Ralph Beier: Strategies to defend a European Patent in the Opposition Procedure before the European Patent Office

Transcription

1 Ralph Beier: Strategies to defend a European Patent in the Opposition Procedure before the European Patent Office

2 Contents I. The Opposition Procedure before the EPO 1 1. Opposition Proecedure in the first instance before the Opposition Division of the EPO 1 2. Opposition Procedure in the second instance before the Board of Appeal of the EPO 2 3. Opposition Procedure before the Enlarged Board of Appeal of the EPO 3 II. Strategies to defend a European Patent against an opposition 4 1. Attacking the admissibility of the opposition 4 2. Attacking the admissibility of the appeal against the rejection of the opposition 4 3. Rejecting belated filed requests, grounds and facts 5 a) New facts in support of the opposition 5 b) New grounds for the opposition 6 c) Extension of the scope of opposition 6 4. Using the help of the granting examiner in the opposition procedure 6 5. Using the "Problem-Solution-Approach" 7 6. Filing statements on the deadline set by the EPO 8 7. Filing an auxiliary request with amended claims 9 8. Avoiding the so-called "unescapable trap" Avoiding a loss of priority rights Making an extra-official agreement with the opponent Filing a national utility model application Conversion of a European Patent into a national patent or utility model Delaying the opposition procedure 13 * * * * * *

3 Abbreveations EPO EPC Gxxx/xx GfE OJ EPO RrtF Txxx/xx USPTO European Patent Office European Patent Convention Decision of the Enlarged Board of Appeal of the European Patent Office Guidelines for Examination in the European Patent Office Official Journal of the European Patent Office Rules relating to Fees of the European Patent Office Decision of a Technical Board of Appeal of the European Patent Office United States Patent Office * * * * *

4 I. The Opposition Procedure before the EPO In the following a short overview is given over the opposition procedure before the European Patent Office the understanding of which is necessary to understand the strategies to defend a European Patent in the opposition procedure proposed by the author in the following chapter. In this connection see also the flowchart shown in appendix A. 1. Opposition Proecedure in the first instance before the Opposition Division of the EPO After the publication of the grant of a European Patent the opposition term starts during which a third party may raise an opposition against the grant of the patent 1. It is worth emphasizing that according to the European Patent Convention (EPC) the opposition procedure takes place after the grant of the patent whereas according to some national patent laws the patent is granted after the expiration of the opposition term respectively after the final decision in the opposition procedure if an opposition has been raised. The opposition must be filed with the EPO within the opposition term and must be accompanied by a statement setting out the grounds of the opposition and presenting facts (e.g. prior art documents) to support the argumentation of the opponent 2. Further, the opponent has to identify the scope of the opposition 3 and pay the official opposition fee 4 within the opposition term. If one of these requirements is not fulfilled within the opposition term the opposition is rejected as inadmissible 5. The opposition may only be based on the following grounds: - lack of novelty 6 - lack of inventive step 7 - non statutory subject matter 8 - lack of industrial applicability 9 - insufficient disclosure 10 - inadmissible extension of the patent beyound the content of the application as originally filed 11. However, it should be noted that lack of novelty and lack of inventive step are by far the most common grounds in opposition procedures before the EPO whereas lack of industrial 1 Article 99 I EPC 2 Article 99 I; Rule 55 EPC 3 Rule 55 c) EPC 4 Article 99 I EPC; Article 2 No. 10 RrtF 5 Rule 56 I EPC 6 Articles 100 a); 54 EPC 7 Articles 100 a); 56 EPC 8 Articles 100 a); 52; 53 EPC 9 Articles 100 a); 57 EPC 10 Articles 100 b); 83 EPC 11 Article 100 c) EPC

