Opposition and opinions

For an entrepreneur it is important not only to seek protection for own new developments, but also to object to the wrongful grant of patent rights to competitors by filing an opposition or a request for advice. The patent attorneys at De Vries & Metman can advice you on third party patent rights and assist you in opposition cases and advices.

 

When to file an opposition?

Those Offices responsible for the granting of patents that include a substantive examination in their procedure for grant try to carry out their prior art searches as completely as possible. Since it is practically impossible to carry out an all-embracing search, there is always a risk of information which is important for the assessment of the patent application being overlooked. That is why a possibility has been created in several countries for third parties to bring this important information to the notice of the Patent Office in question. In some countries it is possible from the date of the publication of a patent already to submit to the Patent Office in question evidence which shows that the subject matter of the patent application was already comprised in the state of the art on the filing date or priority date, and that no patent, or a more limited one, should be granted. The drawback of such an early opposition, however, is that it is not possible to influence the further proceedings in respect of this opposition, so that there is a risk of the opposition being wrongfully rejected. Only in those cases where the evidence is quite conclusive does this possibility offer a fair chance of success.

This chance is considerably greater when an opposition is filed during the opposition period that has been specially created for this purpose. This period starts just before or just after the grant of a patent and its duration may vary between 3 months and 9 months, depending on the patent system in question. The patent attorney can draw up, file and defend a notice of opposition on behalf of the opponent. The notice of opposition must contain evidence and state grounds why the patent is not to be or should not have been granted. Subsequently, the opposition proceedings are started, which will eventually be concluded by a decision to maintain the patent as granted, to uphold the patent in amended (limited) form or to revoke the patent. Since there is a possibility of appeal in most cases, opposition proceedings may take up a few years.

 

European situation (oppositions)

In the case of a European patent application, third parties have a possibility of giving notice of opposition within nine months from the publication of the grant of the patent. Everything that happens with the patent in the course of the opposition proceedings, such as an amendment thereto or a revocation thereof, has effect in all the validated countries of the European patent. The opposition proceedings take place centrally at the European Patent Office, just like the procedure for grant. Although it is always possible to file an application for revocation of the patent via a court of law during the further term of the European patent, an amendment to or the revocation of the patent will only have effect in the country in question in that case. When there are serious grounds for opposition, it is important therefore, also from the viewpoint of cost, to file a notice of opposition in time. Thus it may be worthwhile to monitor the progress of the proceedings in respect of a patent application (see the information sheet Searches and monitoring).

 

Dutch situation (opinions)

Under the amended Netherlands Patents Act, which took effect as of 1 April 1995, it is no longer possible to file an opposition in respect of patent applications that were filed after that date. It is possible, however, to make a request for an official novelty search in respect of a 6 year patent. A Dutch patent granted after 1 April 1995 has not been examined (see information sheet Dutch patents). However, an opinion on the validity of the Dutch patent can be requested from the Netherlands Patent Office. For example, the Netherlands Patent Office may advise whether the patent fulfils the legal requirements of novelty and inventive step. The opinion is non-binding.