Martin Vinsome's Presentation from the event "Stopping them from Stopping you"

Oppositions in the European Patent Office Martin Vinsome, UDL 10 November 2009

AGENDA

Introduction

What are oppositions?

What are the benefits of oppositions?

How do we find out what to oppose?

How do we oppose?

Introduction

What do I know about my competitors’ products?

What do I know about my competitors’ prices?

What do I know about my competitors’ patents?

Introduction

Competitor’s patent could prevent sale of my product, or be used to persuade customers to buy competitor’s product rather than mine

Potentially much more harmful than competitors’ pricing

What can we do if we identify a potentially problematic patent application of a competitor?

Think about EPO opposition procedure

Definition

European Patent Convention Article 99

(1) Within nine months of grant of a European patent, any person may give notice to the European Patent Office of opposition to that patent.

(2) The opposition shall apply to the European patent in all the Contracting States in which that patent has effect.

Grounds for opposition

European Patent Convention Article 100

(a) Patented invention lacks novelty or inventive step, or is an excluded category of invention - commonest reason for opposing

(b) European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art - rarely succeeds on its own

(c) subject-matter of the European patent extends beyond the content of the application as filed – mainly used in combination with (a)

i.e. 70% chance of opposition being at least partly successful

70% chance of partial success

Almost 40% of opposed patents revoked

Over 30% of opposed patents restricted in scope

Affects patent in all EPC countries

Who is applying for patents?

Who is Opposing them?

Monitor competitors’ patent activities

1. Identify relevant classifications from Epoline – your own patent cases can help this

Please contact UDL for a link to this web page

2. Find out what classifications mean from WIPO classification guide

3. Search in Epoline under relevant classification(s)

How do we oppose?

Search for relevant prior art by

(i)searching under relevant classifications in Espacenet

or

(ii) instructing firm of patent searchers to carry out prior art search

Example

Irvin Automotive

Products Inc.

Abstract of EP 0911219 (A2) A security shade support assembly (10) for mounting a roller tube having a flexible panel wound thereon within a motor vehicle includes a housing (20) extending axially, an axle (36) extending through the housing, a bearing (58) receiving the axle and cooperating with the housing and attached to the roller tube, and a spring (50, 78) disposed within the housing for biasing the bearing and a groove (34, 72) extending axially along the bearing and the housing to allow the roller tube and shade panel to extend over at least a portion of the housing.