5 applicability is almost never important. The reason for this is that according to the practice 12 and case law of the EPO the requirement of industrial applicability is not interpreted narrowly. Further, it should be noted that in the contrary to the USPTO in the practice 13 of the EPO requirement of sufficient disclosure of the invention is not handled very strictly. In the course of the opposition procedure both parties may file their statements presenting arguments and facts in support of their point of view. Further, the patentee is allowed to make an amendment 14 of the contested patent by filing new claims if he considers the subject matter of the claims as granted as unpatentable in view of the facts presented by the opponent. Moreover, both parties may request oral proceedings before the Opposition Division 15. If a party requests oral proceedings the Opposition Division has to fix a date for oral proceedings provided that it intends to reject the request of the party requesting the oral proceeding at least partially. When issuing the summons for the oral proceedings the Opposition Division may express its preliminary opinion and mention those points which should be discussed during the oral proceeding. At the end of the opposition procedure in the first instance the Opposition Division will issue a decision which will be delivered to both parties. 2. Opposition Procedure in the second instance before the Board of Appeal of the EPO Within 2 months 16 from the delivery of the decision of the Opposition Division each party may raise an appeal 17 against the decision provided that the party requesting the appeal is adversely affected by the decision of the first instance. However, if no one raises an appeal against the decision of the Opposition Division it will become final and cannot be contested any longer. Further, the appellant has to pay the official appeal fee 18 within the official appeal period. Moreover, within four months 19 after the delivery of the decision of the Opposition Division the appellant has to file a written statement setting out the grounds of the appeal 20. If the appellant fails to fulfil one of these requirements the appeal will be rejected as inadmissible 21. In the course of the opposition procedure before the Board of Appeal of the EPO both parties may file statments presenting facts in support of their argumentation 22. Further, both parties may request oral proceedings before the Board of Appeal 23. As in the first instance before the 12 GfE C-IV 4 13 Article 83 EPC; GfE D-V 4.1; C-II Article 102 III; Rules 57a; 58 II EPC 15 Article 116 EPC 16 Article 108 EPC 17 Article 106 EPC 18 Article 108 EPC; Article 2 No. 11 RrtF 19 Article 108 EPC 20 Article 108 EPC 21 Article 110 I; Rule 65 I EPC 22 Article 110 EPC 23 Article 116 EPC

6 Opposition Division the Board of Appeal has to fix a date for oral proceedings if the party requesting the oral proceedings would be adversely affected by the intended decision of the Board of Appeal. When issuing the summons for the oral proceedings the Board of Appeal may mention its preliminary opinion and indicate those points which should be discussed in more detail during the oral proceedings. At the end of the appeal procedure the Board of Appeal will issue the final decision over the opposition which cannot be contested. 3. Opposition Procedure before the Enlarged Board of Appeal of the EPO However, before issuing the final decision the Board of Appeal may refer the case to the Enlarged Board of Appeal of the EPO if it considers a fundamental legal question to be relevant for the decision on the opposition 24. This can be done by the Board of Appeal by its own motion or upon request of a party involved in the opposition procedure. In the procedure before the Enlarged Board of Appeal both parties may again file statements presenting arguments and facts in support of the point of view. Further, both parties may request oral proceedings upon such request the Enlarged Board of Appeal has to fix a date for oral proceedings. It should be noted that the Enlarged Board of Appeal will decide only on the question of law which has been formulated by the Board of Appeal when referring the case to the Enlarged Board of Appeal but not on the opposition itself. After issuing its decision on the legal point the Enlarged Board of Appeal will refer the case back to the Board of Appeal which will resume the opposition procedure and issue its final decision. In this connection it should be noted that the decision of the Enlarged Board of Appeal is binding for the Board of Appeal 25. * * * * * 24 Article 112 I a) EPC 25 Article 112 III EPC

7 II. Strategies to defend a European Patent against an opposition In the following a few strategies and procedural tricks will be described which might be helpful to defend a European Patent against an opposition both in the first instance before the Opposition Division and in the second instance before the Board of Appeal of the EPO. 1. Attacking the admissibility of the opposition As already mentioned above the opposition must be accompanied by a statement setting out the grounds of the opposition and presenting facts (e.g. prior art documents) in support of the opposition. Further, the opponent has to identify the scope of the opposition 26. For example, an opposition may be directed against a device-claim only whereas the independant methodclaim is not attacked. If one of these requirements is not fulfilled within the opposition term the opposition is inadmissible which will be discussed in the following. According to the practice 27 of the EPO an opposition is adequatly substantiated only if in respect of at least one of his grounds for opposition the opponent adduces facts, evidence and arguments establishing a possible obstacle to patentability under the EPC. He must indicate the technical context and the conclusion he has drawn from it. The content of the statement of grounds must be such as to enable the patent proprietor and the Opposition Division to examine the alleged ground for revocation without recourse to independent enquires. For example, according to case law of the Boards of Appeal of the EPO 28 an opposition is not sufficiently substantiated if the opponent merely files a long prior art document with 200 pages without indicating the portions of the text which refer to the claimed subject matter. Moreover, the opponent generally must indicate on which parts of a prior art document his opposition is based unless the document is very short.in general one can say that the opponent has to show each feature of the claimed invention in the state of the art when objecting lack of novelty of lack of inventiveness. Otherwise the opposition is not sufficiently substantiated and therefore inadmissible. 2. Attacking the admissibility of the appeal against the rejection of the opposition As already mentioned above the opponent may file an appeal against the rejection of the opposition by the Opposition Division. However, as the opposition the appeal must meet some requirements to be admissible. Therefore, in some cases it might be possible to defend the contested patent before the Board of Appeal by attacking the admissiblity of the appeal filed by the opponent. First, the appeal must be filed within two months 29 from the delivery of the decision of the Opposition Division and the appellant has to pay the official appeal fee within the appeal term 30. Second, the appeal is only admissible if the appellant is adversely affected by the 26 Rule 55 c) EPC 27 GfE D-IV e) 28 T545/91; T448/89, OJ 1992, Article 108 EPC; Article 2 No. 11 RrtF 30 Article 108 EPC

