08 Jul 2020

Opposing a European patent… it works!

One of our European associates was successful in revoking a European patent from one of our client’s competitors.  The details can be found here: https://register.epo.org/application?lng=en&number=EP15382539.

In summary, the granted patent was deemed to lack an inventive step in view of our client’s technology (not patented) which has been on sale for over 20 years.

The process started back in January 2019 when our client advised us of the grant of the European patent to its competitor.  The opposition period was set to expire on May 2, 2019.

We prepared a prior art package (including articles published by our client, engineering documents prepared by our client and even an article in a company’s internal newspaper) along with arguments against the patentability of the European patent.  All of this was filed with the Opposition papers.

On December 16, 2019, the Opposition Division published its decision rejecting our Opposition and asking the Opponent (our client) to participate in Oral Proceedings on June 23, 2020.  Despite this setback, our client decided to participate in the Oral Proceedings while the Patentee decided not to participate.

On June 23, 2020, our European Associates advised us of the Opposition Division’s decision in our client’s favour.  The competitor has until September 2, 2020 to file an Appeal.

We can conclude that the Opposition proceedings work well in Europe.

On a related matter, it should be noted that we offer a Patent Watch service.  With this service, our clients stay on top of their competitor’s patents and patent applications on a regular basis and hence decide to file opposition when necessary, avoid infringement or use them as inspiration for their own inventions.

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