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EPO Oppositions & Appeals
Oppositions at the European Patent Office (EPO) are the only mechanism for central revocation of a European patent. Consequently, oppositions can be important business tools which can be used to secure a competitive advantage, especially when invalidating a competitor’s patent.
PROFESSIONAL SERVICE
EPO OPPOSITIONS
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.
Recent Insights
Read the latest insights from the Schlich team reporting recent cases and updates from the EPO.
G 1/21 – Enlarged Board of Appeal Creates More Questions Than Answers
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 […]
EPO Confirms Prohibition on Double Patenting
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 […]
G 1/21 – Enlarged Board of Appeal Set to Consider the Legality of Oral Proceedings held by Videoconference Without the Parties’ Consent
The context of the referral The parties to the proceedings in T 1807/15 were originally summoned to in-person Oral Proceedings scheduled for 3 June 2020. Due to the COVID-19 pandemic, the Oral Proceedings were postponed to 8 February 2021. On 8 January 2021, the Patentee requested that the Oral Proceedings be postponed further due to […]
EPO Board of Appeal Overturns Opposition Division’s Finding of Fact
Previous Case Law It has previously been well-established that the EPO Boards of Appeal should not generally overturn findings of fact made by first instance examination or opposition decisions. EPO Decision T 1418/17 set out a limited number of circumstances in which a Board of Appeal should revoke the evidence assessment of a first instance […]
EPO Casts Light on Opponents’ Masked Clarity Attacks
EPO Decision T1285/15 relates to an appeal from an Opposition Decision to maintain (in amended form) European Patent No. EP1567358 owned by De La Rue International Limited. The patent relates to security devices, for example those used to verify the authenticity of documents. The security device comprises two different materials which appear to have the […]
Acknowledgement of a Procedural Violation
A very rare Appeal Decision by the European Patent Office has recently been issued in which a substantial procedural violation by the Office has been acknowledged meaning that an appeal fee was refunded. This Decision also provides useful guidance on how to sufficiently disclose an invention in a valid European patent. Following opposition proceedings filed […]
G3/19: Enlarged Board Referral (Broccoli, Tomatoes and Peppers)
Background In T 1063/18 (Peppers), the Board held that Rule 28(2) EPC should be disregarded, and that plants produced by essentially biological processes should be considered patentable. Specifically, the Board found that the EPO Administrative Council’s (AC’s) amendment of Rule 28 EPC was in conflict with the prior interpretation of Article 53 EPC in G […]
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Our team of UK and European Patent Attorneys and Chartered Trade Mark Attorneys are highly knowledgeable and experienced in assisting clients with all aspects of their IP needs.
Contact us now to find out more about how we could help you and your business.