8 decision of the Opposition Division. However, these requirements are of formal nature and almost always fulfilled. Further, within four months from the delivery of the decision of the Opposition Division the appellant has to file a statement setting out the grounds of the appeal which is in some cases insufficient resulting in a rejection of the appeal as inadmissible. On the one hand, according to case law 31 of the Boards of Appeal the statement setting out the grounds of the appeal has to deal with the legal and factual issues showing the incorrectness of the contested decision. In other words, the opponent has to present facts and arguments questioning the patentability of the claimed subject matter. Therefore, it is not sufficient to merely refer to the argumentation given in the opposition letter 32. On the other hand, the opponent has to discuss the reasons of the contested decision in the statement setting out the grounds of the appeal. For example, if the Opposition Division has rejected the opposition as inadmissible without considering patentability it is not sufficient to merely present facts and arguments concerning patentability. Moreover, the appellant has to argue that the opposition was in fact admissible Rejecting belated filed requests, grounds and facts As already mentioned above the opponent has to file a statement of the scope (e.g. request for total revocation) of the opposition, of the grounds (e.g. lack of novelty) on which the opposition is based as well as an indication of facts (e.g. prior art documents) in support of these grounds. In general, this information must be given within the opposition term, i.e. within nine months after the publication of the grant of the patent. Therefore, in general the EPO may disregard facts or evidence which are not submitted in due time by the parties concerned 34. However, according to the EPC 35 the Opposition Division and the Board of Appeal of the EPO shall examine the facts of its own motion; it shall not be restricted in the examination to the facts, evidence and arguments provided by the parties and the relief sought. Therefore, in some cases the opponent may nevertheless change the scope of the opposition or present new facts in the course of the opposition procedure. In the follwing the principles are described according to which the Opposition Division respectively the Board of Appeal allows such amendments of the opposition. a) New facts in support of the opposition In some cases the opponent has prepared the letter of opposition under pressure without making an extensive prior art search before filing the opposition. In these cases the opponent may wish to file prior art documents at a later stage of the proceedings. In the first instance of the opposition procedure before the Opposition Division such late filed facts are only exceptionally admitted into the proceedings if, prima facie, there are clear 31 T 220/83, OJ EPO 1986, T 154/90, OJ EPO 1993, T 45/92, see [6] 34 Article 114 II EPC 35 Article 114 I EPC

9 reasons to suspect that such late-filed material would prejudice the maintenance of the European patent 36. However, in the second instance before the Board of Appeal new facts are only admitted if such new material is prima facie highly relevant for the decision of the Board of Appeal. In other words, new facts presented in the second instance before the Board of Appeal are more likely to be rejected than in the first instance before the Opposition Division. b) New grounds for the opposition In some cases the opponent might want to switch from one ground for revocation to another ground for revocation. For example, if the opposition letter only objected lack of novelty and lack of inventive step the opponent might wish to additionally object insufficient disclosure at a later stage of the proceedings. In the first instance before the Opposition Division such late filed grounds for the opposition are considered only if they prima facie, in whole or in part would seem to prejudice the maintenance of the European patent 37. However, in the second instance before the Board of Appeal fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee. c) Extension of the scope of opposition As already mentioned above the opponent has to identify the scope of the opposition within the opposition term. In most cases the opponent requests the complete revocation of the patent. However, in some cases the opposition is directed only against a few claims whereas the other claims are not attacked. For example, if a European Patent comprises a device-claim and an independent method-claim the opponent might attack only the device-claim. In these cases the opponent may not extend the scope of the opposition after the expiration of the opposition term. Accordingly, the Opposition Division respectively the Board of Appeal is not entitled to check the contested patent for patentability beyond the scope of the opposition Using the help of the granting examiner in the opposition procedure The Opposition Division of the EPO which is judging on the opposition in the first instance generally consists of three technically qualified examiners 39 one of which usually was also a member of the examination division 40 which had granted the patent before. Therefore, the examiner who has granted the contested patent almost always wants to maintain the contested patent in order to defend his prior decision of grant. Therefore, the opponent should always try to find some prior art documents which have not 36 T 1002/92; OJ EPO 1995, G 10/91, OJ EPO 1993, 420 (see Appendix B) 38 G 9/91, OJ EPO 1993, 408 (see Appendix B) 39 Article 19 EPC 40 Article 18 EPC

