Opposition at the Epo / National Invalidation Proceedings

Murgitroyd and Sonoda & Kobayashi present

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Patents: opposition proceedings and nullity actions – a comparison between Europe and Japan

Luca Escoffier Diane Beylier Dr.sc. Robert Börner moderators Dr. Yoshitaka Sonoda

Webinar, April 27, 2018

www.EUbusinessinJapan.eu . Option 1 : OPPOSITION u Filed within 6 months Option 2 : NULLITY ACTION from publication of the u Filed any time after grant patent of the patent u Oppositions were u 161 Nullity Actions were revived in Japan in filed in Japan in 2017 2015. u 1250 oppositions were filed in 2017

q 318,028 patents were filed in 2017 in Japan q 199,577 patents were registered

1 OPPOSITION AT THE EPO / NATIONAL INVALIDATION PROCEEDINGS

Number of granted patents in 2017: 105,635

Number of oppositions filed in 2017: ≈ 3900

Source: EPO Status: 22.1.2018

Invalidation proceedings at the Federal German Patent Court (2016)

Filed: 284 Patent revoked: 43.62 % Pending: 403 Patent upheld in amended form: 35.46 % Closed: 206 Invalidation request rejected: 20.92 %

2 OPPOSITION AT THE EPO - ENTITLEMENT

• opposition open to „any person“ (Art. 99 (1) EPC) • no own legal interest required • one exception: patent owner not entitled to file an opposition (however, the inventor is) • opponent needs to be identifiable not possible to file an opposition anonymously • use of third party as „straw man“ allowable, unless the intent is to circumvent the law not possible to use straw man for patentee • status as opponent may be transferred/assigned only as part of the opponent's business assets

3 u Any third can file an Opposition, not only interested party u An Opposition can be filed anonymously, using a “straw man”

Advice to Opponent

Ø The strawman should not be a patent attorney so as to actually hide the true identity Ø Choosing an Opposition is recommended if you want to remain anonymous

4 Reasons for which an Opposition may be made are matters of public interest: ulack of novelty or lack of inventive step ulack of support, clarity or enablement uIntroduction of new matter by amendments § Double patenting § Non patentable subject matter

Advice to Opponent Ø An Opposition is not an inter-partes procedure, the opponent must convince the board of appeals, and the board may raise its own reasons for revocation

5 OPPOSITION AT THE EPO – GROUNDS (1)

Art 100 EPC (a) the subject-matter of the European patent is not patentable under Art. 52 to 57 EPC lack of novelty / inventiveness excluded subject matter no industrial application (b) the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (“lack of sufficiency”) (c) the subject-matter of the European patent extends beyond the content of the application as filed (Art 123 (2) EPC)

No grounds: lack of unity / lack of clarity / lack of support / formal matters / inventor designation wrong / patentee not entitled to patent / … 6 OPPOSITION AT THE EPO – GROUNDS (2)

• all raised grounds need to be substantiated in the notice of opposition

• “new” grounds for opposition, i.e. grounds raised after the expiry of the opposition period

only allowable, if “prima facie” relevant may also be raised by the opposition division „grounds“ covered by Art 100(a) are separate grounds

• Amended claims need to comply with all requirements of the EPC if amendments are based on description only “new” grounds may be raised further objections possible (e.g. clarity, unity, …)

ADVICE: Raise and substantiate all grounds for opposition in the notice of opposition ! 7 OPPOSITION AT THE EPO - TIMEFRAME

• deadline for filing opposition is 9 months from the publication of the mention of the grant of the European patent

• EPO initiative „early certainty for opposition“ lower average time to 15 months (currently > 25 months) Strict deadline regime (EoT only in exceptional cases)

• „officially“ one round of submissions before summons to oral proceedings, i.e. opposition note and reply of patentee

OPPOSITION AT THE EPO - HEARING

• summons at least 6 months before hearing • summons includes preliminary opinion • last statements to be filed 2 month before hearing • new requests / evidence only admitted if prima facie relevant • possible outcome (decision at end of hearing) – maintain patent as granted – maintain patent in amended form – revoke patent • minutes and written decision will follow within some weeks after the hearing

9 Ø The 6-month time period is short for non- Japanese opponents and filing a Nullity Action would be more suitable in cases in which counter-experiments must be performed, in particular Ø There is no oral hearing, therefore test data and affidavits must be detailed and self-explanatory Ø A decision can be expected within 6 months

10 JPO

Publication of Patentee Opponent patent

Filing of Forwarding of Opposition copy May request acceleration Start Examination

No Are there reasons for revocation?

