We noted you are experiencing viewing problems
-
Check with your IT department that JWPlatform, JWPlayer and Amazon AWS & CloudFront are not being blocked by your network. The relevant domains are *.jwplatform.com, *.jwpsrv.com, *.jwpcdn.com, jwpltx.com, jwpsrv.a.ssl.fastly.net, *.amazonaws.com and *.cloudfront.net. The relevant ports are 80 and 443.
-
Check the following talk links to see which ones work correctly:
Auto Mode
HTTP Progressive Download Send us your results from the above test links at access@hstalks.com and we will contact you with further advice on troubleshooting your viewing problems. -
No luck yet? More tips for troubleshooting viewing issues
-
Contact HST Support access@hstalks.com
-
Please review our troubleshooting guide for tips and advice on resolving your viewing problems.
-
For additional help, please don't hesitate to contact HST support access@hstalks.com
We hope you have enjoyed this limited-length demo
This is a limited length demo talk; you may
login or
review methods of
obtaining more access.
Printable Handouts
Navigable Slide Index
- Introduction
- Outline
- TPOs summary
- Oppositions at the European Patent Office
- Why file an Opposition?
- The Opponent
- Components of Opposition
- Notice of Opposition
- Grounds of Opposition
- Procedure during Opposition
- Oppositions
- Opposition oral proceedings
- Appeal proceedings at the European Patent Office
- Appeal proceedings
- Appeal oral proceedings
- Tactics for Opposition proceedings
- Tactics specifically for Appeal proceedings
- Board of Appeal 5 year plan
- Summary
- Thank you for listening!
Topics Covered
- Oppositions at the European Patent Office
- Components of Opposition
- The procedure during the Opposition
- Appeal proceedings
- Tactics for both Opposition and Appeal proceedings
Talk Citation
Atkinson, J.D. (2021, November 30). Challenging patents: EPO oppositions and appeals [Video file]. In The Biomedical & Life Sciences Collection, Henry Stewart Talks. Retrieved December 9, 2024, from https://doi.org/10.69645/DZON7179.Export Citation (RIS)
Publication History
Financial Disclosures
- Jonathan Atkinson has not informed HSTalks of any conflict of interest.
Challenging patents: EPO oppositions and appeals
Published on November 30, 2021
33 min
A selection of talks on Pharmaceutical Sciences
Transcript
Please wait while the transcript is being prepared...
0:00
Hello, my name is Dr. Jonathan Atkinson, and I am a UK and European patent attorney
specialising in the field of chemistry and pharmaceuticals.
I'm a shareholder of HGF Limited, which is one of Europe's leading IP firms,
and a Director of Atkinson IP Consulting Limited.
I have a degree and a doctorate in chemistry from Oxford University, and my doctoral thesis
concerned the synthesis of chiral derivatives of morphine-type alkaloids in a stereoselective manner.
In addition to being a UK and European patent attorney,
I'm also a fellow of the Royal Society of Chemistry, and a Chartered Scientist.
I'm going to be talking today about the topic of challenging problematic patents belonging
to third parties, and this presentation is the second part in a two-part series.
In the first part, I spoke about Third Party Observations at the European Patent Office,
today I'm going to talk about what happens once patents have been granted.
0:57
We can see that the topic of challenging European patents is a very extensive topic,
which is too large to be covered in a single presentation.
In part 1 we looked at Third Party Observations, which are observations that are filed against
a pending application before it is granted at the European Patent Office.
In this talk we're going to look at what happens once a European patent has been granted.
It is still possible to challenge a patent for a short time after it has been granted,
using a procedure known as the Opposition procedure.
1:33
I'd like to recap the issue of Third Party Observations, which are filed before grant
of a patent, i.e. during the time the patent application is pending.
Things that have happened during the application stage, and arguments that may or may not
have been filed as Third Party Observations during the examination procedure for a pending
application, could very well be relevant to how an Opposition is filed and prosecuted.
In other words, arguments that were filed as Third Party Observations
may well have an impact on the direction that an Opposition could take.
You will recall that Third Party Observations are a cost-effective way of revoking a patent application,
or limiting the scope of the patent application with Europe-wide effect, before the application
is ever granted, in some cases the patent never makes it to grant and it is completely rejected,
or in other cases a more limited patent is granted.
The problem is that there's no guarantee that the EPO will consider any of the objections
raised by the third party.
Part of the problem is that the third party does not become a party to the proceedings themselves,
and it is harder for the third party to press home any arguments
than would have been the case if they were directly involved in those proceedings.
In addition, the EPO does not notify the third party about the progress of the patent application
through examination, so the third party has to monitor the official file to check the progress of the examination.
One important point that was made in part 1 of this presentation concerns the fact
that the filing of Third Party Observations does not prevent a future Opposition being filed,
and that is what we're going to look at today.
All of this means that if the patent application survives third-party objections and proceeds
to grant, then it becomes necessary to challenge the patent through the Opposition procedure.
Some of the arguments used during the Third Party Observations may be strong arguments
which can be carried into the Opposition brief, but there might be other arguments that initially
appeared to be good arguments, but during the examination phase prove to be weaker arguments.