10 yet been cited before the examination division in order to give the competent examiner a chance to revoke his former decision of grant without admitting a mistake. In this connection it should be noted that examiners in the EPO are subject to an internal quality control program according to which a revocation of a patent in the opposition procedure based on prior art which has already been considered before by the examination division in the examination stage might have negatice effects on the carreer of the competent examiner. On the other hand, the patentee should always emphasize that the contested patent had already been examined thoroughly by the examination division. Further, if the opponent presents new prior art documents the opponent should try to show that these documents do not add anything to the prior art documents already considered by the examination division. For example if the examination division during examination considered prior art document D1 with the features A, B and C whereas the opponent presents prior art document D2 disclosing features A, B and C', C' being similar to C, the patentee should argue that both documents are identical and therefore the decision of the examination division may not be revoked. 5. Using the "Problem-Solution-Approach" As already mentioned above lack of inventive step 41 is by far the most common ground for an opposition. In this connection it should be noted that the EPO uses the so-called "problemsolution-approach" 42 when assessing inventiveness of an alleged invention. Therefore, the understanding of the "problem-solution-approach" is essential both for attacking and defending a European Patent. In the following a brief explanation is given of the "problemsolution-approach". The first stage when assessing inventiveness according to the "problem-solution-approach" is to determine the closest prior art which is that combination of features derivable from one single reference that provides the best basis for considering the question of obviousness. The closest prior may be, for example, (a) a known combination in the technical field concerned that discloses technical effects, purpose or intended use, most similar to the claimed invention or (b) that combination which has the greatest number of features in common with the invention and capable of performing the function of the invention. In the second stage one establishes in an objective way the technical problem to be solved. To do this one studies the contested patent, the closest prior art and the differences in terms of technical features (either structural or functional) between the invention and the closest prior art and then formulates the technical problem. In this context the technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closes prior art. The technical problem derived in this way may not be what the patent presents as "the problem". The latter may require to be reformulated, since the objective technical problem is based on objectively established facts, in particular appearing in the prior art revealed in the 41 Article 56 EPC 42 GfE C-IV 9.5

11 course of the proceedings, which may be different from the prior art of which the applicant was actually aware at the time the aplication was filed. The extent to which such reformulation of the technical problem is possible has to be assessed on the merits of each particular case. As a matter of principle any effect provided by the invention may be used as a basis for reformulation of the technical problem, as long as said effect is derivable from the application as filed. it is also possible to rely on new effects submitted subsequently during the proceedings by the patent proprietor, provided that the skilled person would recognise these effects as implied by or related to the technical problem initially suggested. In the third stage the question to be answered is whether there is any teaching in the prior art as a whole that would (not simply could, but would) prompt the skilled person, faced with the technical problem to modify or adapt the closest prior art while taking into account of that teaching, thus arriving at something falling into the terms of the claims, and thus achieving what the invention achieves. In the following it is described how the "problem-solution-approach" can be used during the opposition procedure to convince the opposition division of inventiveness. First, the patentee might argue that the document presented by the opponent as the closest prior art document is not suitable as a starting point when assessing inventiveness according to the "problem-solution-approach". For example, it might be possible that the document presented by the opponent as the closest prior art has the greatest number of features in common with the claimed subject matter but belongs to a completely different technical field. In this case the document presented by the opponent is probably not sufficient as a starting point for assessing obviousness. Second, the patentee should argue that the problem formulated by the opponent in stage two of the "problem-solution-approach" is not the true problem. This might be possible by showing additional differences between the closest prior art and the claimed subject matter. Finally, the patentee must argue that the combination of prior art documents presented by the opponent does not render the claimed subject matter obvious. To do this the patentee can argue that the documents presented by the opponent may not be combined since they belong to different technical fields. Further, the patentee can argue that even a combination of the documents presented by the opponent does not disclose all features of the claimed subject matter. To sum up one can say that the consistent use of the "problem-solution-approach" is essential for the argumention concerning inventiveness both in examination and opposition procedure before the EPO. 6. Filing statements on the deadline set by the EPO As already mentioned above the Opposition Division and the Board of Appeal of the EPO can fix a date for oral proceedings. When issuing the summons the Opposition Division respectively the Board of Appeal generally mentions its preliminary opinion concerning the

