Patent Oppositions in the European Patent Office Darrin Shaya, Black & Decker 10 November 2009

Oppositions – enhance competitive position Strategy Offensive Defensive Remove Obstacles Increase cost base Customer/licensee uncertainty Negotiation use Unsafe to sell to customer War Chest Reaction to litigation threat Delay National Proceedings (?) Negotiation use

Oppositions – enhance competitive position Prior Art collation / management IP budget allocation Competitor Watch Forum Shopping Tactics

Oppositions – enhance competitive position Lose Faith in IP? Glass Houses & Stones Time & Resources Exhaust Defences / Art Clear a Path for Competitor Risks

Oppositions – enhance competitive position Costs National Proceedings Vs Opposition Use weapons or keep in reserve Time scales Need to contrast

Oppositions – enhance competitive position Real examples: Global competitor A Escalating infringement accusations - $80m+ risk Require freedom to use and removal of $ risk Multi-jurisdictional litigation threatened War Chest approach & oppose their other patents Free X-licences

Real examples:

Global competitor A

Escalating infringement accusations - $80m+ risk

Require freedom to use and removal of $ risk

Multi-jurisdictional litigation threatened

War Chest approach & oppose their other patents

Free X-licences

Oppositions – enhance competitive position Competitor B An acquisition target. IP valued by B at 10s of $m Prior to due diligence, oppose B’s key patents IP valuation significantly reduced Overall purchase price reduced by $7m Zero risk

Competitor B

An acquisition target.

IP valued by B at 10s of $m

Prior to due diligence, oppose B’s key patents

IP valuation significantly reduced

Overall purchase price reduced by $7m

Zero risk

Oppositions – enhance competitive position Competitor C Small company poaching staff and taking confidential information Using outside counsel for all IP Oppose a raft of C’s patents C’s costs ramp up C in administration

Competitor C

Small company poaching staff and taking confidential information

Using outside counsel for all IP

Oppose a raft of C’s patents

C’s costs ramp up

C in administration

Oppositions – enhance competitive position Aware of all competitor products & pricing Aware of their patents, too ? Clearance process ? Competitor patents could prevent your sales, but their prices cannot Oppositions complimentary to (or instead of) clearance

Aware of all competitor products & pricing

Aware of their patents, too ?

Clearance process ?

Competitor patents could prevent your sales, but their prices cannot

Oppositions complimentary to (or instead of) clearance