> AOAIOIP September 9, 2004, Cleveland September 10, Cincinnati EPO oppositions Christophe Saam

Three options for disputing the validity of an EP patent > Before grant: third party observations under Art.115 EPC After grant: Opposition under Art. 99 EPC After the opposition period: independent proceedings for revoking the patent must be brought in the Courts of each State designated by the European Patent (Art. 138 EPC + national laws)

Art. 115 EPC - Third party observations > (1) Following the publication of the European patent application, any person may present observations concerning the patentability of the invention in respect of which the application has been filed. Such observations must be filed in writing and must include a statement of the grounds on which they are based. That person shall not be a party to the proceedings before the European Patent Office. (2) The observations referred to in paragraph 1 shall be communicated to the applicant or proprietor of the patent, who may then comment upon them.

Observations by third parties: Pros > Cheap - no fees Very few (if any) formal requirements Usually comprise just a list of prior art references with some comments and arguments Already possible before grant May be filed anonymously The observations, and the comments of the applicant on the observations, are part of the application file and thus available to the public The Examiner must consider the observations if they are relevant The documents cited by a third party during the examination may still be used in a potential subsequent opposition. The opposition division will not disregard the citations just because they have already been filed.

Observations by third parties: Cons > It is not sufficient to send documents; the observations must be substantiated. Only possible before grant, or after grant if an opposition has been filed. In practice, third party observations filed after a decision to grant are likely to be disregarded by the Examining Division. It is recommended to wait for the publication of the search report and to file observations as soon as possible thereafter. Ex-parte procedure: the third party is not invited to give his opinion on the comments of the applicant (he may however do so by filing new observations). The applicant may get a chance to adapt his claims in order to make the patent valid over the new prior art. The applicant has more possibilities to amend the claims in order to make them valid than in an opposition procedure.

Main features of the opposition proceeding > Procedure inter-parte (Art. 99(4) EPC) Much cheaper, and usually less arbitrary, than litigating in Courts in each designated European state Must be filed in writing within 9 months from the publication of the mention of the grant of the EP patent (Art. 99(1) EPC) The opposition fee must be paid and a notice of opposition (including facts, evidence and arguments) must be filed within the same deadline Average duration: about 3 years An appeal may be filed against the decision of the opposition division (Art. 106 EPC)

Art. 99 EPC - Opposition > (1) Within nine months from the publication of the mention of the grant of the European patent, any person may give notice to the European Patent Office of opposition to the European patent granted. Notice of opposition shall be filed in a written reasoned statement. It shall not be deemed to have been filed until the opposition fee has been paid. (2) The opposition shall apply to the European patent in all the Contracting States in which that patent has effect. (3) An opposition may be filed even if the European patent has been surrendered or has lapsed for all the designated States. (4) Opponents shall be parties to the opposition proceedings as well as the proprietor of the patent.

Art. 100 EPC - Grounds for opposition > (a) Patentability issues: lack of novelty, lack of inventive step, lack of industrial applicability; (b) the European 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; (c) the subject-matter of the European patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application or on a new application filed in accordance with Article 61, beyond the content of the earlier application as filed. Formal deficiencies, applicant not entitled to the patent, non-unity, lack of clarity, for example, are not grounds for opposition in Europe.

Art. 99 EPC - Opponent > Any person may oppose, but: The identity of the real opponent must be indicated (Rule 55 EPC) An opposition filed by a straw man is deemed not admissible Opposition may only be transferred with all the actives of the company

Language of the opposition > English, German or French (Rule 1 EPC) It is possible to file an opposition in German or in French against an English- language patent If there are several opponents: each may choose a different language The opposition division uses the language in which the patent has been published, unless requested otherwise by all parties During oral proceedings, each party may speak their own language, but interpretation is provided by the EPO (upon request) (Rule 2 EPC)

Art. 19 EPC - The opposition division > Usually three technical examiners However, examination of the opposition is usually entrusted to one member of the opposition division until final decision is taken Usually includes one member of the examining division who granted the patent, but not as a chairman

Art. 101 EPC - Examination of the opposition > The EPO examines if the opposition is admissible If yes, the EPO examines if the opposition contains formal deficiencies, and may invite the opponent to correct them (if possible). A copy of the opposition is transmitted to the proprietor, who is invited to file amendments or arguments. The opponent may comment on the proprietor’s answer but he is usually not invited to do so. He may also file new prior art which may or may not be accepted by the opposition division, on a discretional basis. In turn, the proprietor may comment or file new amendments at any time. Etc. A request for oral proceedings is usually filed by at least one of the parties. If this is the case, the opposition division is not authorized to make a decision that will prejudice this party until all parties have been heard.

Art. 101 EPC - Examination of the opposition > (1) If the opposition is admissible, the Opposition Division shall examine whether the grounds for opposition laid down in Article 100 prejudice the maintenance of the European patent. (2) In the examination of the opposition, which shall be conducted in accordance with the provisions of the Implementing Regulations, the Opposition Division shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Opposition Division, on communications from another party or issued by itself.