12 opposition 43. Further, the EPO will fix a deadline until which both parties have to file statements in preparation of the oral proceedings. On the one hand, if the patentee intends to make an amendment of the contested patent he has to file an amended set of claims until the deadline set by the EPO in order to give the opponent the opportunity to check the subject matter of the amended set of claims for patentability. Therefore, belated filed amendments or amendments of the contested patent requested during the oral proceedings may be rejected by the Opposition Division. On the other hand, the opponent has to file facts and arguments until the deadline set by the EPO in order to give the patentee the opportunity to prepare for the oral proceedings. Therefore, belated filed prior art documents may be rejected by the Opposition Division provided that they are not obviously rendering the claimed sibject matter unpatentable. Therefore, it might be useful for the patentee to file his statement in preparation of the oral proceedings exactly on the deadline set by the EPO so that the opponent has no chance to reply in the form of a written statement before the oral proceedings. However, it should be noted that the opponent may file a further statement if the facts of the case have been changed in the meantime, e.g. by the statement of the patentee. 7. Filing an auxiliary request with amended claims In the opposition procedure before the EPO the patent proprietor has to decide if he wants to defend the contested patent as granted or in an amended form 44. Such an amendment of the patent is usually made by filing a new main claim which incorporates features of former dependent claims. In this connection it should be noted that the amendment must be admissible, i.e. the subject matter of the new claim must be disclosed in the application as originally filed 45 and the scope of protection may not be extended by the amendment 46. However, it is often difficult to estimate the chance to convince the Opposition Division of inventiveness of the contested patent. Therefore, the patent proprietor is in the dilemma either to defend the contested patent in a very broad form risking a revocation of the patent or to restrict the patent too much in order to avoid a revocation and thereby limiting the scope of protection unnecessarily. However, according to the practice 47,48 and case law 49 of the EPO it is possible to file both main and auxiliary requests in the opposition procedure. For example, the patentee can, in response to an opposition, seek to have the patent maintained as granted, and at the same time he may seek in the alternative, by way of an auxiliary request, to have the patent maintained with more limited claims. Such a procedure with main and auxiliary requests offers several advantages which will be 43 Rule 71a EPC 44 Article 102 III; Rule 57a EPC 45 Article 123 II EPC 46 Article 123 III EPC. 47 GfE D-IV Legal Notice No. 15/84, OJ EPO 1984, T 234/86, OJ EPO 1989, 79

13 described in the following. First, the patentee can set up several defensive positions with different sets of claims of ever decreasing scope thereby avoiding both a revocation of the patent and an unnecessary limitation of the contested patent. Second, if the Opposition Division rejects the main request but intends to maintain the patent according to the auxiliary request the patentee can still file an appeal against the rejection of the main request. In case of such an appeal against the rejection of the main request by the Opposition Division the Board of Appeal is not entitled to decide on the patentability of the subject matter of the main claim 50. Therefore, the set of claims according to the auxiliary request constitutes a safe fall back position in the appeal procedure. Therefore, in the worst case the Board of Appeal will reject the appeal and refer the case back to the Opposition Division which will then maintain the patent according to the auxiliary request. Finally, it should be noted that if the main request is accepted the decision of the Opposition Division respectively the Board of Appeal need not deal with the narrower auxiliary request. Conversely, if the main request is refused, and if there are numerous auxiliary requests, the decision must deal with each one of them in turn, unless and until one is reached which is acceptable. Therefore, in the presence of several auxiliary requests of the patentee the Opposition Division respectively the Board of Appeal is tempted to accept the main request in order not to deal with each auxiliary request. However, it should be noted that during oral proceedings the Opposition Division and the Board of Appeal as well usually expresses its preliminary opinion concerning the requests of the patentee and suggests to withdraw those requests which are not allowable. 8. Avoiding the so-called "unescapable trap" When making amendments of a European Patent during the opposition procedure it should be taken care that the amendments are admissible, i.e. - the subject matter of the amended claims must be disclosed in the application as originally filed 51 and - the claims of the patent may not be amended in such a way as to extend the protection conferred 52. However, in some cases the patentee might want to amend the patent by incorporating a feature which is not clearly disclosed in the application as originally filed. For example, it might be possible that the feature to be incorporated in the claim is only shown in the figures of the patent but not explicitly described in the patent specification. The Opposition Division respectively the Board of Appeal then will check the disclosure of the amended claims according to the EPC and maintain the patent if it comes to the opinion that the subject matter of the amended claims is disclosed in the application as originally filed. However, it should be noted that the decision of the EPO concerning the admissibility of amendments made during the opposition procedure is not binding for national courts when judging on cancellation 50 no "reformatio in peius" 51 Article 123 II EPC 52 Article 123 III EPC

