Challenging European Patents and Applications in the EPO Jim Boff Member of the International Liaison Committee (Non-European) IN ASSOCIATION WITH

Why challenge European Patent is a bundle of patents. Once opportunity to challenge at EPO is lost, cost of country-by-country challenge is high. EPO offers two routes to central challenge. Third party observations [3PO]. Opposition.

Third party observations (3PO) Can be filed any time from publication through to grant [and during appeal procedure] Or during opposition if you have missed the deadline If filed late, sits on the file to “poison” it Inexpensive Can be anonymous Flexibility in approach ranging from a “postcard” through to fully reasoned attack

Third party observations 3PO Observer not a party to proceedings But can monitor the file and make repeated observations Entirety of case for invalidity need not be pleaded in one go PROS – Cheap, quick [if the examiner likes an easy disposal], and if you have good art, effective CONS – No official way to accelerate proceedings. No way to participate in hearings. Can improve patent strength? A-3POB-3POC-3PO

Opposition Deadline nine months from publication of grant [with extension in some very rare circumstances] Fully reasoned case required Full party to the proceedings Possibility of intervention by those sued or threatened under patent

Opposition PROS – party status means attendance at any hearings. Cost usually less than national revocation in one country, certainly less than piecemeal national revocation CONS – more expensive than third party observations

Observations after grant Possible during pending opposition proceedings Possible during limitation proceedings If not admissible, observations can sit on the file to “poison” it

Third Party Observation Statistics Growing numbers but still rare [0.75% of applications] Useful to examiners Varied rate according to technology

Opposition Statistics Relatively static at about 5% of grants Twice as likely to win as lose Twice as likely to lose as win Varied rate according to technology

Cost-time considerations

Strategy 3PO cheap and early, but gives applicant flexibility Opposition reduces patentee options but more expensive and slower Both significantly less cost than national revocation in all or a few countries Varied rate according to technology

Conclusions 3PO and Opposition part of the toolkit for patent attorneys in Europe Similar 3PO systems operational elsewhere Will America Invents Act bring new “European” concepts to US practice? Will they be used to the same extent as in Europe?

For more information please contact: Chartered Institute of Patent Attorneys 95 Chancery Lane, London WC2A 1DT Telephone: +44 (0) IN ASSOCIATION WITH