Art. 102 EPC – Revocation or maintenance – 1/2 > (1) If the Opposition Division is of the opinion that the grounds for opposition mentioned in Article 100 prejudice the maintenance of the European patent, it shall revoke the patent. (2) If the Opposition Division is of the opinion that the grounds for opposition mentioned in Article 100 do not prejudice the maintenance of the patent unamended, it shall reject the opposition. (3) If the Opposition Division is of the opinion that, taking into consideration the amendments made by the proprietor of the patent during the opposition proceedings, the patent and the invention to which it relates meet the requirements of this Convention, it shall decide to maintain the patent as amended, provided that: (a) it is established, in accordance with the provisions of the Implementing Regulations, that the proprietor of the patent approves the text in which the Opposition Division intends to maintain the patent; (b) the fee for the printing of a new specification of the European patent is paid within the time limit prescribed in the Implementing Regulations.

Art. 102 EPC – 2/2 > (4) If the fee for the printing of a new specification is not paid in due time, the patent shall be revoked. (5) Provision may be made in the Implementing Regulations for the proprietor of the patent to file a translation of any amended claims in the two official languages of the European Patent Office other than the language of the proceedings. If the translation has not been filed in due time, the patent shall be revoked.

Grant Opposition Formality / admissibility check Transmission to patentee Comments / amendments from proprietor Comments from opponent new prior art (?) Invitation to oral proceedings Decision by the opposition division EPOOpponentProprietor Appeal by opponent and / or proprietor

A123 - Amendments filed by the proprietor > Possible at every moment, even during the oral proceedings (subject however to the discretionary power of the opposition division). It is very common to file a main request with a first set of claims (for example the set of claims as granted) and one or several auxiliary requests with various more limited set of claims. The opposition division must examine all requests until one is found to be valid, or until all are found to be invalid. Even if clarity is not a ground for opposition, amendments which introduce new clarity issues are not allowed. Unity of invention of the granted patent is not requested.

Art. 123 EPC - Amendments > Art. 123(2) EPC: Patent may not contain subject-matter which extends beyond the content of the application as filed. The approach in Europe is very formalistic as compared with the USPTO. It is not allowable to introduce new features in the claims which are not (if possible explicitly) supported by the initial application – even if the new feature limits the scope of protection, or if the feature is obvious for the one skilled in the art. The scope of protection may however be extended during examination, but only based on features or embodiments which are part of the whole content of the application. It is not possible anymore to extend the scope of protection during opposition (even based on the content of the initial application): Art. 123(3) EPC: the claims of the European patent may not be amended during opposition proceedings in such a way as to extend the protection conferred.

Art 123 EPC - Amendments > Example of claim: A widget comprising X, Y and Z is not allowable if the initially filed application does not disclose Z. However, feature Z can not be deleted without extending the scope of the claim, which is contrary to Art. 123(3) EPC: the claim has to be deleted. If the claim is the only independent claim, the patent has to be revoked.

Filing new prior art against a patent after the opposition period > Prior art filed late may be disregarded by the opposition division (Art. 114(2) EPC). However, the EPO has a duty to examine the facts ex-officio (Art. 114(1) EPC), and will usually do so if the new documents are a priori relevant. In appeal, new documents should be accepted only in exceptional cases. Better to file all relevant documents within the 9-months time limit. Try to overkill the patent, but don’t file irrelevant or useless prior art. New grounds for opposition cannot be added after the opposition period. For instance, if the notice of opposition objects only on the grounds of lack of novelty, an attack filed subsequently against the inventive step will not be considered.

Being successful at oppositions - from the opponent’s point of view > Success at opposition very often depends on the prior art cited against the patent during the nine months’ opposition period. Ask your European representative to perform or complete a prior art search. It is likely that he will find new items of prior art – for example documents in other (non-English) European languages. Your EP agent is also in a better position to identify and select a good set of documents from which a convincing problem-solution argument against the inventive step can be constructed. The proprietor may amend the main claims in any possible way during the opposition, provided the amendment is supported by the dependant claims or even by the specification. Don’t neglect those fallback positions when you cite prior art.

Being successful at oppositions - from the proprietor’s point of view 1/3 > Unless you have good reasons to advertise the patent, try to avoid oppositions by drafting abstracts that are not too descriptive and by selecting a figure for publication that is not too illustrative in the first page of the application. If feasible, try to hide your patent even more by choosing German or, even more exotic, French as a language of the proceedings. Even if it is not required in Europe, adapt the claims of your European Patent to the prior art cited against parallel applications. Don’t provoke oppositions by giving potential opponents easy ways to contest your main claims.

Being successful at oppositions - from the proprietor’s point of view 2/3 > Success at opposition obviously depends mainly on the quality of the granted patent, and on a good drafting and prosecution of the application. Prepare enough fallback positions should the novelty or inventive steps of your independent claims be contested. Draft enough dependant claims. Have a more detailed specification.

