PROFESSIONAL SERVICE
EPO OPPOSITIONS
We have a wealth of experience in oppositions before the European Patent Office (EPO). We excel at both attacking competitor’s patents as well as defending our clients from third party revocations. Our team is accustomed to handling high-value, complex proceedings and is, for example, currently attacking a suite of highly valuable, cutting edge life sciences patents.
We can draw on a large amount of collective patent opposition experience. However, we are always looking for innovative ways to provide comprehensive and clear strategic advice. We have significant experience in winning both oppositions and appeals for our clients and we have handled a large number of cases with a successful outcome. We have a team of patent attorneys who have decades’ worth of valuable experience representing clients at EPO oral proceedings, both at opposition level and before the Boards of Appeal. Importantly we are a cohesive team.
We regularly represent our clients at hearings before the EPO and are perfectly placed to advise on the latest developments and practice changes of both the EPO’s opposition divisions and the Boards of Appeal. Our attorneys have also participated in oral proceedings conducted by videoconferencing.
A successful outcome in EPO patent oppositions or appeals can be critical and can enable our clients to secure a business advantage over their competitors, or stake a place in a competitive environment. What makes us successful is not just our understanding of the different procedural stages of the process, but also knowledge of the changing practice and in-depth scientific expertise.
Compared to drafting and prosecution, European Patent Office (EPO) opposition work requires attorneys with a specialist skillset. This requires them to possess legal and technical knowledge, determination and focus. They need strategic thinking and persuasive presentation skills.
We have a multi-disciplinary team of attorneys with specialist expertise in handling and winning complex patent oppositions and opposition appeals, particularly at the EPO but also with experience in other jurisdictions.
Recent Insights
Read the latest insights from the Schlich team reporting recent cases and updates from the EPO.
EPO to End “10-Day Rule”
The EPO “10-day rule” has for a long time effectively acted as a grace period during which certain responses can be timely filed after the deadline calculated from the face of an official communication only. However, the EPO are abolishing the 10-day rule and for deadlines set after 1 November 2023 this effective extension will not apply. Therefore, it is important that applicants and their representatives, who commonly rely on the grace period offered by the 10-day rule, recognise and remember that this option will not be available to them after 1 November 2023.
Gold Standard for Novelty of Subranges
A recent EPO Board of Appeal decision has dismissed the common test for novelty of a subrange and has instead proposed that the so-called “gold standard” test should be used. Under the gold standard novelty test, a claimed subrange is considered novel simply if there is no direct and unambiguous disclosure of the claimed subrange – regardless of whether the subrange is “sufficiently far removed” from any range in the prior art.
Enlarged Board of Appeal grants 10th Petition for Review
Any party to appeal proceedings adversely affected by the decision of the Board of Appeal can file a Petition for Review of the decision by the Enlarged Board of Appeal. However, such petitions may only be filed on the grounds that: (i) the composition of the board was not correct, (ii) a fundamental violation of the right to be heard occurred (iii) a fundamental procedural defect occurred (iv) a criminal act had an impact on the decision. Historically, the success rate of Petitions for Review at the EPO has not been high, falling at around 5%. That said, November saw the granting of the 10th Petition for Review. Read on to get a flavour of what it takes to succeed.
Videoconferencing becomes the norm at the EPO
Following the start of the COVID-19 pandemic in March 2020, the EPO quickly adopted videoconferencing as an alternative to holding in-person oral proceedings at the EPO sites in Munich and The Hague. The EPO has been running a pilot project since then to determine whether videoconferencing should continue to be used now that many countries have dropped the restrictions they introduced as a result of the pandemic. Accordingly, the President of the EPO has recently decided that videoconferencing should in future be adopted as the default format for all first instance oral proceedings before the EPO, with in-person oral proceedings only being held if there are “serious reasons” justifying this. For oral proceedings before the Boards of Appeal, the format of the oral proceedings will continue to be decided on a case-by-case basis.
Enlarged Board of Appeal issues Preliminary Opinion in “Plausibility” referral G 2/21.
The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has issued a Preliminary Opinion in the Plausibility referral G 2/21. Unsurprising is the EBA’s answer to the first question: post-published evidence should not be disregarded. More thought provoking, however, is the EBA’s answer with respect to when and how to use it (questions two and three): reliance on post-published evidence for establishing inventive step is permitted provided that (1) the technical effect relied upon is encompassed by the technical teaching in the application as filed and embodies the same invention and (2) there are no significant reasons to doubt it; however, if significant doubts exist reliance on the post-published evidence is ‘questionable’. Of course, at this stage we have just the Preliminary Opinion, which is non-binding, and so close attention needs to be paid to both the Oral Proceedings set to take place on 24 November 2022, and to the ensuing decision which is expected in the first half of 2023. Further updates will be provided as developments occur.
Can You “Unadmit” a Document Filed during EPO Proceedings?
Whether a document is admitted to proceedings before the European Patent Office (EPO) can often be a highly contested and charged matter. This is because proceedings can hinge on conclusions drawn from a particular document and thus a case can turn on whether a document is admitted to proceedings.
Amicus Brief in Referrals G1/22 and G2/22: “Entitlement to Priority”
In the Priority Referrals before the EPO Enlarged Board of Appeal, the Schlich Amicus Curiae has been filed. It is conveniently reproduced here …
EPO Board of Appeal Confirms Requirement for Description Amendments
In our previous article, we reported an EPO Technical Board of Appeal decision, T 1989/18, that found there to be no legal basis for the long-established practice of requiring applicants to amend the description of their European patent applications prior to grant so that they conform with the allowed claims of the application. However, in this decision (T 1024/18), a different Board of Appeal has effectively overturned the earlier decision, concluding that amending the description is necessary to meet the support requirement of Art. 84 EPC.
Get in touch
Our team of UK and European Patent Attorneys and Chartered Trade Mark Attorneys are highly knowledgeable and experienced in assisting clients with all aspects of their IP needs.
Contact us now to find out more about how we could help you and your business.
