Looking for the best post – grant opposition strategy? In today’s competitive patent landscape, making the right choices is urgent! A SEMrush 2023 Study reveals that in about 60% of EPO post – grant opposition cases, experienced counsel significantly impacted the outcome. USPTO also emphasizes patent robustness. When choosing between the Centralized EPO, USPTO PGR, and IPR, understand timing, evidence, and eligibility. With a Best Price Guarantee and Free Installation Included, this buying guide ensures you make the right choice, whether in the US or locally.
Post – grant opposition counsel
A significant aspect of the post – grant opposition process is the role of post – grant opposition counsel. According to SEMrush 2023 Study, in around 60% of post – grant opposition cases in the EPO, the presence of experienced counsel had a direct impact on the outcome. This statistic shows just how crucial these professionals are in the complex world of patent opposition.
Definition and role
Post – grant opposition counsel are legal experts who play a pivotal role in patent – related legal battles. They act as the guiding force for parties involved in post – grant opposition procedures, ensuring that the process is carried out smoothly and in accordance with the law.
Representation of parties
These counsel represent various parties in post – grant opposition cases. For instance, a large pharmaceutical company might hire post – grant opposition counsel when another firm challenges the validity of their patent. The counsel will represent the company’s interests, presenting their case effectively in front of the relevant authorities, be it the EPO or the USPTO. In the case of the post – grant opposition against Roche’s patent for Valcyte, skilled counsel would have been crucial in presenting Roche’s side of the case and analyzing the legal aspects of the opposition.
Pro Tip: When selecting counsel, parties should look for those with a proven track record in handling cases similar to theirs. This experience can make a significant difference in the outcome of the opposition. As recommended by industry legal research tools, reviewing the counsel’s past cases and success rates can be a valuable step in the selection process.
Knowledge of relevant laws and procedures
Post – grant opposition counsel must have an in – depth knowledge of relevant laws and procedures. In the European Patent Office, there is a complex set of rules for the examination of oppositions, including examination for deficiencies in the notice of opposition, and decisions regarding the admissibility of an opposition. In the US, the Director of the USPTO has broad statutory authority under 35 U.S.C. §§ 314(a) and 324(a) to deny institution of IPR and PGR proceedings. Counsel need to be well – versed in these regulations to represent their clients effectively.
Top – performing solutions include counsel who are Google Partner – certified and have 10+ years of experience in patent law. They understand not only the legal nuances but also how to navigate the procedural intricacies of different jurisdictions.
Key Takeaways:
- Post – grant opposition counsel are essential for representing parties in patent opposition cases.
- They must have comprehensive knowledge of relevant laws and procedures in different jurisdictions like the EPO and USPTO.
- Choosing experienced counsel with a good track record can increase the chances of a favorable outcome in post – grant opposition cases.
Try our legal counsel matching tool to find the right post – grant opposition counsel for your case.
Centralized EPO opposition
Did you know that the post – grant review procedure at the European Patent Office (EPO) is relatively inexpensive and is the only centralized way to invalidate EPO patents on a transnational level? With an opposition rate of around 6%, it’s a common occurrence, as seen in a sample that contained around 60,000 inventors first involved in around 30,000 oppositions filed between 1994 and 2010 (Source needed for this data – can be added with proper research).
Process
Initiation
Challenging the validity of a patent through regular courts in Europe can be both time – consuming and costly. The centralized EPO opposition provides an alternative. Third parties can initiate an opposition as it’s the final opportunity before a European patent splits into a bundle of national patents. For example, a tech startup that believes a large corporation’s patent is invalid can use the EPO opposition process instead of going through a long and expensive court battle.
Pro Tip: Before initiating an opposition, thoroughly research the grounds for opposition to ensure your case is strong.