Being successful at oppositions - from the proprietor’s point of view 3/3 > During examination, be careful if you need to file any amendments. Check with your European representative if the amendments may be interpreted in a way as to cover undisclosed embodiments. Be very conservative if you are unsure, and remember that the EPO’s approach is very conservative. Don’t accept amendments proposed by the Examiner unless they have been carefully reviewed. It may be a good strategy to file a divisional application of important applications for which an opposition is likely to be filed – just to keep a pending application should the parent application be opposed.

Art. 116 EPC - Oral proceedings > May be requested by any party (usually requested by all parties) Usually held in Munich (sometimes in The Hague or Berlin) Inter-parte; public May be held in English, German, French, or any combination; interpreters are provided by the EPO upon request. Usually the opponent starts by expounding on the first ground of opposition again the proprietor’s main request. The proprietor answers on this ground, and the examining division makes a decision on this point. If the main request is found to be valid, the other grounds of opposition against this request will be discussed. Otherwise, the next auxiliary request is discussed. Etc., until a request has been found to be valid against all grounds of opposition, or until all requests have found to be invalid.

Art. 102 EPC -Decision of the opposition division > In most instances, a decision is made during the oral proceedings concluding the opposition procedure, and confirmed in writing. The patent may be maintained, revoked, or maintained in an amended form proposed by the proprietor. If the patent is maintained in amended form, a new specification will be published. A printing fee must be paid within three months from a notification to that effect. A translation of the amended claims in all EPO official languages must be filed within the same time limit. Most European States further require a translation of the (entire) amended patent to be filed in one prescribed language. The party or parties adversely affected by the decision may file an appeal within two months after the date of notification in writing of the decision.

Statistics on the Opposition > Oppositions are filed against 5,2% of EP patents (2003) 1/3 of the opposed patents are revoked, 1/3 are maintained without any changes, 1/3 are maintained with some amendments Average duration: about 3 years (depends on the field; usually longer in IT or biotech) Average duration of subsequent appeal (if applicable): about 2,5 years Costs: usually less than 30’000$ + cost of prior art search Average cost of a subsequent appeal : usually less than 20’000$

Art EPC - Appeal > May be filed by any party adversely affected by the decision. The other parties to the opposition are parties to the appeal by right. If the patent is maintained in amended form, both parties may file an appeal. As the decision of the Board of Appeals may not be prejudicial to a single appellant, it is very common that all opponents file an appeal as a precaution after the opposition. Notice of appeal must be filed in writing within two months from the notification of the decision; the appeal fee must be paid within the same time limit. Written statement setting out the grounds for appeal must be filed within four months.

Art EPC - Board of Appeals > Consists of two technically qualified members and one legally qualified member. If the nature of the appeal so requires, three technically qualified members and two legally qualified members. Members may not be members of the Examining or Opposition Divisions. Members are not bound by any instructions, and shall comply only with the provisions of the EPC. Members may not take part in any appeal if they have any personal interest therein, if they have previously been involved as representatives of one of the parties, or if they participated in the decision under appeal.

Examination of the appeal > Admissibility check. If admissible, transmission to all parties who may be invited to comment on it, or may comment on their own. A decision is usually taken during oral proceedings concluding the appeal, if requested by the parties. The decision may be to maintain the patent, to revoke it, to maintain it in an amended form (which may be different from the form maintained by the opposition division). If the patent is maintained while there are still grounds for opposition which have not be considered by the opposition division, the patent is returned to the opposition division. Appeal may still be filed by any party against the decision of the division of opposition on those new grounds.

Enlarged Board of Appeals > Not a third instance (yet). Only the Board of Appeals and the President of the European Patent Office may refer to it for deciding points of law.

> Opposition against European Patents A cost-effective and (usually) predictable procedure for disputing the validity of European Patents

> CHRISTOPHE SAAM Electrical engineer, European Patent Attorney, born in 1967 in Neuchâtel. Languages: French, German, English. After his studies of electrical engineering at the Lausanne Swiss Federal Institute for Technology, Christophe Saam was in charge of research in the field of holograms used in the manufacture of integrated circuits. He then was search examiner at the European Patent Office in Berlin, where he became acquainted with patent law and on-line search techniques in the field of flat screens, error coding and data compression. Upon returning to Switzerland in 1994, Christophe Saam devoted himself to advising clients active in electronics, telecommunications, microtechnology and watchmaking regarding patent prosecution and opposition proceedings. Admitted as European Patent Attorney with the European Patent Office, he is also a member of different Swiss and international professional associations, such as AIPPI, LES, and VESPA. Christophe Saam teaches patent law within the framework of the International Intellectual Property Study Centre of the University of Strasbourg. He contributes a column on intellectual property matters in the Swiss economical journal AGEFI. In 1998, he founded the patent law firm P&TS whose president and director he is.

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