Patent Opposition

EPO opposition is the primary mechanism for challenging European patents after grant: LEGAL BASIS: Article 99-105 EPC (European Patent Convention); TIMING: any third party (including competitors, industry groups, or anonymous third parties) can file an opposition within 9 months of the publication of the grant of the European patent; GROUNDS FOR OPPOSITION: Article 100 EPC — only three grounds: (a) lack of novelty or inventive step (prior art): the most common ground; (b) insufficient disclosure (enablement failure): the application doesn't enable a POSITA to reproduce the invention; (c) extension beyond original disclosure: the granted claims or description were extended beyond the content of the original application (added subject matter); NOTE: unlike US IPR, EPO oppositions can include Art. 100(c) added matter challenges; PROCEDURE: opposition is filed with the EPO Opposition Division (three technically qualified examiners); observation period: patent owner responds; typically 12-24 months to first written decision; POSSIBLE OUTCOMES: patent MAINTAINED AS GRANTED; patent MAINTAINED IN AMENDED FORM (proprietor proposes amendments to overcome the opposition); patent REVOKED (the entire patent is invalidated); APPEAL: either party can appeal to the EPO Technical Board of Appeal (TBA); TBA decisions are final and binding; third-level appeal to the Enlarged Board of Appeal for important legal questions; GEOGRAPHIC SCOPE: if the EPO revokes a European patent, the revocation applies to ALL member states in which the patent was validated; this is extremely powerful — one proceeding can invalidate protection across 44 member states; COST: opposition filing fee ~€880; attorney fees €10,000-€50,000+ through oral proceedings; much cheaper than litigating separately in each European country; ANONYMITY: oppositions can be filed 'in the name of' a third party through a straw-man opposition attorney; the true opponent's identity need not be revealed.

Inter partes review is the primary US mechanism for challenging issued patents at the USPTO: LEGAL BASIS: 35 U.S.C. §§ 311-319; created by the America Invents Act (AIA); effective September 16, 2012; TIMING: must be filed within 1 year after service of a complaint alleging infringement; no general 9-month window (unlike EPO); if no infringement complaint has been filed, can file at any time during the patent term; GROUNDS: only § 102 (novelty) and § 103 (obviousness) based on patents or printed publications; § 101 and § 112 grounds CANNOT be raised in IPR (unlike EPO opposition); INSTITUTION THRESHOLD: 'reasonable likelihood that the petitioner would prevail on at least 1 challenged claim'; about 60-70% of IPR petitions are instituted; PROCEDURE: three-member panel of Administrative Patent Judges (APJs) at PTAB; one year from institution to final written decision (FWD); DISCOVERY: limited — depositions of declarants only; no document requests or interrogatories; oral hearing optional but typical; ESTOPPEL: after FWD, petitioner estopped from asserting invalidity in district court or ITC on any ground that was raised OR COULD HAVE BEEN RAISED in IPR; COST: USPTO fees $19,000-$25,000; attorney fees $50,000-$200,000+; OUTCOME: FWD cancels all, some, or none of the challenged claims; certificate of unpatentability issued for canceled claims; STATISTICS: approximately 45-50% of all claims that reach FWD are canceled; EPO vs. IPR: EPO: 9-month window; all grounds; covers all EP states; appeals within EPO; cheaper; IPR: 1-year bar from complaint; § 102/§ 103 only; covers US only; PTAB + Federal Circuit appeals; more expensive; faster timeline (12 months).

