Barker Brettell successfully defends major power tool company’s patent against competitor’s Opposition

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Scope of patent maintained as granted before the Opposition Decision and subsequent Appeal Proceedings

Barker Brettell successfully defended the scope of a patent awarded to a client, a major power tool company, against an Opposition filed by a large competitor before the Opposition Division of the European Patent Office (EPO).

Following a successful prosecution of the European application one of the company’s major competitors filed an opposition. As is typical, the opposition alleged that the claims as granted contained additional matter extending beyond the disclosure of the application as filed; that the claims lacked novelty over two documents; and that at least claim 1 lacked inventive step over these two documents in view of the teaching of a further document. Written arguments were filed by both parties prior to a Summons to Oral Proceedings before the Opposition Division in The Hague. In the Summons to Oral Proceedings the Opposition Division indicated that their initial opinion was that the claims as granted lacked inventive step.

For this important case one of the client’s overseas attorneys and a representative from the company flew to The Hague to be able to provide input before and if needed during the Oral Proceedings. It was important to the client that if the claims had to be amended from the form in which they were granted that a wording was found that would still cover the opponent’s products and those of a further competitor. Many hours were spent preparing wordings and arguments that might be needed in preparation for the Oral Proceedings.

At the hearing Jo Kent, patent attorney at Barker Brettell LLP, led the presentations to the Opposition Division that the claims as granted met the requirements of the European Patent Convention.

Firstly arguments were presented on the amendments made to the claim in prosecution and that the challenged features did not constitute an “intermediate generalisation”. It was established that the features had been presented in combination with the other elements of claim 1 in the application as filed and that additional features had not been presented as being essential. These arguments were successful and consideration moved on to novelty and inventive step.

In presenting submissions on novelty it was necessary to be clear on the disclosure of the application and the meaning to be given to the terms in claim 1. Despite extensive arguments by the opponents the Opposition Division agreed that the terms in claim 1 were to be interpreted as written and claim 1 was held to be novel.

The major part of the discussion related to the inventive step of the claims as granted. The Opponent’s argued that the “person skilled in the art” would combine the teachings of three documents to arrive at the claimed invention. In order to show a lack of inventive step the Opponent has to argue that the person skilled in the art could and would combine the disclosures in the earlier documents to arrive at the claimed features. The Opposition Division were initially inclined to find that the features could be combined (i.e. that everything necessary to arrive at the claimed invention was to be found in the earlier documents) and that the skilled person would combine the features.

The Barker Brettell attorneys’ task had been to analyse the documents and the “overall disclosure” and in the Oral Proceedings to explain convincingly to the Opposition Division that although the skilled person could combine the features that, in the absence of the knowledge of the invention, they would not have done so. Barker Brettell was able to do this by showing the features that would need to be changed and more importantly why each document would discourage the skilled person from making the necessary changes.

After the submissions, and counter arguments from the opponents, the Opposition Division held that the patent should be maintained with the claims as granted, to the delight of the proprietor.

Given the importance of the patent to both parties the Decision was appealed by the opponent. The proprietor considered that the matter was sufficiently important to request additional submissions from a previous member of the Enlarged Board of Appeal who also reviewed and approved the client’s submissions in the initial stages of the Appeal. The two parties settled the dispute to Barker Brettell’s client’s benefit before the case finally came to Appeal Oral Proceedings and the appeal was withdrawn leaving the patent maintained as granted.

Despite an initial unfavourable opinion, the Barker Brettell team was able to maintain its client’s rights and the outcome means that there is no possibility of further action by the opponent before the EPO. The client was able to protect their position in a competitive market with a patent that had been challenged and found to be valid with the scope of protection as originally granted.

Barker Brettell has a strong track record in patent and trade mark oppositions and appeals. If you need help or advice on defending or challenging an Intellectual Property matter, please contact the author or your usual Barker Brettell attorney.