Filing of Remarks Yes (when Notify of reasons for amendments are revocation requested) Request comments Filing of Remarks (if amending) and/or Amendments

Continued Examination

Decision by board 11 u A decision to maintain the patent cannot be appealed. In contrast, the patentee can file an appeal against a decision of revocation with the IP high court. u Filing a Nullity Action would be the next step Ø However, overturning a decision by a Nullity Action requires a higher burden of proof Ø We recommend waiting at least 6 months to allow for potential changes in board membership

12 OPPOSITION AT THE EPO – APPEAL (1)

• appeal to be filed within two months of notification of the contested decision • appeal fee to be paid • grounds to be filed within four months of notification of the contested decision

• appeal only possible if adversely affected by decision • no „reformatio in peius“

• grounds of appeal and reply should contain a party‘s complete case, i.e. all facts, arguments, requests and evidence • later filed evidence / requests may be rejected

13 OPPOSITION AT THE EPO – APPEAL (2)

• some boards will only review legal aspects of the first instance decision (maybe in future all boards) only requests filed in first instance will be accepted no further technical discussion possible

• usually one round of submissions before summons to oral proceedings (with preliminary opinion) • deadline for final submissions 1 month before hearing

• it is possible for the board to remit case to first instance

• current time frame 3 – 4 years, to be decreased by „increase of productivity“ 14 NATIONAL INVALIDATION PROCEEDINGS (FOCUS DE)

• EP patent divided into plurality of national patents • no centralized invalidation possible

Germany • court action at Federal German Patent Court • formalistic proceedings • open to general public (no legal interest needed) • no deadline but not possible, if opposition pending • language of proceedings is German but language of EP patent relevant

15 GERMAN INVALIDATION PROCEEDINGS (1)

• one round of statements, i.e. grounds for invalidity and reply by patentee • preliminary opinion of court indication main issues and setting date for oral proceedings • one more round of statements possible in preparation of oral proceedings

• decision on costs (losing party bears costs) • high cost risk (depending on value of case)

16 GERMAN INVALIDATION PROCEEDINGS (2)

• possible grounds for invalidation are the same as in EP opposition, however, additional ground of fraudulent abstraction

• patent court not bound to earlier decision of EPO • additional prior art in form of national „earlier rights“ • possible to raise same ground for invalidation as in earlier opposition • advisable to rely on additional documents if possible

• average time frame until decision is 25 months 17

GERMAN INVALIDATION PROCEEDINGS APPEAL

• appeal to Federal German High Court to be filed within one month of notification of the contested decision • grounds to be filed within three months of notification of the contested decision

• appeal only possible if adversely affected by decision • no „reformatio in peius“

• High Court reviews appeal for admissibility and summons for oral proceedings • High Court may ask for further statements

18 GERMAN INVALIDATION PROCEEDINGS APPEAL

• new evidence, arguments and requests may be rejected as late filed • in principle only a legal review of first instance decision • court may call for technical expert • decision taken in oral proceedings

• timeframe: 2 to 4 years • decision on costs (losing party bears costs) • high cost risk (depending on value of case) • around 60 new cases per year

19 u An interested third party can file a Nullity Action any time after grant of a patent uNullity Actions therefore cannot be filed anonymously u The cost is 2-3 times as much as for an Opposition u For a 10-claim application, the official fees are about 300 euros for an opposition but 780 for a Nullity Action u Attorney hours usually double due to preparation for and attendance of oral hearings u A decision can be expected within a year

