Challenging European patent matters before the EPO – options at a glance
In the context of a European patent application which is processed by the European Patent Office (EPO), there are various mechanisms available to a third party wishing to challenge the validity of the application before the EPO - either before, or after, the application is granted.
Third party observations
The first option is to submit third party observations on the European patent application, before the application is granted. There is no official fee payable for submitting third party observations (TPOs), and one of their prime advantages is that they can contain comments relating to any issue prejudicing the allowance of the patent application. Such TPOs might thus potentially include comments about any claims from the patent application lacking novelty; lacking an inventive step; being insufficiently disclosed; and/or relating to subject matter which was not disclosed in the content of the underlying application as filed. TPOs might crucially also raise issues in other respects, such as the claims of the patent application being deemed to lack clarity.
Where TPOs are contemplated, there is the option to submit them anonymously if required, which can be very useful - particularly in instances where the third party in question has a relationship with the owner of the patent application which they may otherwise wish to maintain and/or keep neutral. There is no (additional) official fee for submitting TPOs anonymously.
Where TPOs are not submitted anonymously, such that an identity for the third party is provided as part of the observations, this can cause the examination of the European patent application in question to be accelerated, in so far as the examiner of the patent application will then try to issue any next office action within three months of the observations being submitted.
It is to be noted that TPOs (along with any identity of the third party observer, where provided) are made publicly available on the file wrapper of the patent application where such observations are submitted. This can, in itself, be beneficial where the TPOs include relevant new prior art, and where the European patent application in question also includes counterpart patent applications in other jurisdictions (such as the USA or Israel) where there is a duty of disclosure on the patent application owner to inform the patent registry of any pertinent prior art. Accordingly, by submitting any relevant prior art as TPOs on the European patent application in these instances, this can force the owner’s hand to have to also disclose this prior art on these counterpart applications, or otherwise risk these counterpart applications being deemed unenforceable.
A potential issue with TPOs is that since they can only be made before the European patent application in question is granted, this may provide the owner of the patent application with an opportunity to correct/respond to any identified issue before the patent application is granted. This contrasts with the situation where the issue is raised after the patent application is granted, noting at that time there are then fewer ways for the patent owner to potentially remedy the issue.
In this respect as well, the usage of TPOs before a European patent application is granted can also provide notice to the owner of the patent application that its contents are of potential commercial relevance to a third party. Thus in these instances, this might cause the owner of the patent application to pursue one or more divisional patent applications, which may have otherwise not been pursued had the TPOs not been submitted in the first instance.
In all, however, it can be seen that usage of TPOs may provide for a quick, and cost effective, mechanism for potentially challenging the validity of a European patent application before it is granted.
TPOs aside, once a European patent application has been granted, another option for challenging its validity is to submit a formal opposition before the EPO within nine months of the publication of the mention that the European patent has been granted in the European Patent Bulletin.
There is also an official fee for submitting an opposition (currently in the order of EUR 840), and unlike TPOs, an opposition cannot raise issues directly concerning any lack of clarity of the claims as granted. The opposition can, however, challenge other issues relating to the claims as granted, such as these claims lacking novelty; lacking an inventive step; being insufficiently disclosed; and/or containing subject matter which was not disclosed in the content of the underlying application as filed.
Particularly where the granted independent claims of the European patent contain wording which was not disclosed in the content of the underlying application as filed, and in such instances where it is not possible to restrict this wording to some other narrower wording which was disclosed in the content of the underlying application as filed, such an issue when raised as part of an opposition can be particularly problematic. This is because the patent owner can then find themselves in an irreparable trap where they cannot keep the offending independent claim wording, nor can they amend the wording to something else which is narrower (noting it is not possible to broaden the scope of the independent claims of a European patent after it is granted). The only recourse in these instances, and if all of the independent claims are effected, is for the patent to be revoked.
Noting the above, it can be seen that raising issues on the validity of a European patent via an opposition, rather than via TPOs before the patent is granted, can thus be potentially more damaging to the patent owner, since after grant the owner will have less means at their disposal to potentially address any issues which are raised.
In so far as an opposition of a European patent is contemplated, it is not possible for the opposition to be made entirely anonymous (unlike TPOs), since the opposition must be allocated to a legal entity, whether this be an individual or a company. It is however, possible, to submit the opposition pseudo-anonymously, via a proxy (often called “strawman”) entity, if required. In this case, the opposition is then owned (and will be shown on the publicly available European patent register as being owned) by the proxy entity, even if this entity is then taking instructions behind the scenes from some other entity who otherwise wishes to remain anonymous.
In terms of timescales, an opposition of a European patent may typically span two to three years before reaching its conclusion. Where an appeal is then submitted by any adversely affected party from the opposition proceedings, which is available as-of-right if required (albeit with payment of an additional appeal fee), this may then typically protract the opposition proceedings by another two to five years.
With respect to cost recovery, each party to opposition proceedings before the EPO is usually expected to bear their own costs (unless one particular party is deemed to have behaved particularly unreasonably/inequitably).
In all however, it can be seen that usage of TPOs, or an opposition, may each have their own associated advantages and disadvantages when it comes to challenging the validity of a European patent matter. As to which option may be most appropriate, this may very much depend on the facts of the case, and the stage of proceedings which the European patent matter is at.
For those with any questions as to which option may be most appropriate, please do not hesitate to contact your usual adviser.