Martin Vinsome's Presentation from the event "Stopping them from Stopping you"
- 1. Oppositions in the European Patent Office Martin Vinsome, UDL 10 November 2009
- 2. AGENDA Introduction What are oppositions? What are the benefits of oppositions? How do we find out what to oppose? How do we oppose?
- 3. 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?
- 4. 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
- 5. What are oppositions? 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.
- 6. What are oppositions? 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)
- 7. What are the benefits of oppositions? i.e. 70% chance of opposition being at least partly successful
- 8. What are the benefits of oppositions? 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
- 9. What are the benefits of oppositions? Who is applying for patents?
- 10. What are the benefits of oppositions? Who is Opposing them?
- 11. How do we find out what to oppose? 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 Please contact UDL for a link to this web page 3. Search in Epoline under relevant classification(s)
- 12. How do we oppose? Search for relevant prior art by (i)searching under relevant classifications in Espacenet Please contact UDL for a link to this web page or (ii) instructing firm of patent searchers to carry out prior art search
- 13. How do we find out what to oppose? Example Irvin Automotive Products Inc.
- 14. 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.
- 15. How do we find out what to oppose? 1. Identify relevant classifications from Epoline Please contact UDL for a link to this web page Search under “Irvin Automotive” in “Applicant” field
- 16. How do we find out what to oppose? 2. Find out what classifications mean from WIPO classification guide Please contact UDL for a link to this web page
- 17. How do we find out what to oppose?
- 18. How do we find out what to oppose? 3. Search in Epoline under relevant classification(s) Please contact UDL for a link to this web page Search under “B60R5/04” in “Classification” field
- 19. How do we find out what to oppose?
- 20. How do we find out what to oppose? If too many search results – can limit by publication date
- 21. How do we find out what to oppose?
- 22. How do we find out what to oppose? Monitor status on Epoline Has it been granted yet? Was it granted less than 9 months ago?
- 23. What are the benefits of this? Even if we decide not to oppose, because patent application not a threat or obstacle, or because we cannot find relevant prior art we know who is applying for patents in this field we may have early warning of potential infringers we may discover potential licensees (e.g. companies in other countries where we are not active)
- 24. Thank you