Patent Oppositions and Appeals

To oppose or defend a patent, you need professional representation before the EPO or a national PTO

Does your competitor have a recently granted patent that interferes with your business? You might have come across it as a result of your patent monitoring activities, and now you need to decide on a due reaction. One option that our patent attorneys could assist you with is filing an opposition in order to challenge the validity of the patent in question. An opposition does not require an alleged patent infringement, but it typically must be filed within a period of nine months after grant of the patent.

Grounds for patent opposition

When filing a patent opposition you can argue on the following grounds:

The granted patent lacks one or more of the criteria for patentability;
The description is not sufficiently clear for an expert to follow and practise; or
The granted patent covers and protects aspects that were not included in the initial application.

Outline of the process for patent oppositions and appeals

When an opposition comes in, the responsible patent office (e.g. PRV in Sweden, DKPTO in Denmark or the EPO) will request the patent owner to file their comments, amended claims or auxiliary requests to fall back on. The office summons to a hearing (oral proceedings) and the opposition division decides if the patent is maintained unchanged, or if it has to be amended or revoked. The result can be challenged with an appeal, where a different entity (e.g. Board of Appeals at the EPO) decides.

The proceedings at e.g. EPO require that an authorised patent attorney represents you. We have experienced European Patent Attorneys located in Denmark, Sweden, Norway, Germany and the UK with a great record of accomplishment on opposition proceedings. Our patent attorneys are also qualified to represent you on the national level. Your choice of a skilled patent attorney who acts in your best interest will have significant impact on the outcome, no matter if you are the opponent or the defendant.

What to consider regarding patent opposition proceedings

As the opponent:

Opposition proceedings can help you to have a granted patent of a competitor revoked or amended (if you file within the opposition period).
Generally, opposition proceedings are less expensive than annulment proceedings in court. Attempts to annul are your remaining option to fight a granted patent once the opposition period has expired.
A European Patent can be stopped via opposition before its validation process has started and before the patent gains protection in a selected number of member countries.
Each party has to pay for their own costs whether they win or lose.

As the defendant/patentee:

Consult a patent attorney on how to respond when another party opposes your patent.
Assess the value of the patent for your business, and how much you want to invest for its defense. You will have to pay for your own costs whether you win or lose.
Develop your defense strategy in collaboration with your trusted patent attorney who brings a thorough understanding of the legal framework, helps you to reject the opponent’s arguments and to establish a comfortable fall-back position if the opposition cannot be turned down completely.

For more information, or to discuss your options to oppose or defend a granted patent in opposition proceedings, reach out to one of the following people.

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