Just because a patent has been granted does not mean it cannot be disputed. Vincent Robert explains the procedure for patent oppositions in the EU, including when and how it can be used.
When a company, or an individual, wishes to protect an invention, it can file a patent application with the relevant IP office, such as the National Industrial Property Institute (INPI) in France or the European Patent Office (EPO). This patent application is assessed by an examiner at that office to determine whether it meets the conditions for patentability: novelty, inventive step and industrial application.
During the examination process, the patent application will be published; e.g. EP#######A1 for European patent applications. Then, once the patent application has been deemed to meet the requirements for patentability, the office issues a notification of grant and publishes the patent (e.g. EP#######B1).
This publication then triggers an opposition period of nine months at the EPO.
Patent oppositions: Why is an opposition period useful?
A third party may be aware of facts that oppose the patentability of an invention, but these facts are not known to the IP Office. For example, the examiner may not have detected a very relevant earlier document. This is why the patent system in Europe and other countries, including France, offers third parties the opportunity to put forward arguments to demonstrate the nullity of the patent. This process also helps to make such patents more robust since they must both overcome the examination phase conducted by the office, but also the opposition phase if third parties attempt to demonstrate their invalidity.
How and when to oppose a patent
When should you oppose a patent?
When the patent may hinder your freedom to operate in the territory or territories of protection.
What are the conditions for filing an opposition?
To file an opposition, you must have arguments that allow you to challenge the validity of the patent. The validity of the patent may be challenged on the following grounds:
- Non-patentable subject matter
- Insufficient disclosure of the invention
- Extension of the subject matter of the patent beyond the content of the patent application as filed.
The arguments put forward must, of course, be based on sufficiently substantiated facts and evidence. This involves, for example, citing a publication prior to the patent that would not have been detected during the patent examination procedure.
Who can file an opposition?
Any third party to the procedure may oppose the patent. However, it is recommended to employ a European patent attorney for patent oppositions before the EPO, French patent attorneys before the INPI, and so on. As a Europe-wide patent and trademark attorney firm, Novagraaf’s attorneys are qualified and experienced in supporting clients to bring and dispute such opposition procedures.
What if the nine-month period for patent oppositions has expired?
If no one has filed an opposition against the patent within the opposition period, third parties can still challenge the validity of a patent before the national court of the territory in question or, as of 1 June 2023, before the Unified Patent Court (UPC) in Europe, unless the patent owner has opted the relevant European patent title out of the jurisdiction of the UPC. Find out more about the new UPC system, including the process for opt-outs.
A few recommendations for patent owners
To make the most of the patent opposition process, we recommend the following key steps:
- Monitor the patent publications of your closest competitors.
- Keep watch on any patent applications that are likely to impact you to ensure you are informed of its grant in time to file an opposition against the granted patent, if necessary.
- Gather evidence that could be used to obtain revocation of competing patents.
- Work with a qualified patent attorney in your specific industry and territory to determine whether it is still possible to oppose a granted patent.
For further insight and advice on patent oppositions, speak to your Novagraaf attorney or contact us below. You may also be interested in our earlier article on the trademark opposition procedure.
Vincent Robert is a French and European Patent Attorney and Director of the Department of Mechanical Engineering at Novagraaf in France.