14 actions filed in member states of the EPC with regard to national parts of the European Patent. Therefore, the competent national courts 53 may take the view that the European Patent has been inadmissibly extended beyond the application as originally filed with the result that the added feature has to be deleted from the claim. However, according to national patent law 54 of most of the contracting states of the EPC the scope of protection of a European Patent may not be extended after the grant of the patent. Therefore, after having made an inadmissible amendment during the opposition procedure before the EPO the patentee is an "unescapable trap": On the one hand the patent cannot be maintained by national courts with the added feature since the added feature is not disclosed in the application as originally filed. On the other hand the added feature may not be deleted since this would extend the protection conferred. As a result the patent is probably revoked by national courts. To sum up one can say that the patentee should strictly check the admissibility of amendments made during the opposition procedure before the EPO in order to avoid the above mentioned "unescapable trap". 9. Avoiding a loss of priority rights Further, when making amendments of a European Patent claiming priority of a prior patent application the patentee should be aware that the priority right could get lost by making amendments of the claim since the priority document and the subsequent patent must refer to the same invention. In this connection it should be noted that the EPO takes a very strict view 55 when judging on the validity of a priority claim. According to the practice of the EPO the validity of a priority claim requires that all features of the claimed subject matter of the subsequent patent must be disclosed in the priority document. Therefore, the priority is invalid if one feature of the claimed subject matter is not disclosed in the priority document. For example, if there are two Japanese priority documents JP1 and JP2 disclosing a combination of the features A+B+C respectively A+B+D the subsequent European Patent claiming the priority of both JP1 and JP2 may not claim a combination A+B+C+D since this combination is neither disclosed in JP1 nor JP2. However, if the patentee during opposition procedure presents an amended main claim with this combination the priority is invalid with the effect that any documents published during the priority interval (even JP1 and JP2) are state of art. Therefore, when making amendments during the opposition procedure the patentee should take care that the claimed combination of features is disclosed in the priority document, 10. Making an extra-official agreement with the opponent In some cases the opponent and the patentee are not competitors and therefore an amicable agreement might be possible to settle the opposition. In other cases the opposition may lead to negotiations between the patentee and the opponent at the end of which the patentee grants a license to opponent. In these cases both parties are not interested in a revocation of the contested patent. Therefore, the opponent can withdraw the opposition in order to terminate 53 e.g. in the German Federal Patent Court ("Bundespatentgericht") 54 e.g. 6 I No. 4 IntPatÜG in Germany 55 G 3/93 Decision of the enlarged Board of Appeal, see Appendix B

15 the opposition procedure without a revocation of the contested patent. However, it should be noted that the EPO is entitled to resume the opposition procedure on its own motion 56 after the withdrawal of the opposition. According to the practice 57 of the Opposition Division the opposition should be continued, if for instance, the Opposition Division considers that the stage reached in the opposition proceedings is such that they are likely to result in a limitation or revocation of the patent without further assistance from the opponent concerned and without the Opposition Division itself having to undertake extensive investigations. Otherwise the proceedings are closed. However, if the opposition is withdrawn during the appeal procedure before the Board of Appeal of the EPO the effects of the withdrawal of the opposition depend on the question whether the opponent or the patentee has filed the appeal. If the opponent has filed the appeal against the rejection of the opposition by the Opposition Division the appeal procedure is terminated by the withdrawal of the opposition with the effect that the decision of the Opposition Division, i.e. the rejection of the opposition, becomes final 58. In this case neither the Opposition Division nor the Board of Appeal are entitled to resume the procedure on its own motion. However, if the patentee has filed the appeal against the revocation of the patent by the Opposition Division the withdrawal of the opposition has generally no effect on the appeal procedure, i.e. the Board of Appeal will resume the appeal procedure and decide on the opposition respectively the appeal 59. In summary one can say that the opposition procedure will be terminated by a withdrawal of the opposition if the opponent has filed an appeal against the rejection of the opposition by the Opposition Division or if the opposition procedure is still pending before the Opposition Division provided that the opposition is not obviously founded. Therefore, it might be possible to terminate the opposition procedure if both parties intend to make an amicable agreement. 11. Filing a national utility model application According to some national laws 60 of contracting states of the EPC the patentee can file a national utility model application during the opposition procedure claiming both the filing date and the priority date of the European Patent provided that the utility model and the European Patent are substantially identical. It should be noted that this can be done even after the expriation of the prioirty year. This might be helpful if the opposition against the European Patent is expected to be successful whereas the national utility model is legally valid according to the respective national law. For example, if the patentee has designated Germany, France and Italy for the European patent and the opponent bases the opposition on a prior public use of the claimed invention in Italy then the European Patent will be revoked since the subject matter of the 56 Rule 60 II EPC 57 GfE D-VII G8/93, OJ EPO1994, T 629/90, OJ EPO 1992, e.g. 5 German Utility Model Act ("Gebrauchsmustergesetz")

