opposed on the following grounds: (a) the subject-matter of the European patent is not patentable under Articles 52 to 57 EPC; (b) the European patent contains an insufficient disclosure of the invention; and/or (c) the European patent includes added matter. It is not, for example, possible to oppose a European patent on other grounds, such as a lack of clarity under Article 84 EPC or a lack of unity under Article 82 EPC. Once an opposition has been filed, the opponent becomes a party to the proceedings. Typically the EPO will send a copy of the opposition to the patent proprietor within a month or so of it being filed. A further communication from the EPO to the patent proprietor will soon follow, setting a four month term for the proprietor to respond. If the proprietor files amendments, the opponent is given an opportunity to comment on the amendments in writing. The next stage in the procedure can vary, but in many instances it involves a communication being issued by the EPO that sets a date for oral proceedings. The communication often includes the EPO’s provisional opinion on the case. An opportunity is provided for both sides to file written submissions at the EPO in advance of the oral proceedings. Each party is then given an opportunity to present its case orally at the oral proceedings. The EPO decides the opposition at the oral proceedings. The decision is subject to appeal.

Should We File Third Party Observations or Wait for Opposition?

Many people decide to wait to file an opposition rather than making third party observations, and it is easy to understand why. Unlike filing third party observations, filing an opposition causes the opponent to become a party to the EPO proceedings, thus potentially offering the opponent multiple opportunities to convince the EPO (in writing and orally) that the patent should be revoked. Also, added matter arguments can be particularly powerful in opposition proceedings. This is because (in contrast to examination proceedings) the scope of a granted patent cannot be broadened after grant. Thus, a patent proprietor may find himself in a “trap” in which the patent as granted cannot exist in its current format because it includes added matter, nor can it be amended to excise the added matter because doing so would broaden the scope of the patent. However, the opposition process at the EPO is not perfect. Statistics suggest that only around 6% of all European patents are opposed, yet there is a significant opposition backlog in many of the EPO’s technical divisions. This can mean that oppositions can take several years to resolve – the time period from the proprietor responding to the opposition through to the EPO setting a date for oral proceedings can be years. Our firm recently handled an EPO opposition that we accelerated at the EPO because there were concurrent infringement proceedings in the UK. The time period from the opposition being filed to the patent being revoked was a little under 11 months, but without acceleration the process typically takes much longer. Filing third party observations at the EPO might therefore obviate a prolonged period of uncertainty if grant of a patent is successfully prevented. Filing third party observations during examination may also have the following benefits: - the observations can include arguments on grounds that are not grounds for opposition, such as clarity (Article 84 EPC), which will probably be considered by the EPO (unlike in opposition); - the observations may potentially lead the examiner down new lines of thinking that cause him to find new prior art which he may not otherwise have found (in opposition, it is unlikely the opposition division will cite new prior art); - successfully preventing a patent from being granted means that there is no patent to assert against you (in contrast, an opposed patent can still be asserted against you); - the patent that is eventually granted might be narrower in scope than might otherwise have been the case; and - there is no official fee to be paid (the official fee for filing an opposition is currently €705). A party that files third party observations during examination is not prevented from filing an opposition after grant, even if the opposition is filed on the basis of prior art mentioned in the third party observations. However, it is worth bearing in mind that if the examiner fails to appreciate the significance of prior art filed in third party observations, the prospect of an opposition being successful on the basis of the same prior art may well be low. As you can see, there are many factors to take into consideration when deciding whether to file third party observations or wait to file an opposition after grant. Please contact Scott Harrison for more details [email protected] or your usual contact at Swindell & Pearson Ltd.

Swindell & Pearson has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 130 years. With its head office in Derby, the firm also has offices in Stoke, Wolverhampton, Stafford, Sheffield and Burton. To find out how Swindell & Pearson can help you with any intellectual property requirements please get in touch via [email protected] or by telephone on 01332 367 051.