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Murgitroyd and Sonoda & Kobayashi present

Patents: opposition proceedings and nullity actions – a comparison between Europe and Japan

Dr.sc. Robert Börner Dr. Yoshitaka Sonoda

Luca Escoffier Diane Beylier moderators

Webinar, April 27, 2018

Option 1 : OPPOSITION u Filed within 6 months

from publication of the patent

u Oppositions were revived in Japan in 2015.

u 1250 oppositions were filed in 2017

Option 2 : NULLITY ACTION u Filed any time after grant

of the patent u 161 Nullity Actions were

filed in Japan in 2017

q 318,028 patents were filed in 2017 in Japan q 199,577 patents were registered

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OPPOSITION AT THE EPO / NATIONAL INVALIDATION PROCEEDINGS

Number of granted patents in 2017: 105,635

Number of oppositions filed in 2017:

≈ 3900

Source: EPO Status: 22.1.2018

Invalidation proceedings at the Federal German Patent Court (2016) Filed: 284 Pending: 403 Closed: 206

Patent revoked: 43.62 % Patent upheld in amended form: 35.46 % Invalidation request rejected: 20.92 %

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OPPOSITION AT THE EPO - ENTITLEMENT

•  opposition open to „any person“ (Art. 99 (1) EPC) •  no own legal interest required •  one exception: patent owner not entitled to file an

opposition (however, the inventor is) •  opponent needs to be identifiable

not possible to file an opposition anonymously •  use of third party as „straw man“ allowable,

unless the intent is to circumvent the law not possible to use straw man for patentee •  status as opponent may be transferred/assigned

only as part of the opponent's business assets

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u Any third can file an Opposition, not only interested party

u An Opposition can be filed anonymously, using a “straw man”

Advice to Opponent

Ø  The strawman should not be a patent attorney so as to actually hide the true identity

Ø  Choosing an Opposition is recommended if you want to remain anonymous

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Reasons for which an Opposition may be made are matters of public interest:

u lack of novelty or lack of inventive step u lack of support, clarity or enablement u Introduction of new matter by amendments §  Double patenting §  Non patentable subject matter

Advice to Opponent

Ø  An Opposition is not an inter-partes procedure, the opponent must convince the board of appeals, and the board may raise its own reasons for revocation

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OPPOSITION AT THE EPO – GROUNDS (1)

Art 100 EPC (a) the subject-matter of the European patent is not patentable under Art. 52 to 57 EPC

lack of novelty / inventiveness excluded subject matter no industrial application

(b) the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (“lack of sufficiency”) (c) the subject-matter of the European patent extends beyond the content of the application as filed (Art 123 (2) EPC) No grounds: lack of unity / lack of clarity / lack of support /

formal matters / inventor designation wrong / patentee not entitled to patent / …

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OPPOSITION AT THE EPO – GROUNDS (2)

•  all raised grounds need to be substantiated in the notice of opposition

•  “new” grounds for opposition, i.e. grounds raised after the expiry of the opposition period

only allowable, if “prima facie” relevant may also be raised by the opposition division „grounds“ covered by Art 100(a) are separate grounds

•  Amended claims need to comply with all requirements of

the EPC if amendments are based on description only “new” grounds may be raised further objections possible (e.g. clarity, unity, …)

ADVICE: Raise and substantiate all grounds for opposition in the notice of opposition !

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OPPOSITION AT THE EPO - TIMEFRAME

•  deadline for filing opposition is 9 months from the publication of the mention of the grant of the European patent

•  EPO initiative „early certainty for opposition“ lower average time to 15 months (currently > 25 months) Strict deadline regime (EoT only in exceptional cases)

•  „officially“ one round of submissions before summons to oral proceedings, i.e. opposition note and reply of patentee

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OPPOSITION AT THE EPO - HEARING

•  summons at least 6 months before hearing •  summons includes preliminary opinion •  last statements to be filed 2 month before hearing •  new requests / evidence only admitted if prima

facie relevant •  possible outcome (decision at end of hearing)

–  maintain patent as granted –  maintain patent in amended form –  revoke patent