16 contested patent is anticipated by the prior public use 61 which belongs to the state of the art 62. However, according to the German Utility Model Act 63 only a prior public use in Germany is considered when assessing novelty and inventive step. Therefore, the national German utility model is legally valid even in view of the prior public use in Italy. In this way it is in some cases possible to get at least the minimum protection of national utility models even if the opposition against the European Patent is successful. 12. Conversion of a European Patent into a national patent or utility model If a European Patent is revoked at the end of the opposition procedure the EPC 64 allows the conversion of the European Patent into a national patent or, where such protection exists, into a national utility model provided that the national legislation in the respective member states have made use of this opportunity. However, the member states of the EPC have made very little use of this provision, so that today only the Patent Act 65 of Switzerland allows a conversion of a European Patent into a national patent in special cases where the subject matter of the contested patent is anticipated by another European Patent application which constitutes a prior right. In these cases the patentee can save at least the minimum protection of a Swiss patent although the European Patent will be revoked due to a lack of novelty. 13. Delaying the opposition procedure In some cases the patentee might want to delay the opposition procedure as long as possible. Two of these special cases will be described in the following. For example, if the opposition against the European Patent is well founded and therefore a revocation of the patent has to be expected the patentee might want to delay the opposition procedure in order to keep the contested patent in force as long as possible. This is especially important if the patentee has made a license agreement with a third party since such a license agreement requires the validity of the licensed patent. Therefore, after the revocation of the patent the patentee has no longer any claim for royalties and accordingly it makes sense to delay the opposition procedure. Further, according to the EPC 66 the state of the art considered during the opposition procedure before the EPO does not include so-called prior national rights, i.e. national patent applications which were filed in a member state of the EPC before the priority date of the contested European Patent but published after the priority date. However, according to the EPC 67 these prior national rights are considered during national cancellation procedures concerning the respective national part of the European Patent. In this connection it should be 61 Articles 54 II; 100 a) EPC 62 Article 54 II EPC 63 3 I German Utility Model Law ("Gebrauchsmustergesetz") 64 Article 135 I b); Rule 103 EPC 65 Article 121 Swiss Patent Act 66 Article 54 II EPC 67 Article 139 I EPC

17 noted that according to German Patent Law 68 a cancellation action against the German part of a European Patente is inadmissible during the pendancy of an opposition procedure before the EPO. Therefore, if there is a prior national right which is clearly anticipating the claimed invention it makes sense to delay the opposition procedure as long as possible in order to avoid a national cancellation action which would be successful. In such cases there are several possibilities to delay the opposition procedure which are described in the following. First, the patentee should always request an extension of the official term for responding to any statements of the opponent. However, the EPC 69 generally allows only extensions of official terms up to six months. Second, the patentee should request oral proceedings which further delays the opposition procedure. In this connection it should be noted that according to the EPC 70 a request for oral proceedings may not be rejected by the EPO. Finally, the patentee should file an appeal against the revocation of the patent and then formulate a legal question for the decision on which the case has to be referred to the Enlarged Board of Appeal. However,it should be noted that filing an appeal is quite cost extensive and therefore only desirable in those cases were the patent is worth the effort. * * * * * II German Patent Act 69 Rule 84 EPC 70 Article 116 EPC.

18 Appendix A: Patent Owner: EPO: Opponent: Final decision of Board of Appeal Decision on Legal Question Request for oral proceedings Enlarged Board of Appeal Oral Proc. Request for oral proceedings Statements Prel. Opinion Summons Statements Request for decision of enlarged board of appeal Amendments of the patent Request for oral proceedings Statements Board Of Appeal Checking Patentability Oral Proceedings Preliminary Opinion Summons Request for decision of enlarged board of appeal Request for oral proceedings Statements Checking admissibility Appeal Decision of Opposition Division Appeal Opposition Division Request for oral proceedings Checking Patentability Oral Proceedings Request for oral proceedings Amendments of Statements Preliminary Opinion Summons Checking admissibility Statements Publication of Grant Opposition

