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Experiences on oral proceedings at the EPO: How to deal with a conflict?

14.05.2018
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15.5.2018

Oral opposition and appeal proceedings to revoke a competitor’s patent or to reduce the protective scope of the patent at the European Patent Office (EPO) are the most demanding areas in a patent attorney’s profession.  Preparing may be compared to a demanding exam: you do not know exactly what the exam will be about, so you need to be prepared for everything.

Kolster’s patent attorneys have an experience of more than a hundred oral proceedings at the EPO, so there is quite a bit of insight as to how to best manoeuvre in various situations. In addition to opposition and appeal proceedings after a patent has been granted, oral proceedings with the Office are also possible at the examination stage of a patent application, if no common way of thinking can be reached through official actions and responses in writing. 

How do you emerge as the winner of conflicts in opposition and appeal proceedings, or how do oral proceedings boost your patent application to become a granted patent?

Our patent attorneys and clients share their experiences and give some tips.

European Patent Attorney Marjut Honkasalo:
“The model of early intervention works in patenting”

If a common view with a Patent Office examiner is not found for granting a patent, it is definitely worthwhile to request oral proceedings and take part in them, if you wish the patent to be granted. Early intervention works. It is not a good idea to only react at the appeal stage. The Board of Appeal does not necessarily accept for hearing a matter which could have been brought up at application or opposition proceedings. With certainty, it only examines whether the process was appropriately concluded.

Oral proceedings at the application stage will in all likelihood become more common. The EPO aims to act fast, which in practice limits the number of official actions. Its goal is the average examination stage of 12 months, instead of the current more than 20 months. The model of one official action in writing, directly followed by oral proceedings, is becoming more and more common.

At opposition proceeding, it is the EPO’s goal to resolve the opposition within 15 months. One of the options is to reduce the written dialogue, and an automatic invitation to oral proceedings. As from the beginning of 2018, the EPO’s opposition divisions consist of individually appointed, experienced examiners. The actual examiner no longer automatically takes part in the proceedings, which guarantees as impartial proceedings as possible, professionally and without bias.

It is worthwhile to actively fight competitors’ harmful patents, in particular if the reasons for its revocation are in order. With fewer written stages, you can find out faster whether the patent remains in force and in what form the patent remains in force at the end of the day, if it remains in force. When taking into consideration the recently published goal of resolving an appeal within 30 months, an opposition and an appeal help obtain a European-wide solution to the final scope of protection of a patent faster than before.

 

European Patent Attorney Ossi Huhtanen:
“Germans or Britons are not better than Finns ─ it is experience that counts

There is unjustified mystery related to oral proceedings at the European Patent Office. I have heard it said that it is worthwhile to employ a German or British patent attorney for oral proceedings at the EPO, because “they possess the special skills the process requires.” A skilled, experienced patent attorney who has made careful preparations will handle the proceedings excellently, regardless of the nationality. We have experience in this at Kolster.

At oral proceedings, a patent is very thoroughly examined. The material related to the matter must be fully mastered, and the attacks, arguments and motives of the opposing party must be anticipated. Preparation must be done with utmost care.

You need to know your own target: what your goal is, what scope of protection is sufficient for your patent, and what you are willing to give up, if the going gets tough. A light preparation results in that the opposing party will catch you off guard. You need to form an objective view on your own and the opposing party’s possibilities. If the facts don’t support you, you cannot claim that black is white. If opposition proceedings do not show any chances of success, it is worthwhile to take the conciliatory path as quickly as possible. At later stages, your bargaining position is weaker.

It is the EPO’s aim to reach a fair conclusion. This, however, requires that you are able to present the relevant arguments in an understandable, logical, and clear manner, and can quickly react to the Office’s and opposing party’s arguments with facts.

 

Product and quality manager Jari Hauta-aho, Serres Oy:
“If a competitor infringes an important patent of yours, you need to concentrate in earnest to deal with the issue.”

Infringement cases of a patent as well as the opposition and appeal proceedings are a struggle for small and medium-sized companies. They take up a lot of time and resources when the main focus should be in advancing business operations.  Expert help is needed, and the know-how and experience of the IPR partner in dealing with these situations is valuable indeed, so that there would be time left for other things than solving a dispute. If you are not familiar with opposition and appeal processes and practises, you are on thin ice.

I find preparation in advance very important in case of a dispute hearing, it is something you really want to use a lot of time for. You must know what the goal of the opposing party actually is so that you can prepare yourself.

Careful advance preparation for appeal proceedings in cooperation with Ossi Huhtanen played a key role in that we currently have a valid patent protection for an important invention and our business operations continue in the normal manner.

At a previous, and lost, opposition hearing with another player, we were left with the feeling that the starting position was poorly analysed and the preparation consequently insufficient, and the reaction to the competitor’s hammering and sudden situations on the spot was not active enough.  With help from Kolster, we were able to reinstate our patent at appeal proceedings.