•  minutes and written decision will follow within some weeks after the hearing

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Ø  The 6-month time period is short for non-Japanese opponents and filing a Nullity Action would be more suitable in cases in which counter-experiments must be performed, in particular

Ø There is no oral hearing, therefore test data and affidavits must be detailed and self-explanatory

Ø A decision can be expected within 6 months

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JPO

PatenteeOpponentPublication of

patent

Filing of Opposition

Forwarding of copy

May request accelerationStart Examination

Notify of reasons for revocation

Filing of Remarks and/or Amendments

Request comments (if amending)

Filing of Remarks (when

amendments are requested)

Continued Examination

Decision by board

Are there reasons for revocation?Yes

No

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u A decision to maintain the patent cannot be appealed. In contrast, the patentee can file an appeal against a decision of revocation with the IP high court.

u Filing a Nullity Action would be the next step Ø However, overturning a decision by a Nullity

Action requires a higher burden of proof Ø We recommend waiting at least 6 months to allow

for potential changes in board membership

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OPPOSITION AT THE EPO – APPEAL (1)

•  appeal to be filed within two months of notification of the contested decision

•  appeal fee to be paid •  grounds to be filed within four months of notification of

the contested decision

•  appeal only possible if adversely affected by decision •  no „reformatio in peius“

•  grounds of appeal and reply should contain a party‘s complete case, i.e. all facts, arguments, requests and evidence

•  later filed evidence / requests may be rejected 13

OPPOSITION AT THE EPO – APPEAL (2)

•  some boards will only review legal aspects of the first instance decision (maybe in future all boards)

only requests filed in first instance will be accepted no further technical discussion possible

•  usually one round of submissions before summons to oral proceedings (with preliminary opinion)

•  deadline for final submissions 1 month before hearing

•  it is possible for the board to remit case to first instance

•  current time frame 3 – 4 years, to be decreased by „increase of productivity“

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NATIONAL INVALIDATION PROCEEDINGS (FOCUS DE)

•  EP patent divided into plurality of national patents •  no centralized invalidation possible

Germany •  court action at Federal German Patent Court •  formalistic proceedings •  open to general public (no legal interest needed) •  no deadline but not possible, if opposition

pending •  language of proceedings is German but language

of EP patent relevant

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GERMAN INVALIDATION PROCEEDINGS (1)

•  one round of statements, i.e. grounds for invalidity and reply by patentee

•  preliminary opinion of court indication main issues and setting date for oral proceedings

•  one more round of statements possible in preparation of oral proceedings

•  decision on costs (losing party bears costs) •  high cost risk (depending on value of case)

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GERMAN INVALIDATION PROCEEDINGS (2)

•  possible grounds for invalidation are the same as in EP opposition, however, additional ground of fraudulent abstraction

•  patent court not bound to earlier decision of EPO •  additional prior art in form of national „earlier

rights“ •  possible to raise same ground for invalidation as

in earlier opposition •  advisable to rely on additional documents if

possible

•  average time frame until decision is 25 months

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GERMAN INVALIDATION PROCEEDINGS APPEAL

•  appeal to Federal German High Court to be filed within one month of notification of the contested decision

•  grounds to be filed within three months of notification of the contested decision

•  appeal only possible if adversely affected by decision

•  no „reformatio in peius“

•  High Court reviews appeal for admissibility and summons for oral proceedings

•  High Court may ask for further statements 18

GERMAN INVALIDATION PROCEEDINGS APPEAL

•  new evidence, arguments and requests may be rejected as late filed

•  in principle only a legal review of first instance decision

•  court may call for technical expert •  decision taken in oral proceedings

•  timeframe: 2 to 4 years •  decision on costs (losing party bears costs) •  high cost risk (depending on value of case) •  around 60 new cases per year

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u An interested third party can file a Nullity Action any time after grant of a patent u Nullity Actions therefore cannot be filed anonymously

u The cost is 2-3 times as much as for an Opposition u For a 10-claim application, the official fees are about

