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Caesar Rivise Works With European Patent Counsel to Achieve Positive Outcomes in European Patent Oppositions

Posted on Nov 30, 2015 in Blog

Caesar Rivise attorney David Gornish recently attended two different patent opposition hearings before the European Patent Office (EPO) in Munich and The Hague, respectively.  David worked closely with European patent attorneys to achieve positive outcomes in both cases for the patent owner, a worldwide developer and manufacturer of pharmaceutical packaging products.

In Europe, after a patent grants, it enters a nine-month period in which any third party may oppose the patent based on lack of clarity, descriptive support, enablement, novelty and inventive step, among other things.  If the patent owner does not succeed in countering the opposition, the patent can be revoked.  On the other hand, success in an opposition for the patent owner occurs where the patent is maintained as granted or in an amended form that is commercially meaningful.  During an opposition hearing, both the opposer and patent owner advance arguments before a three-member opposition board in support of the parties’ respective positions.  During a typical opposition, the opposer lodges several attacks against the patent, each of which the patent owner must deflect.  After both parties have been heard on a given issue, the board will usually interrupt the hearing to deliberate and then call the parties back into the room to render a decision on a given issue in real time.  This may happen several times during a single hearing.  Opposition hearings require patent counsel who know the invention and technology at issue well, who understand the commercial context of the patent’s claims, who have carefully studied every nuance of the asserted prior art and who can think quickly on their feet.

Based on his experience in these and other opposition proceedings, as well as in handling prosecution of hundreds of patents in the EPO and the United States Patent and Trademark Office (USPTO), David advises his clients that there are many similarities between the patent laws of Europe and those of the U.S., but there are two key differences that should be kept in mind.

Firstly, European patent laws tend to be much more stringent than U.S. patent laws when it comes to support for claim amendments. While a U.S. attorney may suggest a claim amendment in a European opposition that should obviate a prior art issue, it is not unusual that such an amendment lacks support under European standards, even though it would hold water in the U.S., where literal support is not required.

Secondly, the “problem-solution” method of analyzing inventive step in Europe (akin to obviousness in the U.S.) is quite different from the American test for obviousness.  In fact, there are some inventions that would pass muster based on European inventive step criteria, which would not be patentable under U.S. obviousness standards.

Accordingly, David and his colleagues at Caesar Rivise recommend preparing detailed and robust patent disclosures that would support amendments (in the U.S. and) in Europe, while keeping an open mind that what may be obvious in the USPTO may have inventive step in the EPO.

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