 

European Patent Attorney Kirsi-Marja Pitkänen:
Prepare well your own angle of approach and consistently stick to it.”

Whether you are defending or attacking, it is important to stick to your own well-prepared presentation and arguments and not allow yourself to become a passenger in a train the opposing party is driving.

The most challenging situations are cases of defending an important patent, where there are multiple opponents. If very many different issues are dealt with at opposition proceedings and a patent is to be revoked on the basis of many grounds of opposition, strict concentration is required.  In such a case, is it justified to have two or even three patent attorneys involved. Opposition proceedings may last for as long as 10 hours, which is quite a marathon for one attorney to manage: you must not miss anything, and you must react to sudden situations from the opposing party on-the-spot. 

As a tip, I would say that it is worthwhile to consider submitting a reminder to the Office even before a competitor is granted a patent, if a good reason can be found for the revocation of the patent. By actively following competitors’ applications and studying the references, a novelty bar may be found for a competitor’s patent. These finds are worthwhile to utilise.

 

IP Manager Päivi Javanainen, Valio:
“When you can trust the skills of the patent attorney, you can concentrate on the business perspective.”

Defending a patent at oral proceedings, in particular, is a very intensive process. Even though the patent attorney is handling the process, it feels at times that you could use some breathing time yourself. Cooperation with the patent attorney works well at oral proceedings and the roles are clear.  Homework must be done well. The entire proceedings process and preparing for it is close cooperation. When you don’t have the “burden” of a patent attorney background, and when you can rely on the expertise of the patent attorney, you can concentrate on the business perspective.

Success in IPR activities is an extensive whole. You generally need to be familiar with your own line of business and the competitors, and not just through competitor monitoring. You must additionally have a clear vision: you must see into the future. You must know your goal and where the line of business is heading. You must have a sense of proportion concerning what you are demanding, what you will settle for, and what level is adequate for you. You must be able to put yourself in the opposing party’s shoes. You must be able to understand your own position in its entirety and to prioritise what your input is in each matter.

Conflict situations always greatly differ from each other. A good reaction ability is needed, and a changed situation must be analysed quickly. These skills are worth their weight in gold.  At opposition proceeding, one day is often a very short time period to reach a satisfactory end result. You must be able to manoeuvre. But with clear roles and good operation, a good end result is achieved.

 

European Patent Attorney Ari Parta:
“Also prepare yourself for the unlikely.”

You can never be sure in advance what the decisive issue at oral proceedings will be. Complete preparation is called for, and on top of it preparation for all possible surprises. What if the opposing party acts like this or that, or the Office decides this way of that way. You need to prepare yourself for issues that may be in view.

Even if the arguments were strong in the patent attorney’s and patent holder’s view, the opposition division may make another interpretation and take a surprising view. All the parties read the same patent documents but interpret them differently.

Issues relating to inventiveness are subjective, although subjectivity is something all the parties wish to do away with. The examiners, too, every now and then need to make a compromise among themselves. Sometimes, through closed doors, you can hear a so-called Central-European style discussion where examiners of the opposition division share thoughts of different viewpoints before a decision is reached.

One of the important lessons from the years gone by is that you must remember to request all the matters important to you to be entered in the minutes, because you may stumble on them again at appeal proceedings.

Senior Specialist, IP, R&D Senior Engineer Juha Lempinen, ABB:
”We could not handle opposition proceedings without a knowledgeable partner.”

 We defend our own patents when need be. For us, it is not a huge step to file an opposition against a competitor, if a patent in our view has been granted on the wrong grounds.  

Kolster is for us a partner we can work with in opposition issues. We only have small resources ourselves to file oppositions, and we could not be involved in these processes without a reliable IPR partner. Cooperation is smooth: we get service and a suggestion on what to do next. We go through the patent cases together and provide the additional material required.  

A case that I was last involved in had two opponents. Ari Parta from Kolster handled practically the entire process on our behalf and at our request took care of communication with the other opponent, too.  Both opponents provided material against the same patent from their own viewpoints. We wanted to correct a situation where a patent holder would benefit from their position on the market with a solution that, in our view, should not be granted a patent for.  

Ari had prepared himself well and it seemed he knew in advance what questions would be posed. We suggested amendments to the patent claims on the spot, and here the expertise was really seen. The patent holder had to amend the patent claims and its scope of protection became narrower.  

 

FACTS

Oral proceedings at the European Patent Office - Art. 116 EPC

  • An applicant, patent holder, or opponent may request during written proceedings

  • A video conference may take place during the application stage

  • EPO is obliged to arrange oral proceedings if without them the decision unfavourable to the requesting party

  • EPO must issue an invitation at least 2 months (application) or 6 months (opposition) before the date of the oral proceedings (OP) The invitation states
    • the time and place
    • topics to be discussed
    • when to file a written response, at the latest
  • The written response must disclose everything in practice 
    • EPO need not take into account new material submitted later