Opposition Matters 2020 Online conference

21-22 October 2020 Opposition: how the Register can help you

Yolanda Sánchez García, Francis Leyder Presenter

Francis Leyder BE, Belgian and European Attorney Studied analytical and obtained a PhD before joining Labofina, Research Centre of the Petrofina Group, in a position combining documentation and patent work. Qualified as a European patent attorney in 1988 and has since represented his employer or an affiliate in well over hundred opposition cases. After a merger with the Total Group, served as head of the Department at Total Research & Technology Feluy until the end of 2015. Chaired the European Patent Practice Committee of epi from 2008 to 2017. Currently President of epi and also one of the epi delegates on the SACEPO Subcommittee on Patent Documentation and Information (SACEPO/PDI). [email protected]

Source: epi 3 Presenter

Yolanda Sánchez García ES, European Patent Register Product Marketing Manager, Patent Knowledge, EPO Vienna PhD in organic chemistry, University of Barcelona (ES) and Molecular Research Institute (USA) Post-Doctorate, Max Plank Institute for Biochemistry (DE) Postgraduate degree in Economics and Marketing (DE) Joined the EPO in Vienna (AT) in 2002 as a Project Manager in the Co-operation department and moved to the Promotion department in 2006. Since then, responsible for promotion, training and market research in relation to the European Patent Register. She is also closely involved in the planning and development of new Register services and features, including the Register Alert service, the Federated Register and the register. [email protected]

Source: 4 Contents

▪ European Patent Register – Legal framework

▪ Search possibilities and search results

▪ Data views

▪ Alert services − Dossier Alert − Register Alert

▪ Example

Source: European Patent Office 5 Contents

▪ European Patent Register – Legal framework

▪ Search possibilities and search results

▪ Data views

▪ Alert services − Dossier Alert − Register Alert

▪ Example

Source: European Patent Office 6 European Patent Register – Legal obligation

Article 127 of the European Patent Convention:

The European Patent Office shall keep a European Patent Register, in which the particulars specified in the Implementing Regulations shall be recorded. No entry shall be made in the European Patent Register before the publication of the European . The European Patent Register shall be open to public inspection.

Legal obligation for the European Patent Office Information after the publication of the patent application Public information

Source: European Patent Office 7 European Patent Register – What is it?

Free online access to legal status and procedural status information ▪ Patent applications at the EPO: EP and Euro-PCT during the European phase ▪ PCT applications after WO publication ▪ ISA information if the EPO is International Searching Authority

https://www.epo.org/register

Source: European Patent Office 8 European Patent Register – What is it?

▪ Data from 1978 onwards * Regular maintenance outages: between 05.00 and 05.15 hrs CET (Monday to Sunday) ▪ Available 24/7*

▪ Secure access (https)

▪ Free of charge

Source: European Patent Office 9 Entries in the European Patent Register Rule 143 of the European Patent Convention

Source: European Patent Office 10 Entries in the European Patent Register Rule 143 of the European Patent Convention

OJ EPO 2014, A86

Source: European Patent Office 11 Inspection of files

Article 128(4) of the European Patent Convention * See the decision of the President of the EPO dated 20.02.2019 on the inspection of files (OJ EPO 2019, A16) and the After the publication of the European patent application, decision of the President of the of the EPO dated 20.02.2019 concerning online the files relating to the application and the resulting European file inspection of documents contained in the file held by the EPO as receiving patent may be inspected on request, subject to the Office, International Searching Authority restrictions laid down in the Implementing Regulations.* or Authority specified for supplementary search (OJ EPO 2019, A17).

Source: European Patent Office 12 Contents

▪ European Patent Register – Legal framework

▪ Search possibilities and search results

▪ Data views

▪ Alert services − Dossier Alert − Register Alert

▪ Example

Source: European Patent Office 13 Access via https://register.epo.org

Source: European Patent Office 14 Search possibilities

Source: European Patent Office 15 Field identifiers

1. Smart search

Source: European Patent Office 16 Field identifiers

Source: Pocket guide

Source: European Patent Office 17 Search possibilities

2. Advanced search

Source: European Patent Office 18 Contents

▪ European Patent Register – Legal framework

▪ Search possibilities and search results

▪ Data views

▪ Alert services − Dossier Alert − Register Alert

▪ Example

Source: European Patent Office 19 About this file (I)

Direct link to the

Direct links to the Publication Server

Source: European Patent Office 20 About this file (II)