300 euros for an opposition but 780 for a Nullity Action

u Attorney hours usually double due to preparation for and attendance of oral hearings

u A decision can be expected within a year

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Reasons to invalidate a patent are similar to those for an Opposition: u Lack of novelty or lack of inventive step u Lack of support, clarity or enablement u Introduction of new matter by amendments §  Double patenting §  Non-patentable subject matter

u Additionally, the ownership of the patent may be raised

u The board of appeals is bound by the reasons and arguments and cannot raise any additional reasons to invalidate the patent

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u In contrast with oppositions, an opponent may appeal the decision to maintain the patent to the IP High court

u The patentee can also appeal a decision of invalidation

Ø Nullity Actions had a 60% success rate in 2006, however, among the 345 decisions issued last year, only 30.9% were to invalidate

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Opposition Nullity Action Comments

Term for filing

6 months from publication of patent

Any time after grant

Only a Nullity Action is available after 6 months

have passed

Eligibility for filing Any third party Interested parties A strawman may be used

for an Opposition

Possible reasons for

filingReasons for rejection

Reasons for rejection + rights

ownershipOnly a Nullity Action is available for ownership

Style of proceedings

Initiative by the board Inter-partes

An Opposition is more difficult to invalidate a

patent?

Presentation of

argumentsDocumentary Documentary +

oral examinationNo disadvantage for foreign party in an

Opposition

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Opposition Nullity Action Comments

WithdrawalNot possible after a

Notice of Reasons for Revocation is issued

Anytime before finalization of the

decision

Official feesJPY 16,500 (124

euros) + JPY 2,400 (18 euros) x Nc

JPY 49,500 (373 euros) + JPY 5,500

(41 euros) x Nc The total cost tends to be higher for Nullity Actions

Speed 5.8 months on average One year Difference insubstantial if

appealed

Appeals•  Revocation may

be appealed by patentee at the IP High Court

All decisions may be appealed to the

IP High Court

Once an Opposition is rejected, new evidence will likely be needed to

invalidate the same patent with a Nullity Action

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EPO OPPOSITION VS. INVALIDATION

EPO opposition Invalidation

Centralized proceedings Plurality of national proceedings

Each party bears own costs Losing party bears costs

„cheap“ High cost risk

Only EP „earlier rights“ Additional national „earlier rights“

Only possible within 9 month after grant

No deadline for filing court action Possible in addition to EP opposition

EPO may continue opposition after withdrawal

Ends if action withdrawn

EPO opposition seems advisable 25

}  Low success rate for opponents who seek the revocation of a patent

}  Recent pro-patent trend at the JPO }  The success rate for Oppositions is low (12.7%)

compared to that for Nullity Actions (30%)

Year Total Decisions Revoked Maintained

(Amendments) Maintained (No Amendments)

Withdrawn or Dismissed Pending*

2015 362 46 (12.7%) 167 (46.1%) 145 (40.1%) 4 (1.1%) 1

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In decisions to maintain a patent, the claims were amended in 51.3% of the cases, however u Amendments are made by the patentee and

the resulting patentability is examined by the board of appeals;

u The opponent cannot directly influence the amendments and the claims.

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Choose Opposition for: v Lower costs v Speed v Anonymity

Choose Nullity Action if: ² Invalidation is of the

utmost importance ² 6 months is too short to

prepare evidence ² Ownership of the

invention is to be raised ² To be used as a tool for

negotiation (license against withdrawal)

Ø An Opposition can be seen as a continuation of Observations

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INVALIDATION PROCEEDINGS FOR UNITARY PATENTS

•  invalidation action for unitary patent to be filed at Central Division of Unified Patent Court

•  centralized proceedings with one decision for full territorial scope of unitary patent

•  language of proceedings is language of patent •  very strict time frame (12–15 months) •  high court fees and cost risk

(based on value of case) •  appeal possible •  no case law „unknown territory“

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UPC AND UNITARY PATENT - STATUS

•  court action pending against UPC scheme at German Constitutional Court

•  decision expected during this year (?) •  if positive decision, a fast ratification by DE and

UK is possible

UPC system may enter into force within

months effect of BREXIT ???

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Thanks to the audience!

Dr.sc. Robert Börner Murgitroyd, Munich Office

Dr. Yoshitaka Sonoda Sonoda & Kobayashi