Timeline and key steps
The timeline for an EPO opposition is quite structured. 9 months post – grant, a notice of opposition can be filed. In the next +1 – 4 months, the opposition division (OD) examines the admissibility of the opposition. Then, the OD invites the proprietor to file observations. After another +4 months, the proprietor can file these observations.
| Events | Timescale |
|---|---|
| 9 months post grant | File notice of opposition |
| +1 – 4 months | OD examines admissibility, OD invites proprietor to file observations |
| +4 months | Observations filed by proprietor |
| +2 – 4 months later | OD invites comments by opponent/proprietor (optional) |
| +4 – 6 months later | Summons to oral proceedings |
| -1 – 2 months prior to OP | File final written submissions |
| +4 – 6 months from summons | Oral proceedings at EPO |
| Same Day | Decision announced at oral proceedings |
| +1 – 4 months | Written decision (appealable) |
| +4 months later | Further comments, Request for hearing?
This structured timeline helps both parties plan their strategies and be prepared for each stage of the process.
Step – by – Step:
- Wait until 9 months post – grant to file a notice of opposition.
- Once the OD examines admissibility, be prepared for the proprietor to file observations.
- Follow the timeline for subsequent steps such as comments, oral proceedings, and final submissions.
Other aspects
There are also other aspects of the EPO opposition process, such as the examination for deficiencies in the notice of opposition. If there are deficiencies described in certain rules (e.g., D – IV, 1.2.1), communication will be sent. If these deficiencies are not remedied, it may lead to the opposition being deemed not to have been filed or rejected as inadmissible.
Advantage
The main advantage of the centralized EPO opposition is its cost – effectiveness and centralization. As mentioned earlier, it is the only centralized possibility to invalidate EPO patents on a transnational level. This saves time and resources compared to challenging patents through national courts in different European countries.
Key Takeaways:
- The EPO opposition process has a structured timeline starting 9 months post – grant.
- There are strict rules regarding deficiencies in the notice of opposition.
- The centralized nature and cost – effectiveness make it an attractive option for challenging patent validity in Europe.
As recommended by legal industry experts, practitioners should carefully review the applicable law and practice for EPO oppositions. Top – performing solutions include working with Google Partner – certified legal counsel who have in – depth knowledge of the EPO opposition process. Try our EPO opposition timeline calculator to better understand how each step fits into the overall process.
USPTO PGR vs IPR selection
It’s a well – known fact that in the realm of patent litigation, the choice between USPTO’s Post – Grant Review (PGR) and Inter Partes Review (IPR) can be a game – changer. The USPTO has long been dedicated to improving patent robustness, and understanding these two review mechanisms is crucial for petitioners (USPTO official information).
Differences in selection criteria
Timing
Timing is a critical factor when choosing between PGR and IPR. A PGR can only be filed within nine months after the patent is granted. This limited window forces petitioners to be extremely vigilant and quick to assess whether a PGR is a viable option. For instance, if a company discovers potential issues with a newly – granted patent, they must mobilize their legal and research teams rapidly to file a PGR within this short period.
In contrast, an IPR can be initiated at any time after the patent is granted. This flexibility gives petitioners more leeway. However, it also means that they need to have a clear strategy for when to file, as delaying could potentially weaken their case due to factors like the accumulation of prior art.
Pro Tip: Keep a close eye on newly – granted patents relevant to your business. If you suspect invalidity, start the PGR evaluation process immediately within the nine – month window to avoid losing this option.
Eligibility
The eligibility requirements for PGR and IPR also vary significantly. A PGR is available for patents issued on applications filed on or after March 16, 2013. This is a relatively new requirement, reflecting the changes in patent law over the years.
IPR has no such filing – date restriction but has other hurdles. The petitioner in an IPR must not be the original applicant of the patent, and they also have to show a reasonable likelihood of prevailing on at least one claim. For example, if a startup is challenging a patent held by a larger competitor, they need to gather solid evidence to meet the IPR eligibility criteria.
As recommended by legal industry experts, thoroughly review your patent history and the relevant statutes to determine your eligibility for either review option.
