We have a wealth of experience in oppositions before the European Patent Office (EPO). We excel at both attacking competitor’s patents as well as defending our clients from third party revocations. Our team is accustomed to handling high-value, complex proceedings and is, for example, currently attacking a suite of highly valuable, cutting edge life sciences patents.
We can draw on a large amount of collective patent opposition experience. However, we are always looking for innovative ways to provide comprehensive and clear strategic advice. We have significant experience in winning both oppositions and appeals for our clients and we have handled a large number of cases with a successful outcome. We have a team of patent attorneys who have decades’ worth of valuable experience representing clients at EPO oral proceedings, both at opposition level and before the Boards of Appeal. Importantly we are a cohesive team.
We regularly represent our clients at hearings before the EPO and are perfectly placed to advise on the latest developments and practice changes of both the EPO’s opposition divisions and the Boards of Appeal. Our attorneys have also participated in oral proceedings conducted by videoconferencing.
A successful outcome in EPO patent oppositions or appeals can be critical and can enable our clients to secure a business advantage over their competitors, or stake a place in a competitive environment. What makes us successful is not just our understanding of the different procedural stages of the process, but also knowledge of the changing practice and in-depth scientific expertise.
Compared to drafting and prosecution, European Patent Office (EPO) opposition work requires attorneys with a specialist skillset. This requires them to possess legal and technical knowledge, determination and focus. They need strategic thinking and persuasive presentation skills.
We have a multi-disciplinary team of attorneys with specialist expertise in handling and winning complex patent oppositions and opposition appeals, particularly at the EPO but also with experience in other jurisdictions.
Read the latest insights from the Schlich team reporting recent cases and updates from the EPO.
In our previous article, we reported an EPO Technical Board of Appeal decision, T 1989/18, that found there to be no legal basis for the long-established practice of requiring applicants to amend the description of their European patent applications prior to grant so that they conform with the allowed claims of the application. However, in this decision (T 1024/18), a different Board of Appeal has effectively overturned the earlier decision, concluding that amending the description is necessary to meet the support requirement of Art. 84 EPC.
The EPO has introduced new versions of the Guidelines for Examination in the European Patent Office and the Guidelines for Search and Examination at the EPO as PCT Authority. Both sets of Guidelines took effect on 1 March 2022, as part of the EPO’s regular two-yearly cycle of revisions.
The Legal Board of Appeal has confirmed that an AI system cannot be the inventor of a patent application at the EPO, agreeing with the decision of the Receiving Section (reported by us in our article of February 2020).
Background In this case, the applicant appealed an Examining Division decision to refuse an application under Art. 84 EPC as the applicant did not, in the Examining Division’s view, sufficiently amend the description to conform with the allowed claims. On appeal, the applicant argued that there was no basis for refusing an application simply because […]
Background In case T 1807/15, both the Appellant and the Respondent expressed a desire not to hold oral proceedings in the form of a videoconference. Despite this, the Board of Appeal arranged oral proceedings in this format and these were conducted by videoconference anyway. During the oral proceedings, the Appellant asked the Board of Appeal […]
Background Although double patenting objections have often been raised during examination of European patent applications, the legal basis for such objections has regularly been questioned over recent years. Previous Enlarged Board of Appeal decisions G1/05 and G1/06 had been considered to approve the practice of objecting to double patenting at the EPO. However, as these […]
EPO Board of Appeal says no to Third Party Opinions filed during appeal proceedings which could and should have been filed earlier
The decision in more detail In first instance proceedings concerning European patent EP1369037, the Opposition Division concluded as follows: The subject-matter of claims 1 and 2 as granted was not novel in view of the disclosure of each of D1, D2 and D4. The subject-matter of claims 1 and 2 according to AR1 was not […]
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