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01 February 2012

Oppositions & Appeals at the EPO - D Young & Co Continued Success

Those familiar with opposition and appeal procedures at the EPO will recognise the long gaps in the procedure between the response to the opposition or appeal and the EPO setting a date for oral proceedings. The calendar-setting unit of the EPO usually throws together a random set of dates for any attorney or firm. Somehow in 2011 the EPO managed to concentrate the attendance of D Young & Co attorneys in Munich and The Hague during the last quarter of the year. On one particular day, three of us managed to co-ordinate lunch intervals in our respective hearings to meet up and compare progress!

The important question from a client’s perspective must be – how did you get on then? We are pleased to report that in the final quarter of 2011, attorneys in the Biotechnology, Chemistry & Pharmaceuticals Group enjoyed an extremely successful period of success at oral proceedings. With attorneys attending hearings almost every week, we achieved a favourable result for our clients in over 90% of hearings.

Success in opposition or opposition appeal hearings varies from achieving maintenance of the patent in unamended or amended form (ensuring a scope of protection to encompass relevant commercial activity) or full or partial revocation (ie, sufficient to permit clients desired commercialisation).

Is there a secret to this success? Only the obvious – being well prepared for all eventualities. Although the Opposition Division, and increasingly, the Boards of Appeal provide some preliminary non-binding opinion in advance of the hearing, being prepared to support or try to overcome such a preliminary opinion at the hearing itself requires meticulous preparation for every possible argument the other party (parties) may seek to exploit. A detailed understanding of not only EPO case law, but the invention, underlying technology and the clients’ commercial objectives permits our attorneys to adapt their arguments as the hearing progresses.

The preparation of an opposition statement or reply thereto can greatly assist in the whole procedure starting on the right foot. Responding to the preliminary non-binding opinion before the oral proceedings assumes such a priority in advance of the hearing especially if that opinion is adverse to one’s clients’ objectives. In the course of the past few months many of these successes have come about by convincing the Board that their preliminary opinion was incorrect. Although the Board may open the hearing with such an opinion in mind, skilful advocacy can turn the case through a clear explanation of the invention and the prior art.

We are extremely proud of the continued success we enjoy at the EPO. If you wish to benefit from this, please contact your regular D Young & Co advisor, or if seeking our advice on opposition matters for the first time, please contact Neil Nachshen and your query will be directed to the technically relevant attorney.

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