19 Appendix B: Relevant decisions of the Board Of Appeal G 9/91 The power of an Opposition Division or a Board of Appeal to examine and decide on the maintenance of a European patent under Articles 101 and 102 EPC depends upon the extent to which the patent is opposed in the notice of opposition pursuant to Rule 55(c) EPC. However, subject-matters of claims depending on an independent claim, which falls in opposition or appeal proceedings, may be examined as to their patentability even if they have not been explicitly opposed, provided their validity is prima facie in doubt on the basis of already available information. G 10/91 1. An Opposition Division or a Board of Appeal is not obliged to consider all the grounds for opposition referred to in Article 100 EPC, going beyond the grounds covered by the statement under Rule 55(c) EPC. 2. In principle, the Opposition Division shall examine only such grounds for opposition which have been properly submitted and substantiated in accordance with Article 99(1) in conjunction with Rule 55(c) EPC. Exceptionally, the Opposition Division may in application of Article 114(1) EPC consider other grounds for opposition which, prima facie, in whole or in part would seem to prejudice the maintenance of the European patent. 3. Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee. G 7/95 In a case where a patent has been opposed under Article 100(a) EPC on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon Articles 52(1), 54 EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of lack of inventive step G 1/95 In a case where a patent has been opposed on the grounds set out in Article 100(a) EPC, but the opposition has only been substantiated on the grounds of lack of novelty and lack of inventive step, the ground of unpatentable subject-matter based upon Articles 52(1), (2) EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. G 3/93 1. A document published during the priority interval, the technical contents of which correspond to that of the priority document, constitutes prior art citable under Article 54(2) EPC against a European patent application claiming that priority, to the extent such priority is not validly claimed. 2. This also applies if a claim to priority is invalid due to the fact that the priority document

20 Appendix B: Relevant decisions of the Board Of Appeal and the subsequent European application do not concern the same invention because the European application claims subject-matter not disclosed in the priority document T 1002/92 1. In proceedings before the opposition divisions, late-filed facts, evidence and related arguments, which go beyond the "indication of the facts, evidence and arguments" presented in the notice of opposition pursuant to Rule 55(c) EPC in support of the grounds of opposition on which the opposition is based, should only exceptionally be admitted into the proceedings if prima facie, there are clear reasons to suspect that such late-filed material would prejudice the maintenance of the European patent. 2. In proceedings before the boards of appeal, new facts, evidence and related arguments, which go beyond the "indication of facts, evidence and arguments" presented in the notice of opposition pursuant to Rule 55(c) EPC in support of the grounds of opposition on which the opposition is based, should only very exceptionally be admitted into the proceedings in appropriate exercise of the board's discretion, if such new material is prima facie highly relevant in the sense that it can reasonably be expected to change the eventual result and is thus highly likely to prejudice maintenance of the European patent; and having regard also to other relevant factors in the case, in particular whether the patentee objects to the admissibility of the new material and the reasons for any such objection, and the degree of procedural complication that its admission is likely to cause.

21 Appendix C Resume of Mr. Ralph Beier Mr. RALPH BEIER is a patent attorney registered both before the German Patent and Trademark Office (GPTO) and the European Patent Office (EPO). Further, Mr. Beier is registered before the community trademark office (OHIM) as a European Trademark Attorney. He received a degree (Dipl.-Ing.) in electrical engineering from the technical university of Aachen (Germany) and also a degree in patent law from the university of Hagen (Germany). Due to his technical qualification he is specialized in all kinds of electric, electronic and software-related patents. A further focus of Mr. Beiers work is the prosecution of trademarks, especially before the community trademark office. Mr. Beier is a partner of the patent law firm STAEGER & SPERLING in Munich (Germany) and a member of the German Patent Bar (Patentanwaltskammer), the European Patent Institute and FICPI. * * * * *

22 Appendix D Literature [1] Convention on the Grant of European Patents (European Patent Convention), issued by the European Patent Office, ISBN (trilingual version) [2] Implementing Regulation relating to the European Patent Convention, issued by the European Patent Office, ISBN (German version) [3] Guidelines for Examination in the European Patent Office, issued by the European Patent Office, ISBN X (English version) [4] National Law Relating to the EPC, issued by the European Patent Office, to be ordered from the EPO [5] SINGER, Ralph: The European Patent Convention, A Commentary, Sweet & Maxwell (London), ISBN [6] Jurisdiction of the Boards of Appeal of the European Patent Office, 3rd issue, issued by the European Patent Office, ISBN (German version) [7] EPO Board of Appeal Case Law in 1997, Special Edition of the Official Journal 1998, issued by the European Patent Office [8] EPO Board of Appeal Case Law in 1998, Special Edition of the Official Journal 1999, issued by the European Patent Office * * * * *