© 2004 VOSSIUS & PARTNER Opposition in the Procedural System by Dr. Johann Pitz AIPPI Hungary, June 2 – 4, 2004 Kecskemét

by Dr. Johann Pitz © 2004 VOSSIUS & PARTNER AIPPI Hungary, June 2 – 4, 2004, Kecskemét AIPPI Hungary, June 2 – 4, 2004, Kecskemét 2 EPO Opposition and Prosecution  Post-grant opposition  Central procedure during national phases with otherwise independent national patents  Competent Division: Opposition Division, Panel composed of three technical examiners, enlarged by legally qualified examiner in legally complex cases  Legal basis: Arts. 99 – 105 and Rules 55 – 63 EPC

by Dr. Johann Pitz © 2004 VOSSIUS & PARTNER AIPPI Hungary, June 2 – 4, 2004, Kecskemét AIPPI Hungary, June 2 – 4, 2004, Kecskemét 3 Filing of Opposition  „Any person“ (may file opposition) (Art. 99(1) EPC)  Patent proprietor cannot to oppose his own patent  Opposition by straw man generally admissible unless abuse of process  Opposition admissible regardless of no-challenge obligation  Opposition period nine months from the publication of the mention of the grant of the European patent (no restitutio in integrum)  Opposition fee: EUR  Minimum formal requirements:  identity of opponent  identity of opposed patent

by Dr. Johann Pitz © 2004 VOSSIUS & PARTNER AIPPI Hungary, June 2 – 4, 2004, Kecskemét AIPPI Hungary, June 2 – 4, 2004, Kecskemét 4 Grounds for Opposition Grounds for opposition  lack of patentability (Arts. 52 to 57 EPC)  insufficient disclosure (Art. 83 EPC)  inadmissible broadening beyond the content of the application as filed (Art. 123(2) EPC) No grounds for opposition  lack of unity of invention  lack of clarity and conciseness  other formal deficiencies

by Dr. Johann Pitz © 2004 VOSSIUS & PARTNER AIPPI Hungary, June 2 – 4, 2004, Kecskemét AIPPI Hungary, June 2 – 4, 2004, Kecskemét 5 Substantive Examination  The extent of opposition is definitely limited by the original statement of opposition under Rule 55(c) EPC.  The Opposition Division may of its own motion raise or consider fresh grounds for opposition at any time if, there are clear reasons to believe that such fresh grounds would prejudice the maintenance of the European patent.  No fresh grounds may be introduced at the appeal stage unless the patent proprietor explicitly agrees thereto. (G 9/91 and G 10/91).  Concept of “fresh” grounds for opposition elaborated in G 1/95 and G 7/95.

by Dr. Johann Pitz © 2004 VOSSIUS & PARTNER AIPPI Hungary, June 2 – 4, 2004, Kecskemét AIPPI Hungary, June 2 – 4, 2004, Kecskemét 6 Late Introduction of Facts, Evidence and Arguments  EPO may disregard facts or evidence which were not submitted in due time.  The principle of examination by the EPO of its own motion must be balanced against the possibility of disregarding facts or evidence not submitted in due time.  Belatedly introduced facts and evidence are only admitted into the proceedings if they are prima facie highly relevant, especially during appeal proceedings Rule 71a EPC specifies a final date after which new facts and evidence presented need not be considered. Any new facts or evidence should be communicated to the EPO without delay!

by Dr. Johann Pitz © 2004 VOSSIUS & PARTNER AIPPI Hungary, June 2 – 4, 2004, Kecskemét AIPPI Hungary, June 2 – 4, 2004, Kecskemét 7 Continuation of Opposition Proceedings upon Withdrawal of Opposition or Appeal  EPO can continue proceedings even after withdrawal of oppositions.  Appeal proceedings are automatically terminated when the opponent and sole appellant withdraws opposition or appeal.  If the Opposition Division has revoked the patent and the patent proprietor has appealed, the Board of Appeal will still have to examine the substance of the Opposition Division's decision, even after the withdrawal of the opposition in appeal proceedings (important in case of settlement).

by Dr. Johann Pitz © 2004 VOSSIUS & PARTNER AIPPI Hungary, June 2 – 4, 2004, Kecskemét AIPPI Hungary, June 2 – 4, 2004, Kecskemét 8 Statistics In ,200 patents opposed 5.4% of the patents granted

by Dr. Johann Pitz © 2004 VOSSIUS & PARTNER AIPPI Hungary, June 2 – 4, 2004, Kecskemét AIPPI Hungary, June 2 – 4, 2004, Kecskemét 9 Opposition and Infringement proceedings  Interplay between Opposition and Litigation  Amendments and Scope of protection  Opposition and Claim Construction  Suspension of Infringement Proceedings  Intervention of an Assumed Infringer

