Category: Global Harmonization

IPR, EPO Opposition and UK Litigation

Author:  Leythem A. Wall
Editor:  Anthony C. Tridico, Ph.D.

We report here on what appears to be one of the first IPR cases to have corresponding validity challenges in other jurisdictions, namely Europe at the European Patent Office (EPO) and in the UK courts. The decisions, despite being the same patent family differ remarkably.

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Comparison of Timelines with Europe

Author:  Leythem A. Wall
Editor:  Anthony C. Tridico, Ph.D.

While we have previously compared and contrasted European Patent Office (EPO) oppositions with the new US post grant challenges (http://www.aiablog.com/global-harmonization/ipr-and-pgr-they-are-not-american-oppositions/), what has not been looked at as closely is the respective timings of different stages in the proceedings. The Post Grant Review (PGR) strikes the most similarities with the EPO opposition timeline as these have to be filed within 9 months of the patent granting. The Inter Party Review (IPR) and PGR take up to 18 months for the final written decision to be issued. While traditionally the EPO has 18 to 30 month turnaround time, more and more we are seeing cases resolved with the oral decision being issued within a 15 to 24 month timeline, hence not too dissimilar to the US procedures.

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Where Can We Expect Differences Between EPO Oppositions and PGRs?

Author: Leythem A. Wall
Editor: Anthony C. Tridico, Ph.D.

With over 1000 IPRs and CBMs already filed and PGR eligible patents beginning to issue, can we expect similar growth of PGR filings? The European Patent Office (EPO) Opposition may provide us a bit of a crystal ball regarding what we can expect from PGR. As previously reported in the AIA blog, there are a number of significant differences such as cost, effect on later litigation and anonymity. However, can these really be seen as substantive differences that would lead to different results and trends than we currently see at the EPO. Both procedures assess anticipation (novelty) and obviousness (inventive step). Both procedures take into account formal matters (written description in the United States, added matter in the EPO) and do not allow broadening of patents. Whilst clarity is not a ground of opposition at the EPO, when amended claims are filed during the opposition process they have to satisfy clarity requirements.

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