Post-grant review (PGR) is a broader but narrowly time-limited post-issuance challenge: LEGAL BASIS: 35 U.S.C. §§ 321-329; available for patents with ANY claim having an effective filing date on or after March 16, 2013 (AIA first-inventor-to-file patents); TIMING: must be filed within 9 months of the patent's grant or reissuance; after 9 months, only IPR is available (limited to § 102/§ 103); GROUNDS: MUCH BROADER than IPR: any ground of invalidity under § 101 (eligibility), § 102 (novelty), § 103 (obviousness), § 112 (specification requirements), and any other ground; this is the same scope as EPO opposition grounds; INSTITUTION THRESHOLD: 'more likely than not that at least 1 of the challenged claims is unpatentable'; slightly higher than IPR's 'reasonable likelihood' standard; PROCEDURE: same PTAB panel as IPR; 12-month timeline to FWD; ESTOPPEL: after FWD, petitioner estopped from raising in district court any ground raised or reasonably could have been raised in PGR; STRATEGIC USE: PGR is ideal for challenging: § 101 eligibility (Alice/Mayo challenges); written description and enablement (§ 112); newly issued patents before competitors design around; COVERED BUSINESS METHOD REVIEW (CBM): a special PGR-like proceeding for financial product/service patents; originally created by AIA; SUNSET: CBM petitions could only be filed before September 16, 2020 — now expired; any CBM patent can still be challenged via IPR (§ 102/§ 103) or PGR (within 9 months of grant); TIMING TRAP: missing the 9-month PGR window and being served with an infringement complaint within 1 year = ONLY IPR available; § 101/§ 112 challenges must then be pursued in district court (more expensive).

Patent challenge strategy requires selecting the right forum for each situation: EPO OPPOSITION — BEST WHEN: patent recently granted (within 9 months); patent covers the European market; patent has clear prior art or added matter issues; budget is limited (EPO opposition is very cost-effective per country covered); the company wants to destroy the patent across all of Europe in a single proceeding; challenging validity early before significant infringement damages accumulate; US IPR — BEST WHEN: within 1 year of service of infringement complaint (or proactively before being sued); strong prior art exists (patents or printed publications); the 35-page petition limit allows complete presentation of the strongest arguments; looking for faster resolution (12 months) than district court litigation; using IPR as part of a 'dual track' strategy (IPR + district court invalidity defense running simultaneously); CAUTION: IPR estoppel is broad — all grounds that COULD have been raised; must account for prior art searches before filing; US DISTRICT COURT — BEST WHEN: § 101 eligibility is the primary invalidity argument (cannot be raised in IPR); § 112 challenges are strongest (can be raised in PGR but not IPR; district court has no IPR-timing limit); IPR is time-barred (more than 1 year after complaint); the company can fund full litigation; the company wants a jury decision; COMBINED STRATEGY: file IPR immediately after being served with complaint (within 1 year); simultaneously assert invalidity in district court (§ 101/§ 112/other grounds not available in IPR); attempt to stay district court litigation pending IPR outcome; request is often granted (reduces court workload); COST COMPARISON: EPO opposition: €15,000-€60,000+; US IPR: $70,000-$250,000+; US district court invalidity defense: $1M-$5M+; UK/Germany invalidity: £50,000-£200,000+.

EPO opposition grounds are more limited but different from US proceedings: GROUND 1 — LACK OF NOVELTY OR INVENTIVE STEP (Article 100(a)): most common ground; based on prior art that was not considered during examination; prior art can include: patents from any country; academic publications; prior use or disclosure (must be sufficiently documented); NOVELTY ANALYSIS: the same EPO novelty test (Article 54): a single disclosure disclosing every claimed feature; prior art not limited to published documents (public prior use also counts); INVENTIVE STEP ANALYSIS: EPO problem-solution approach; identify closest prior art; formulate objective technical problem; could/would analysis; secondary evidence (unexpected technical effects); GROUND 2 — INSUFFICIENCY OF DISCLOSURE (Article 100(b)): the European specification was insufficient for a skilled person to carry out the invention; equivalent to US § 112 enablement; requires clear and convincing evidence that POSITA cannot make/use the invention; GROUND 3 — ADDED MATTER (Article 100(c)): the patent's claims or description were extended beyond the content of the application as originally filed; this is similar to US § 132 new matter prohibition but applies to granted claims; a claim limitation was changed to be broader or narrower without basis in the original application; 'intermediate generalization': adding a specific feature from an example to a broader claim without adequate basis; COMBINATION OF GROUNDS: most successful oppositions use ground 1 (novelty/inventive step) with supporting grounds; ground 3 (added matter) is sometimes the most decisive — if a claim was broadened during prosecution without basis, it can be revoked; BURDEN OF PROOF: opponent bears the burden of proving invalidity; claim construction is done objectively by the Division; AUXILIARY REQUESTS: patent owner can submit multiple auxiliary requests (amended claim sets) to be considered if the main request fails.