Common pitfalls in opposition

Patents

Written by René van Duijvenbode

As a patentee, you are pleased that your European patent application has made it to grant, and you just invested more money to validate the patent in a number of countries. That is, you indicated the European countries where you wanted the patent to have an effect. You are hopefully justified in thinking that in those countries, your technology is now protected from copycats and that the patent will help you stay one step ahead on the competition.

However, the decision of a three-member Examining Division of the EPC to grant you a patent is not necessarily the final say in the matter. Parties with an interest in the patented technology may want a piece of it or indeed the freedom to operate, and therefore see the patent as an obstacle blocking their way. While, in theory, you could see this as a compliment, it may still come as an unpleasant surprise that somebody objects to your patent and asserts that the EPO was incorrect in granting you a patent.

The European patent system allows for third parties to centrally oppose the patent before the EPO.

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The rules of opposition

National invalidation routes involving the courts are available to such parties, but often come at significant cost and the impact is generally limited to only a single jurisdiction. However, the European patent system allows for third parties to centrally oppose the patent before the EPO. The rules of opposition seem simple: any third party can – even anonymously – file an opposition to a granted patent provided the opposition is filed within a nine-month window from the date that mention of the grant is published. The grounds for opposition are similar to the objections that you may have faced during examination, where you had to convince the Examining Division that there was an invention in the claims. Again, your invention is under scrutiny and again, a threemember division from the EPO (the Opposition Division) will decide on the matter. Compared to national court proceedings, there are two key points: opposition before the EPO is a centralized procedure, with an effect on the European patent everywhere in Europe where it has been validated. The Opposition Division that decides on the fate of your patent will be composed of technically skilled people.

With your patent under attack, you are bound to incur costs to defend your case. And while you as the proprietor may be confident that the EPO took the right decision in granting you a patent, there are a few aspects to consider.

Article 'Common pitfalls in Opposition'

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Our patent attorneys can support you by assessing the potential risk of the invalidation of your patent after grant and helping you to manage that risk. You can read more about our opposition services here: https://www.nlo.eu/en/opposition