1. 1 TOPIC III - PATENT INVALIDATION PROCEDURES EU-CHINA WORKSHOP ON THE CHINESE PATENT LAW HARBIN, 24-25 SEPTEMBER 2008 Dr. Gillian Davies

2. 2 PATENT INVALIDATION PROCEDURES IN EUROPE 1. UNDER THE EUROPEAN PATENT CONVENTION (EPC) 2. UNDER THE EU PROPOSAL FOR A EUROPEAN PATENT COURT

3. 3 1. PATENT INVALIDATION PROCEDURES UNDER THE EUROPEAN PATENT CONVENTION 1. THE OPPOSITION PROCEDURE 2. THE APPEAL PROCEDURE 3. NEW LIMITATION AND REVOCATION PROCEDURE UNDER EPC 2000 4. ACCELERATED PROCESSING AT THE EUROPEAN PATENT OFFICE

4. 4 THE OPPOSITION PROCEDURE Opposition is a central administrative procedure for examining the validity of a granted European Patent at the request of a third party It takes place before an “Opposition Division“ It applies to all states in which the patent has effect It is contentious: Opponent v. Patentee Arts. 99-105 EPC

5. 5 Within 9 months of the publication of mention of grant of the patent Permissible even if the patent has lapsed or surrendered In 2006, 2,987 oppositions filed WHEN CAN OPPOSITION BE FILED?

6. 6 WHO CAN OPPOSE? Any natural or legal person No requirement of “ interest “ But NOT the patentee (but see new procedure for limitation under A. 105a EPC 2000) NB Intervention of assumed infringer permitted

7. 7 GROUNDS OF OPPOSITION Not patentable because: Not new Not inventive Not susceptible of industrial application Does not have a “technical“ character Insufficient disclosure Added subject-matter Art. 100 EPC

8. 8 DECISIONS Decisions to reject the opposition, to revoke the patent or to maintain it in amended form may only be taken on grounds on which parties have had an opportunity to comment Usually after at least one communication “Oral proceedings” must be held before decision if requested by a party Open to appeal Arts. 113, 101 and 116 EPC

9. 9 THE APPEAL PROCEDURE Appeals lie to the boards of appeal of the EPO from decisions of the departments of the first instance The boards are judicial in nature: “expert courts of great persuasive authority” Appeals have suspensive effect Right to Oral Proceedings (Art. 116 EPC) Decisions are final (but see new petition for review by Enlarged Board under A. 112a EPC 2000)

10. 10 PARTIES TO APPEALS The Appellant(s) – “adversely affected” The Respondent – as of right Interveners – infringement actions Third Party observations possible No cross-appeals; each party must appeal separately Art. 107 EPC

11. 11 Notice of appeal must be filed within two months of first instance decision and appeal fee paid Grounds of appeal (reasoned arguments) must be filed within four months These time limits cannot be extended Art. 108 EPC FILING AN APPEAL

12. 12 LIMITATION AND REVOCATION UNDER EPC 2000 A patentee can request that the scope of protection of his patent be limited by an amendment of the claims, or that the patent be revoked completely. The request may not be filed while opposition proceedings are pending Art. 105a-c and R. 90-96 EPC 2000 New procedures  Limitation and Revocation

13. 13 LIMITATION AND REVOCATION UNDER EPC 2000 (2) The procedure: 1. Is available for the whole life of the patent: it applies to the patent as granted or amended in opposition or limitation proceedings before the EPO 2. Has ab initio effect 3. Is ex parte 4. Limitation is by amendment of the claims 5. The final decision applies to all designated states 6. Opposition proceedings take precedence over limitation proceedings 7. The decision may be appealed New procedures  Limitation and Revocation

14. 14 ACCELERATED PROCESSING AT THE EPO Accelerated processing is available in opposition and appeal proceedings 1. Opposition: where an infringement action in respect of a European patent is pending before a national court, a party to the opposition proceedings or the national court or competent authority may request accelerated processing at any time. The EPO must then take first action within 3 months. EPO notice dated 17 March 2008, OJ EPO 2008, pp. 221-222 1. On appeal

15. 15 ACCELERATED PROCESSING ON APPEAL 2. Appeal: Parties to an appeal and the courts and competent authorities of contracting states may request accelerated processing. Justifications for dealing with an appeal rapidly include: - pending or envisaged infringement proceedings - where potential licensing agreements hinge on the outcome of the appeal - where an opposition with accelerated processing is the subject of an appeal The Board of Appeal decides whether or not the case is urgent; if so, the case is given priority EPO notice dated 17 March 2008, OJ EPO 2008, pp. 220-221

16. 16 When a European Patent is granted and/or maintained in opposition or appeal proceedings by the EPO a bundle of national patents comes into existence which can be attacked before national courts This is a major disadvantage of present system INVALIDATION OF EUROPEAN PATENTS BY NATIONAL COURTS

17. 17 2. PATENT INVALIDATION PROCEDURE UNDER THE EU PROPOSAL FOR A EUROPEAN PATENT COURT Draft Agreement on the European Union Patent Court, Brussels, 14 May 2008

18. 18 THE ORGANS OF THE COURT 1. The Court shall comprise a Court of First Instance and a Court of Appeal 2. The Court of First Instance shall comprise a central division as well as local and/or regional divisions Draft Agreement, Art. 4

19. 19 THE COMPETENCE OF THE COURT The Court will have exclusive competence in respect of inter alia: (a) actions for actual or threatened infringements or for a declaration of non-infringement; (b) actions or counterclaims for revocation Draft Agreement, Art. 15

20. 20 ALLOCATION OF CASES 1. Direct actions for revocation or declarations of non- infringement shall be brought before the central division, provided no action for infringement has been initiated between the same parties on the same patent before a local or regional division 2. The plaintiff is not obliged to initiate opposition proceedings before the EPO 3. If an action for revocation is pending before the central division, an action for infringement may be initiated before a local or regional division. The latter may either stay the proceedings or refer the action for decision to the central division 4. An action for declaration of non-infringement pending before the central division shall end if an infringement action is initiated Draft Agreement, Art. 15a

21. 21 Thank you very much for your attention! ANY QUESTIONS? gilliandavies@hogarthchambers.com www.hogarthchambers.com © Gillian Davies September 2008