Unlike the United States, post-grant there is only one option available to challenge a patent. The post-grant opposition is the only procedure available to be able to challenge a patent centrally with the European Patent Office. This process is similar to the post-grant review (PGR) where the said procedure can be instituted within a period of 9 months from the grant of the patent. This period cannot be extended even under exceptional circumstances. A party loses its chance to initiate such an opposition post this 9-month window. After which there is no process available centrally and any such challenges may have to process territorially with the individual contracting states where the patent is being enforced. The opposition is filed along with the statement detailing the grounds on which the challenge is being raised along with the fees.
Grounds for Opposition
The grounds which are available to challenge the patent in a post-grant opposition are those which are substantive in nature and not formality based. For instance, lack of precision is not ground for opposition. However, if the inventions fall within the ambit of prohibited subject matter or lack novelty or inventive step and if the specification is not enabling, i.e. if the sufficiency of disclosure requirement is not being met, then the said patent may be challenged via a post-grant opposition procedure with the European Patent Office.
In order to prepare the statement with the grounds of opposition by substantiating the said statements with the necessary prior art references and the detailed arguments elucidating the obviousness and therefore the lack of inventive step in the invention is paramount. Since the opposition procedures are initiated mostly by parties which have an interest in the same, an unsubstantiated request will not solve the purpose of the opposition proceedings.
Once a request has been made, the patent owners are notified for the existence of such an opposition and are given a timeframe to respond to the same. These time periods may be extended under certain exceptional circumstances. They are required to state the reasons for why the patent has to be maintained and not revoked by overcoming the grounds stated in the opposition statement. This response is communicated by the Patent Office back to the Opponents and as well as reviewed by the Examiner, mostly the same Examiner who has examined the application initially. Post this, the parties are invited for oral proceedings where further submissions are to be made by both parties.
Generally, along with the said summons for the oral hearing, the Examiner also send a preliminary opinion. Both parties are given a minimum time period of at least 6 months to be able to attend the oral hearing. At the oral proceedings, both parties are given an option for presenting their arguments and the decision is mostly an oral decision either to maintain the patent or to revoke. Generally, a detailed decision is not given by the opposing divisions. This decision is also appealable.
In certain cases, the patent is also maintained with an amendment. It is pertinent that the patent once granted with an amendment cannot be broadened with the European Patent Office. There are no options akin to a broadening reissue with the European Patent Office. Hence the initiating third party or the defending patent proprietor have to prepare detailed statements and submissions to be able to successfully initiate or overcome this opposition. These Opposition proceedings last for a period of 2-3 years and in the event, the same are appealed, the further appeal processes might take up to 3 years additionally. Therefore, this process is time-consuming and entails a lot of efforts, and hence mostly third parties which initiate such proceedings only if their interest in the said patent/technology is peaked.
We at OutsourceIP are equipped to perform patent searched including prior art and/or invalidity searches as the requirement may be and provide detailed technical analysis to support a statement of opposition and are also capable of supporting the submission by the patent proprietor for differentiating the prior art references stated with respect to the patent which is being opposed by also making elaborate claim chart analysis.