The whole "Opponent(s)" field is searchable

Source: European Patent Office 21 File inspection – All documents

Correspondence between the EPO and the applicant/attorney

Source: European Patent Office 22 File inspection – All documents – Download

Download documents

Source: European Patent Office 23 Contents

▪ European Patent Register – Legal framework

▪ Search possibilities and search results

▪ Data views

▪ Alert services − Dossier Alert − Register Alert

▪ Example

Source: European Patent Office 24 Dossier Alert – Monitoring dossiers

Follow changes in the dossier

Source: European Patent Office 25 Register Alert

▪ Monitors changes to selected applications – up to 5 000 files/account, NEW ▪ When an event change occurs in a file an e-mail notification is sent to up to five e-mail addresses ▪ The user can select which changes trigger a notification ▪ Access via username and password

Source: European Patent Office 26 Register Alert – Monitored applications

Source: European Patent Office 27 Register Alert – Preferences – Monitoring Profiles

Source: European Patent Office 28 Register Alert service – E-mail notification

Account name and title displayed

Monitor changes to patent applications and granted patents until the end of opposition proceedings and during limitation/revocation proceedings

Source: European Patent Office 29 Contents

▪ European Patent Register – Legal framework

▪ Search possibilities and search results

▪ Data views

▪ Alert services − Dossier Alert − Register Alert

▪ Example

Source: European Patent Office 30 Preparing for an opposition

▪ Example: European patent 3033388. ▪ Let us consider that we have been instructed to file an opposition. ▪ The first step would be to consult the Register. ▪ Smart/advanced search ▪ Enter EP3033388

Source: epi 31 Incidentally, what does Smart search do?

▪ Truncation: * stands for a string of characters of any length Source: ? for zero or one character, # for exactly one character https://register.epo.org/help?topic= ▪ Searching without field identifiers: 'smart search' will "guess" the truncation&lng=en https://register.epo.org/help?lng= field identifier en&topic=searchquery

Source: epi 32 European Patent Register: About this file

Source: epi 33 Downloading the publications

Direct link to publications in the Publications Server

Source: epi 34 Why follow the links to the Publication Server

▪ Direct link to B1 Patent specification − In computer-readable pdf format − Tip: useful for searching in the B1 (also with Acrobat Reader) ▪ Direct link to the A1 (or A2) if (but only if) published by EPO − In computer-readable pdf format ▪ If A1 or A2 published by WIPO in one of the EPO official languages → Publication Server → click "PCT" to Patentscope → Documents − .pdf (non searchable) or .zip (xml + tiff's) − Alternatively: download pdf (non searchable) from "All documents" − "International publication of the A1 Pamphlet" (without !)

Source: epi 35 Why prefer EP publications as

Many commercial providers tend to cite the US equivalent ▪ EP publications when available can be downloaded in computer-readable pdf format − Some national offices e.g. BE publish computer- readable pdfs ▪ EP publications can be prior art under Art 54(3) EPC − WO also prior art under Art 54(3) EPC once EP phase entered (but always prior art under Art 54(2) EPC as from their int'l publication date)

Source: epi 36 Downloading the file

▪ When instructed to file an opposition against a granted European patent (or to intervene as an assumed infringer), it is normal to download the complete file. ▪ Follow "All documents"

Source: epi 37 Two different file downloads

 Selected documents ▪ Downloads one pdf file − Use OCR to create ±searchable file ▪ Bookmarks similar to online file

Zip Archive ▪ All documents ▪ Downloads one zip file ▪ Unzip → folder → 1 pdf/document ▪ Form number

Source: epi 38 Download limitations

▪ The EPO Fair use charter allows 10 search-related actions per minute per IP address (multiple users behind a firewall are seen as a single user) − Human users encountering problems due to the robot- detection feature should contact the EPO for "white listing" their IP address

▪ New: the EPO has set a limit of 2 000 pages per download. − epi has asked for this to be removed.

Source: epi 39 When preparing for an opposition, try your luck

From the European Patent Register, link to Espacenet → Espacenet → "Patent family" → "INPADOC family" ▪ EP, WO, US, CN, KR, JP: access to Global Dossier ▪ EP = "All documents" ▪ WO, US = documents in "All documents" format ▪ CN, KR, JP (not WO!): extemporaneous OCR + translation ▪ Dossiers from other States possibly accessible on local websites

Source: epi 40 Do not forget to set up alerts

▪ Register Alert − requires setting up an account − reports amendments to data included in the Register

▪ Dossier alert: RSS or Email − no account required; unsubscribing link in every alert − reports dossier changes (in practice, new documents)

▪ Why set up alerts − Of course, before grant − Oppositions are occasionally filed earlier − Advance notice of communications v. postal mail

Source: epi 41 Questions?

European Patent Office 42