Restricted scope of patent reduces threat

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After identifying a patent filed by a competitor via a patent watching service, our client, an aerospace component manufacturer, asked us to develop comprehensive arguments to be used in an opposition at the EPO.

The Challenge

The concern was that the claimed invention, being broadly defined, might be used to argue for infringement far beyond the limited disclosure of the patent. This could potentially affect our client’s products. Prior art was found that would be relevant to the broadly defined invention, which in the end had the effect of forcing the proprietor to interpret the claimed invention more narrowly. The proprietor was therefore squeezed between having a valid patent and being able to interpret it more broadly to argue for infringement.

The Solution

This particular opposition was a challenge, because some of the terms in the patent were poorly defined and had to be construed to make sense, making it difficult to be sure of the intended scope. After filing the opposition, it took the normal 18 to 24 months before a final decision was made by the opposition division following a hearing at the EPO in Munich.

The Result

Although the result was that the patent was not actually revoked, the interpretation applied by the EPO and the amendments made greatly clarified how the claimed invention was to be interpreted, which was much more narrowly than might have otherwise been assumed. The opposition division’s view was that the invention was directed to a specific form of mechanism that would not be applicable to other types of equivalent mechanisms. The benefit to our client is that it would now be difficult for the patent proprietor to argue for a broader interpretation for this or any other patent in the same family, given the arguments they have put on the public record. The client can now be much more confident that the patent, or any other patent in the same family, is much less of a potential threat to them than might have been the case before the opposition was filed.