The gloves are off: Europe is the location to test competitor patent validity.

Stopping your competitors from obtaining patent protection can be equally as important as patenting your own inventions. You don’t necessarily need to go to court to do this – many national Patent Offices have opposition systems you can use instead of or in conjunction with legal proceedings. The cost of challenging a patent is important to consider. The costs for oppositions in Europe and Japan are up to ten times lower than in the USA. Attorney fees can be higher in Europe than in Japan, but translation requirements in Japan can be a hidden cost.

Europe

In Europe, opposition at the EPO can be a cost-effective, time-efficient way to centrally challenge a granted European patent. There is a time limit for filing an opposition at the EPO, and if you miss that then each national patent derived from the European patent must instead be attacked individually according to national law. This can result in increased cost, time and effort compared to opposing the patent centrally at the EPO. Importantly, there is no estoppel in European National Courts based on opposition at the EPO.

Country Europe
Proceedings Opposition
Deadline for filing? Within 9 months from grant
Qualifying patents? Any patent
Who can file? (Does real interested party need to be disclosed?) Any third party (no)
Available grounds?
  • Lack of novelty or inventiveness
  • Lack of industrial application
  • Unpatentable subject-matter
  • Additional subject-matter beyond application as filed
  • Insufficiently clear and complete description of invention
Threshold for proceeding? Formal requirements only
Who can appeal? Party adversely affected by decision
Does estoppel prevent court proceedings? No
Cost?
To file:
To take through to grant*:
*depending on complexity
  • Attorney fees: MEDIUM
    – £5k-£15k (av. £10k)
    – £10k-£50k*
    (av. £25k)
Timescale? Streamlined procedure approx. 15 months for straightforward cases

The benefit of central attack via opposition at the EPO has not gone unnoticed by patent applicants and proprietors in Europe – the number of oppositions filed at the EPO in 2016 was nearly double the number filed in 2014. In order to address the increased workload, the EPO introduced a streamlined opposition procedure on 1 July 2016.

Japan

So what are the key points of post-grant opposition proceedings in Europe versus Japan?

Country Japan
Proceedings Opposition
Deadline for filing? Within 6 months from grant
Qualifying patents? Any patent
Who can file? (Does real interested party need to be disclosed?) Any third party (no)
Available grounds?
  • Lack of novelty or inventiveness
  • Lack of industrial application
  • Additional subject-matter beyond application as filed
  • Subject-matter offends public order and morals
  • Patent granted to non-first application (double patenting)
  • Lack of enablement, disclosure, or clarity
  • Patent granted in violation of international treaty
  • Translation errors
Threshold for proceeding? Formal requirements only
Who can appeal? Patentee only
Does estoppel prevent court proceedings? No
Cost?
To file:
To take through to grant:
  • Attorney fees: LOW
    – £4k-£8k
    – Same as filing (unless written opinion filed – £6k-£10k in total (i.e. extra  ̴£2k)
Timescale? Typically proceedings take between 6 and 10 months (opposition based on written documents only – no oral hearing)

At a top level, there is significant cross-over between the opposition systems in Japan and Europe – both systems are available for a short time after grant, and allow a patent to be challenged based on earlier prior art and certain formal defects (e.g. added subject-matter). The main difference between Europe and Japan is that there is no oral hearing during opposition in Japan, resulting in lower costs and shorter proceedings than in Europe.

USA

The USA is more complex, with three different options for challenging patents at the Patent Office – ex parte re-examination, inter partes review and post-grant review. None directly correlate with Europe. The key differences to bear in mind are the available grounds for filing, the potential for estoppel, and the much higher cost of proceedings.

Country                                                                                   USA
Proceedings Ex Parte Re-examination Inter Partes Review Post-Grant Review
Deadline for filing? Anytime during enforceability of patent After 9 months from grant, reissue, or after conclusion of PGR Within 9 months from grant or reissue
Qualifying patents? Any patent Any patent Patents with effective filing date on or after March 16 2013
Who can file? (Does real interested party need to be disclosed?) Patentee or any third party (no) Any third party not currently challenging validity in court (yes) Any third party not currently challenging validity in court (yes)
Available grounds?
  • Lack of novelty or inventiveness

(based only on printed publications and patent documents)
  • Lack of novelty or inventiveness

(based only on printed publications and patent documents)
  • Lack of novelty or inventiveness
  • Lack of utility
  • Unpatentable subject-matter
  • Lack of written description, enablement or claim definiteness
  • Reissue requirements not met
Threshold for proceeding? Substantial new question of patentability Reasonable likelihood petitioner will prevail More likely than not than at least one of the challenged claims is unpatentable
Who can appeal? Patentee only Party dissatisfied with decision Party dissatisfied with decision
Does estoppel prevent court proceedings? No Any ground raised or that could reasonably have been raised Any ground raised or that could reasonably have been raised
Cost?
To file:
To take through to grant:
  • Attorney fees: MEDIUM
    – Approx. £15k
    – £30k – £60k
  • Attorney fees: HIGH
    – Approx. £50k
    – Approx. £250k – £800k
  • Attorney fees: HIGH
    – Approx. £50k
    – Approx. £250k-£400k
Timescale? Request accepted/refused within 3 months of filing, time to decision variable Institution within 6 months of request (if accepted), and decision within 12 months of institution Institution within 6 months of request (if accepted), and decision within 12 months of institution

The available grounds for ex parte re-examination and inter partes review in the USA are limited when compared to the opposition systems in Japan and Europe, although post-grant review offers a broader range of grounds on which to challenge a patent (similar to Europe). However, the law of estoppel means that no second bite of the cherry is available in the USA, as matters decided during inter partes review or post-grant review may not be brought again before a court. It is therefore worth thinking carefully about how best to attack a patent – the broader range of grounds available for post-grant review potentially leads to broader estoppel in those proceedings. The problem of estoppel does not arise in Europe or Japan, as parties are free to bring court proceedings before national courts to decide the same issue if the patent survives the opposition process.

If you would like any advice on how to challenge a patent (in any country or area, not only the three discussed above), please get in touch with your usual Barker Brettell attorney.

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