20 Reasons to invalidate a patent are similar to those for an Opposition: uLack of novelty or lack of inventive step uLack of support, clarity or enablement uIntroduction of new matter by amendments § Double patenting § Non-patentable subject matter u Additionally, the ownership of the patent may be raised u The board of appeals is bound by the reasons and arguments and cannot raise any additional reasons to invalidate the patent

21 u In contrast with oppositions, an opponent may appeal the decision to maintain the patent to the IP High court u The patentee can also appeal a decision of invalidation

Ø Nullity Actions had a 60% success rate in 2006, however, among the 345 decisions issued last year, only 30.9% were to invalidate

22 Opposition Nullity Action Comments

Only a Nullity Action is Term for 6 months from Any time after available after 6 months publication of patent grant filing have passed

Eligibility for A strawman may be used Any third party Interested parties filing for an Opposition

Possible Reasons for Only a Nullity Action is reasons for Reasons for rejection rejection + rights available for ownership filing ownership An Opposition is more Style of Initiative by the Inter-partes difficult to invalidate a board proceedings patent?

Presentation No disadvantage for Documentary + of Documentary foreign party in an oral examination arguments Opposition

23 Opposition Nullity Action Comments

Not possible after a Anytime before Withdrawal Notice of Reasons for finalization of the Revocation is issued decision

JPY 16,500 (124 JPY 49,500 (373 The total cost tends to be euros) + JPY 2,400 euros) + JPY 5,500 Official fees higher for Nullity Actions (18 euros) x Nc (41 euros) x Nc

5.8 months on Difference insubstantial if One year Speed average appealed

Once an Opposition is • Revocation may All decisions may rejected, new evidence be appealed by be appealed to the will likely be needed to Appeals patentee at the IP IP High Court invalidate the same patent High Court with a Nullity Action

24 EPO OPPOSITION VS. INVALIDATION

EPO opposition Invalidation Centralized proceedings Plurality of national proceedings Each party bears own costs Losing party bears costs „cheap“ High cost risk Only EP „earlier rights“ Additional national „earlier rights“ Only possible within 9 month No deadline for filing court after grant action Possible in addition to EP opposition EPO may continue Ends if action withdrawn opposition after withdrawal

EPO opposition seems advisable 25 Total Maintained Maintained (No Withdrawn or Year Revoked Pending* Decisions (Amendments) Amendments) Dismissed

2015 362 46 (12.7%) 167 (46.1%) 145 (40.1%) 4 (1.1%) 1

} Low success rate for opponents who seek the revocation of a patent } Recent pro-patent trend at the JPO } The success rate for Oppositions is low (12.7%) compared to that for Nullity Actions (30%)

26 In decisions to maintain a patent, the claims were amended in 51.3% of the cases, however u Amendments are made by the patentee and the resulting patentability is examined by the board of appeals; u The opponent cannot directly influence the amendments and the claims.

27 Choose Nullity Action if: Choose Opposition ² for: Invalidation is of the utmost importance v Lower costs ² 6 months is too short to v Speed prepare evidence v Anonymity ² Ownership of the Ø An Opposition can be invention is to be raised seen as a continuation ² To be used as a tool for of Observations negotiation (license against withdrawal)

28 INVALIDATION PROCEEDINGS FOR UNITARY PATENTS

• invalidation action for unitary patent to be filed at Central Division of Unified Patent Court • centralized proceedings with one decision for full territorial scope of unitary patent • language of proceedings is language of patent • very strict time frame (12–15 months) • high court fees and cost risk (based on value of case) • appeal possible • no case law „unknown territory“

29 UPC AND UNITARY PATENT - STATUS

• court action pending against UPC scheme at German Constitutional Court • decision expected during this year (?) • if positive decision, a fast ratification by DE and UK is possible

UPC system may enter into force within months effect of BREXIT ???

30 Topic 1 Topic 2 Topic 3 Topic 4 Contact

Thanks to the audience!

Dr. Yoshitaka Sonoda Dr.sc. Robert Börner Sonoda & Kobayashi Murgitroyd, Munich Office