EPO opposition

Discover the support we can offer should you find yourself in a commercial or legal dispute.

Compared to drafting, prosecution or national litigation, European Patent Office (EPO) opposition work follows its own path. It demands attorneys with a certain skillset, fusing specialist legal knowledge, determination and focus, strategic insight, and impressive presentation skills. We’re proud to have those attorneys under our roof.

We’ve assembled a multi-disciplinary team of people with specialist expertise in handling and winning difficult patent oppositions and opposition appeals, particularly in Europe but also with overseas experience. If you require an EPO opponent representative that you can trust, then contact the experienced team at Abel + Imray.

Led by Jim Denness and James Ford, our EPO oppositions group is focused on working side-by-side with our clients to understand their commercial goals, and developing optimal strategies to deliver those goals.

Our track record at the EPO speaks for itself. In fact, many of our cases are transferred from other attorney firms to enable us to apply our experience and expertise to obtain the best outcome. We put our success in this area down to key traits:

In-depth knowledge

Not only of patent validity law, but also the particular procedural framework of oppositions and appeals.

• Effective planning

Understanding the bigger picture, thinking several moves ahead and laying the groundwork for any appeal is key to opposition success.

• Strong presentation skills

It’s crucial to both build a strong case and put it over effectively at the hearing. As videoconference hearings become the norm we have invested in facilities and training to ensure we can present our case in the best light, especially during long and complex hearings.

• Unending tenacity

Our determination to keep fighting when the going gets tough – or the unexpected happens – is the final element in a winning formula.

EPO Opposition Procedure - Our Approach

We offer a tailored approach to meet your needs when it comes to opposing a patent. The EPO opposition procedure is one that requires experience, expertise and determination.

When winning is vital for the success of your business, we’ll assemble a dedicated team to turn each stone, fight on every front, evaluate all your options, and collaborate with your other teams of lawyers and attorneys to manage parallel litigation.

For other situations, we will give you strategic advice on the available options, timescale, cost and likely outcome. We know how to focus on the priorities, be proactive and control costs to deliver the best result.

Patent Appeals

Our team has experience of the more formal EPO Appeal Board procedure and practice, including appearing at, and winning, Appeal Board Hearings. We take time and effort to prepare each case, including understanding the Appeal Board and its members.

"In my long experience of EPO oppositions yesterday's was very unusual and throughout it all you remained calm and professional and yet again prevailed. It was clear the immense amount of work you had put in and the dedication of bank holiday working did not escape me! We are lucky to have you."

Lucy Wojcik, Chief Intellectual Property Counsel. Ocado Group plc

Some Recent EPO Opposition Cases

• A key feature of our EPO opposition service is the ability to run oppositions independently for time-pressed clients. An example of this was our work for a US-based industrial chemistry client defending their European patent against an opposition filed by a competitor. Using our deep knowledge of both the technology and the opposition procedure, we succeeded in defending the opposition in a highly cost- and time-effective way for our client, and the Patent was upheld virtually unscathed. The client’s overburdened in-house patent attorney greatly appreciated the result achieved.

• A third party aerospace patent had initially been opposed with the opponent using another firm of attorneys. In the first-instance proceedings, the previous representatives made little headway and the patent was maintained largely unamended. The case, which was becoming of increased importance, was then transferred to Abel + Imray for appeal proceedings. Upon inheriting the case, we formulated new arguments and obtained a detailed portfolio of prior use evidence, including evidence sufficient to meet the EPO’s strict “up to the hilt” burden of proof. The first-instance decision was completely overturned, and the patent was revoked in its entirely.

• We handle a large portfolio of complex, multi-party and interrelated oppositions for a high-tech client. All the cases have been handled over ViCo so far, and we have adapted the way we handle and present the oppositions to reflect that, resulting in positive outcomes for the client. We continue to manage the whole opposition portfolio, working as a trusted partner with the client’s IP department. This has enabled the client to focus on their commercial objectives, whilst knowing the oppositions are in a safe pair of hands.

"An excellent outcome that reflected the highly complex technical, legal, and mathematical work done by A&I"

• We were asked by a client to take over an opposition against a patent owned by their main competitor, one of the world’s largest healthcare companies. When the competitor sued our client in Germany for alleged patent infringement, our experience of the procedure came to the fore. Outmanoeuvring the other side, we were able to accelerate the proceedings in the EPO and introduce new evidence and arguments, which eventually led to the elimination of the patent even before the German trial was held.

• On occasions when revealing the identity of the Opponent is undesirable, we file “strawman” oppositions in our own name. A strawman opposition is an opposition filed in the name of someone who is not the real party behind the opposition. A global pharmaceutical company approached us to oppose a patent granted to a not-for-profit organisation that had extremely broad claims. We also appreciate the role that effective negotiation can play for some oppositions and, through delicate handling of this case, we were able to reach a mutually agreeable solution where our client’s commercial interests were no longer affected, but the patentee retained protection for their research output.

• One of our client’s competitors obtained a European Patent relating to consumer electronics. In order to maintain our client’s anonymity we filed a “straw man” opposition in the name of a third party. As part of this work we carried out extensive searching to identify non-patent prior art that could be used to invalidate the granted patent. We were able to target the search based on our long-standing involvement in this technical field, and succeeded in having the patent revoked in its entirety.

• One of our client’s patents in the biotech area was opposed by a straw man. The patent was particularly important to the client, the technology was complex and a large number of prior art documents were cited during the course of the opposition. Using our technical expertise and analytical skills, we were rapidly able to identify the key documents and issues, and develop an effective strategy for defending the patent.

To learn more

Talk to us about defending your patents against attacks, as well as eliminating competitors’ ‘problem patents’. We can also help if you’re currently engaged in a patent opposition, offering fresh ideas to bring you success.

"With our in depth knowledge of the technical area and our close collaboration with the company's scientists and in-house patent counsel, we succeeded in having the opposition rejected and the patent maintained essentially unamended"