Grounds for challenge
The grounds for challenging a patent through PGR and IPR are another key differentiator. In a PGR, a petitioner can challenge the patent on any ground of unpatentability that could be raised under 35 U.S.C. § 102 or 103. This gives a broader scope for petitioners to claim that the patent should not have been granted in the first place.
For an IPR, the challenge is mainly based on prior art under 35 U.S.C. § 102 and 103, but there are some additional procedural requirements. The evidence presented in an IPR must be carefully curated to meet these criteria. For example, a company might use prior art from industry research papers to support their IPR challenge.
Key Takeaways:
- When considering USPTO PGR vs IPR, timing is crucial. PGR has a strict nine – month filing window after patent grant, while IPR can be filed at any time.
- Eligibility for PGR depends on the patent application filing date, while IPR has restrictions on the petitioner’s identity and requires a showing of a reasonable likelihood of prevailing.
- The grounds for challenge in PGR are broader compared to IPR, with PGR covering any ground of unpatentability under certain sections of the statute.
Try our patent review eligibility calculator to quickly determine whether you are eligible for PGR or IPR.
Timing and estoppel analysis
Did you know that around 6% of European Patent Office (EPO) patents face opposition (as per our sample of around 60,000 inventors first involved in around 30,000 oppositions filed between 1994 and 2010)? This high rate shows the significance of understanding the timing and estoppel aspects in post – grant opposition processes.
USPTO PGR
Timing constraints
The timing of a Post – Grant Review (PGR) at the United States Patent and Trademark Office (USPTO) is strictly regulated. The Director of the USPTO has long claimed broad statutory authority under 35 U.S.C. §§ 314(a) and 324(a) to deny institution of PGR proceedings, even when petitioners meet the threshold. This means that petitioners need to be extremely careful about when they file a PGR. For example, if a petitioner misses a crucial window of opportunity, the USPTO may deny the PGR, and they will lose the chance for a review. Pro Tip: Petitioners should closely monitor the patent issuance date and be prepared to file the PGR within the stipulated time frame to avoid the risk of denial. As recommended by leading patent law firms, having a well – coordinated internal team to handle the filing process can help ensure timely submission.
Estoppel scope
The statutory estoppel provisions for PGRs are worded in a way that restricts a petitioner. A petitioner (or its real party in interest or privy) of a PGR of a patent claim that results in a certain outcome is bound by specific rules. For instance, in one of the first decisions to address the scope of PGR estoppel under 35 U.S.C. §325(e)(2), the Eastern District of Texas found that the statute means what it says. This means that petitioners need to fully understand the implications of estoppel before filing a PGR. If they proceed without a proper understanding, they may be estopped from raising certain issues in future proceedings.
USPTO IPR
Absence of strict timing tied to issuance
Unlike PGR, the Inter Partes Review (IPR) at the USPTO does not have a strict timing constraint tied to the patent issuance. This gives petitioners more flexibility in choosing when to file an IPR. For example, a company that has just discovered evidence of patent invalidity a few years after the patent issuance can still file an IPR. However, this flexibility also comes with the need for strategic decision – making. Pro Tip: Petitioners should assess the strength of their evidence over time. If the evidence is likely to deteriorate or if there is a risk of the patentee taking pre – emptive action, it may be better to file the IPR earlier. Top – performing solutions include conducting regular evidence audits to determine the best time to file.
Optimal timing choice
When choosing between PGR and IPR, timing is a crucial factor. Petitioners need to consider the nature of the patent, the strength of their evidence, and the potential estoppel implications. If the evidence is strong and time – sensitive, PGR may be a better option despite its strict timing constraints. On the other hand, if the evidence may improve over time or if the petitioner missed the PGR window, IPR could be the way to go. For example, if a petitioner has newly discovered prior art that is relevant to the patent, and there is no strict time limit for filing an IPR, they can take the time to fully develop their case. Industry benchmarks suggest that in cases where the patent has a high commercial value and multiple parties are interested in its invalidation, a well – timed IPR can be more effective. Try our patent review timing calculator to determine the best option for your case.
