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Challenging patents: EPO oppositions and appeals
Published on November 30, 2021 33 min
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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.
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.
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.