Opposition systems are closely related to the patent granting procedure, and offer third parties an opportunity to oppose the grant of a patent, by giving notice of opposition to the granting authorities. In some states, there is a pre-grant opposition procedure, in others it is a post-grant procedure. Reasons for opposition may be that the invention is not new, does not involve an inventive step, is not susceptible of industrial application, is excepted from patentability, that the 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, or that the subject-matter of the patent extends beyond the content of the application as filed, for instance.
The duration of proceedings before the Boards of Appeal (BoA) currently is the EPO’s biggest problem in regard to speed. According to the latest Annual Report by the Boards of Appeal, the average length of inter partes proceedings is 37 months (up 1 month from 2015), i.e. more than three years. In 2016, two appeals…
European patent attorneys should make a joint effort and gather data to assess the impact of procedural issues on opposition procedures at the European Patent Office and, in the future, on decisions of the Unified Patent Court. Michael Wallinger, partner of law firm WRST, proposed this at the annual meeting of the European Patent Litigators…
Case reported and summarised by Gregory Bacon, Bristows LLP The UK does not operate a system of automatically staying proceedings which concern validity of a European patent where there are ongoing opposition proceedings at the EPO. Nevertheless, the Court retains discretion to stay such proceedings, and a recent judgment of Mrs Justice Rose on 18…
By Klemens Stratmann Currently, the parties involved in appeal proceedings before the EPO see a clear trend towards decisions rendered on formal grounds. If the patentee files new requests along with the statement setting out the grounds of appeal without sufficiently addressing the decision per se, he runs the risk that the appeal is held…
Since February 2015, hedge fund manager Kyle Bass has filed more than 30 petitions seeking Inter Partes review of U.S. patents covering approved pharmaceutical products. Kyle Bass even formed a special entity for this purpose–the Coalition for Affordable Drugs–with a stated goal of targeting patents that “have little value other than to drive up prescription…
One of the tricky consequences of Article 64 of the European Patent Convention (“EPC”), which establishes that the European patent is immediately enforceable after its publication, and Article 99, which provides for “post-grant” oppositions, is that quite often the combination of these two articles fuels two trains that run in parallel where the validity of…
The English High Court (Arnold J.) has granted an application for a stay of the UK High Court proceedings to revoke the UK designation of an EP patent pending the outcome of opposition proceedings at the EPO. The decision is unusual as Arnold J had previously refused to stay the validity proceedings in this case…
Almost everyday someone posts something about the Unified Patent Court or a seminar is offered about the “newest” developments. In fact nobody is able to predict whether the system will “work”. It is said that in order “to be successful” the system needs to be efficient, speedy and affordable. It is also said that it…
In a decision dated 11th July 2014, the English Patents Court (Arnold J.) has again refused to stay proceedings to revoke an EP(UK) whilst opposition proceedings are on-going at the EPO. The decisive factor in this decision seems again to have been the lengthy duration of the EPO proceedings. However, the undertakings offered by the…
In decision T 373/12 of 2 April 2014 the Enlarged Board has been asked to decide on the extent to which the clarity of claims amended during opposition proceedings and opposition appeal proceedings can be challenged when the amendments are based on dependent claims as granted.