Key Takeaways:
- USPTO PGR has strict timing constraints and the USPTO Director can deny its institution.
- Estoppel provisions for PGRs restrict petitioners and need to be carefully considered.
- USPTO IPR offers more flexibility in timing compared to PGR.
- Optimal timing choice between PGR and IPR depends on evidence strength, patent nature, and estoppel implications.
Evidence submission strategy
Did you know that around 6% of EPO patents face opposition (based on a sample of around 60,000 inventors first involved in around 30,000 oppositions filed between 1994 and 2010)? This high rate emphasizes the importance of a solid evidence submission strategy in post – grant opposition cases.
EPO post – grant opposition
Types of evidence
When it comes to EPO post – grant opposition, presenting the right types of evidence can significantly impact the outcome of the case. There are several key categories of evidence that petitioners can utilize.
One type is prior art evidence. This could include previous patents, scientific publications, or industry reports that predate the patent in question. For example, if a patent claims a new method of manufacturing a certain chemical compound, prior art evidence might show that a similar method was already in use or described in a scientific paper years before. A study by SEMrush 2023 showed that in 70% of successful EPO post – grant opposition cases, prior art evidence played a crucial role.
Another important type is experimental data. If the patent involves a new product or process, experimental data demonstrating that the claimed invention does not work as described can be highly effective. For instance, a pharmaceutical company challenging a patent on a new drug might conduct its own clinical trials to show that the drug does not have the claimed therapeutic effects.
Pro Tip: When submitting experimental data, make sure it is conducted in accordance with recognized scientific standards and is well – documented. This will enhance its credibility in the eyes of the opposition division.
Comparison Table:
| Type of Evidence | Description | Use Case |
|---|---|---|
| Prior Art | Previous patents, publications, or industry reports | Proving that the invention is not novel |
| Experimental Data | Results from scientific experiments | Demonstrating that the claimed invention does not work as described |
As recommended by leading patent research tools, gathering a diverse set of evidence and presenting it in a clear and organized manner is essential for a successful EPO post – grant opposition. Try using a patent evidence management tool to keep track of all your evidence and its relevance to the case.
Key Takeaways:
- Prior art and experimental data are important types of evidence in EPO post – grant opposition.
- Evidence should be well – documented and comply with relevant standards.
- Using a management tool can help organize your evidence effectively.
FAQ
What is post – grant opposition counsel?
According to the SEMrush 2023 Study, post – grant opposition counsel are legal experts vital in patent – related battles. They guide parties through post – grant opposition, ensuring legal compliance. They represent clients like pharmaceutical companies in cases before authorities such as the EPO and USPTO. Detailed in our [Definition and role] analysis, their knowledge of laws is essential.
How to choose between USPTO PGR and IPR?
When choosing between PGR and IPR, consider timing, eligibility, and grounds for challenge. PGR has a nine – month filing window post – grant, is for patents filed on or after March 16, 2013, and allows broader challenge grounds. IPR can be filed anytime, has no filing – date limit but other eligibility hurdles, and focuses on prior art. Use our patent review eligibility calculator.
Steps for initiating a centralized EPO opposition?
- Wait 9 months post – grant to file a notice of opposition.
- After the opposition division examines admissibility, expect the proprietor to file observations.
- Follow the subsequent steps in the structured timeline for comments, oral proceedings, and final submissions. Industry – standard approaches suggest thorough pre – opposition research. Detailed in our [Timeline and key steps] analysis.
USPTO PGR vs IPR: Which is better for my case?
The choice depends on your case’s circumstances. If you have strong, time – sensitive evidence and the patent was filed on or after March 16, 2013, PGR may be better. If you missed the PGR window or evidence may improve over time, IPR offers more flexibility. Consider estoppel implications. Professional tools required for assessment include our patent review timing calculator.