Success at Opposition Appeal

February 24, 2014

Back in October 2012, our firm persuaded the European Patent Office (EPO) to revoke European patent EP1791702B . In early February 2014, we succeeded in convincing an EPO Board of Appeal to uphold that decision (EPO Board of Appeal decision T2507/12).

EP1791702B relates to security features that are formed, created and printed from inks comprising metallic particles. The security features could, for example, be used on banknotes. The patent was successfully opposed on the basis that it included subject-matter which extended beyond the content of the patent application as filed, contrary to Article 123(2) EPC. It was impossible for the patent proprietor to rectify this issue by amending the patent because removal of some of the added subject-matter would have broadened the scope of the patent, contrary to the provisions of Article 123(3) EPC. Scott Harrison, the lead attorney for the case, commented: "This is an interesting case because it serves as a reminder of how important it is to give full consideration to European law on added subject-matter when amending claims in Europe. It’s crucial to bear in mind that European law in this regard differs from the equivalent law in some other (arguably more lenient) jurisdictions such as the US". A further salient point was the speed at which the opposition was dealt with by the EPO, relative to some other cases. The notice of opposition was filed in July 2011, roughly 15 months before the oral proceedings for the first instance proceedings took place in October 2012. A notice of appeal against that decision was filed in December 2012, around 14 months before the oral proceedings for the appeal in February 2014.

Swindell & Pearson Ltd is a firm of European patent and trade mark attorneys based in the UK with offices in the Midlands, Yorkshire and London. If you have any questions concerning the opposition of patents, please get in touch with your usual contact at Swindell & Pearson Ltd or Scott Harrison at [email protected]. Scott is based at our head office in Derby.

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