by Dr. Johann Pitz © 2004 VOSSIUS & PARTNER AIPPI Hungary, June 2 – 4, 2004, Kecskemét AIPPI Hungary, June 2 – 4, 2004, Kecskemét 10 Interplay between Opposition and Litigation  Opposition prior to Infringement Action  Litigation pending prior to Opposition  Revocation during pending Infringement Proceedings  Revocation of the patent in suit after termination of the infringement case  Acceleration of proceedings if infringement action is pending

by Dr. Johann Pitz © 2004 VOSSIUS & PARTNER AIPPI Hungary, June 2 – 4, 2004, Kecskemét AIPPI Hungary, June 2 – 4, 2004, Kecskemét 11 Amendments and Scope of Protection  „Trap“ between Art. 123 (2) and (3) EPC Conclusion: The applicant must be cautious so that amendments made during examination proceedings do not constitute an inadmissible broadening of the content of the original application.  The description, claims and drawings may be amended in opposition proceedings, provided that the amendments are occasioned by the grounds for opposition specified in Art. 100 EPC, even if the respective ground has not been invoked by the opponent. (Rule 57a EPC)  The patent proprietor should make any desirable amendments in opposition proceedings as soon as possible (e.g., by way of auxiliary request).

by Dr. Johann Pitz © 2004 VOSSIUS & PARTNER AIPPI Hungary, June 2 – 4, 2004, Kecskemét AIPPI Hungary, June 2 – 4, 2004, Kecskemét 12 EPO Opposition and Claim Construction I  File Wrapper Estoppel: Restrictions made by the patentee during the granting/ opposition procedure have no meaning for the scope of protection inter alia if they are not reflected in the patent specification (Federal Supreme Court, IIC 2003, 302 – Plastic Tube Part)  According to Art. 69 EPC the prosecution/ opposition file is not mentioned as a source of claim construction

by Dr. Johann Pitz © 2004 VOSSIUS & PARTNER AIPPI Hungary, June 2 – 4, 2004, Kecskemét AIPPI Hungary, June 2 – 4, 2004, Kecskemét 13 EPO Opposition and Claim Construction II  The patentee may, act in bad faith against a participant of opposition proceedings when he declares not to seek protection for a certain embodiment (Federal Supreme Court, NJW 1997, 3377 – Weichvorrichtung II)  Opposition file arguments only in litigation proceedings between patentee and opponent

by Dr. Johann Pitz © 2004 VOSSIUS & PARTNER AIPPI Hungary, June 2 – 4, 2004, Kecskemét AIPPI Hungary, June 2 – 4, 2004, Kecskemét 14 Suspension of the Infringement proceedings  No counterclaim for invalidation of the patent in the infringement proceedings  The infringement court has to accept the patent as granted  Pending opposition proceedings itself are no reason to stay the infringement action  Suspension only in case of high likelihood that the patent in suit will be revoked

by Dr. Johann Pitz © 2004 VOSSIUS & PARTNER AIPPI Hungary, June 2 – 4, 2004, Kecskemét AIPPI Hungary, June 2 – 4, 2004, Kecskemét 15 Intervention of an Assumed Infringer  Any third party against which national proceedings for infringement of the European patent have been instituted may intervene in the pending opposition procedure (including appeal proceedings) within three months of the date on which the infringement proceedings were instituted.  The assumed infringer has to fulfil the same formal and substantive requirements like a regular opponent.  Intervention may be based on any ground for opposition under Art. 100 EPC (including fresh grounds for opposition).

by Dr. Johann Pitz © 2004 VOSSIUS & PARTNER AIPPI Hungary, June 2 – 4, 2004, Kecskemét AIPPI Hungary, June 2 – 4, 2004, Kecskemét 16 Opposition and Assignment Action  The non-entitlement of the patentee is not an opposition ground in the case of European Patents  European Patents and Patent Applications are subject to national assignment proceedings  The EPO Opposition must be stayed as soon as an assignment action is brought in anyone of the designated states of the EP (Rule 13 (4) Implementing Regulations to the Convention on the Grant of European Patents)

by Dr. Johann Pitz © 2004 VOSSIUS & PARTNER AIPPI Hungary, June 2 – 4, 2004, Kecskemét AIPPI Hungary, June 2 – 4, 2004, Kecskemét 17 Opposition and Nullity Suit  Filing a German nullity suit is only admissible if opposition proceedings are no longer pending or opposition term is expired (Sec. 81 (2) German Patent Act)  Federal Patent Court takes a fresh look, however, there is a certain tendency to follow EPO – decisions.

by Dr. Johann Pitz © 2004 VOSSIUS & PARTNER AIPPI Hungary, June 2 – 4, 2004, Kecskemét AIPPI Hungary, June 2 – 4, 2004, Kecskemét 18 THANK YOU! Contact: