Opposition (patent law)
In German and European patent law, opposition is a procedure by means of which the review of the patentability of a patent previously granted to the patent owner can be initiated by another party, the opponent. The patent is either a German patent or a European patent.
Legal basis
In the German Patent Act , Section 21 provides the substantive and Sections 59 ff. The procedural legal basis for the opposition.
In European patent law ( European Patent Convention ), Art. 99 ff. And R. 75 ff. Form the basis of the opposition proceedings.
Regulation content and purpose
With the opposition, the opponent can initiate the re-examination of the patent's protectability within a time window after the patent has been granted. This rarely happens for reasons of principle. The opponent regularly fears that the patent will interfere with his commercial activities. The opponent must justify the content of his objection and can and should name material that in his opinion contradicts the patent and introduce it into the proceedings.
Market participants often follow the patenting activities of their competitors closely by means of patent research.
If it comes to the granting of disruptive and unjustified patents, you can file an opposition and thus initiate a renewed review of the patent. The result of the opposition can be the rejection of the opposition (i.e. the unchanged maintenance of the patent) or the partial or complete revocation of the patent in question.
Demarcation, differences
German patent law also knows the institute of nullity suits . In substance, the same questions are discussed in an action for annulment as in an opposition procedure. The action for annulment can, however, be brought at any time after the objection period has expired. The cost aspects of the opposition proceedings are regulated differently from those of the nullity action.
If an action for nullity is brought against the German part of a European patent, a (partial) declaration of nullity of the German part of the patent in the legal sense has no effect on the parts of the European patent in other European countries. If before the European Patent Office is charged to a European patent an objection, a (partial) withdrawal of the patent has effect against all national units of the European patent.
If an opposition is withdrawn by the opponent, the Patent Office can continue the opposition proceedings. If, on the other hand, an action for annulment is withdrawn, the action is ended.
The objection must not be confused with a complaint . In pending proceedings, the latter is the trigger for the second instance review of a previously issued first instance decision. The objection, on the other hand, is a new process in which another person becomes a party. It is also possible to appeal against the decision of the first instance in opposition proceedings for a second instance review.
Grounds for objection
The opponent must justify the objection in detail. Otherwise the objection will be rejected as inadmissible. The permissible arguments for the opposition are finally specified in § 21 PatG. The opponent must explain in detail the existence of at least one of these reasons and provide evidence in the initial notice of the opposition.
Lack of material patentability
The invention is compared to. Not worthy of patent in the state of the art, d. H. there is a lack of inventive step or a lack of novelty or another patenting exclusion of §§ 1 to 5 PatG.
The attack for lack of novelty or lack of inventive step is the most common reasoning for objections.
Lack of disclosure of the invention
The technical description of the invention is so inadequate that it cannot be carried out.
Unlawful removal
The registered owner is not the legitimate owner of the patent because he is not the inventor or his successor in title. In this case, only the person actually entitled is entitled to appeal.
Illegal extension
The subject matter of the patent goes beyond the content of the originally filed application.
Procedure
Objection period
The deadline for filing an opposition is today in German and European patent law in the same way at nine months after publication of the reference to the grant of a patent. By then, a reasoned notice of opposition must be filed and the appeal fee paid.
If the objection deadline has expired without an objection being lodged, the above still applies. Annulment action available to review a patent for protectability.
Jurisdiction, legal process
The German Patent and Trademark Office (DPMA) in Munich is solely responsible for opposing a German patent . Patent departments are set up in it, each staffed by three patent examiners, who decide on the opposition. You decide by resolution. The authority to appeal against decisions of the DPMA is the Federal Patent Court (BPatG) in Munich.
The European Patent Office (EPO) is solely responsible for opposing a European patent . Opposition departments are set up in it, each with three patent examiners. You decide by resolution. The boards of appeal of the EPO are the appeals authority against decisions of the opposition divisions of the EPO.
Procedure, duration
The notice of opposition is submitted in writing to the DPMA or the EPO. This and the payment of the objection fee must be made within the objection period. The opposition is then served on the patent proprietor. This is followed by a written procedure.
The opponent will argue against the patentability of the challenged patent and must justify this. He can do this on the basis of the material cited in the examination procedure before the patent was granted (state of the art) or he can provide new material. The patent proprietor can amend his patent if he deems this necessary, in particular by submitting amended patent claims that are to be used as the basis for the further process instead of the earlier ones.
Sooner or later there will be an oral hearing and finally a decision by the competent opposition division.
The duration of proceedings for an instance is around 12 to 24 months.
Amendments to the patent
In response to the opposition, the patent proprietor can change his patent if he so wishes. In order to be admitted to the factual examination, these changes must meet the following two conditions, among others:
- As in the examination procedure, the changes must meet the disclosure requirement of Section 38 PatG. This means that changes may not go beyond the content of the application once filed.
- The scope of protection of the patent must not be extended. No restrictions on the scope of protection may be deleted because this would constitute a reason for invalidity according to Section 22 of the Patent Act.
Therefore in opposition proceedings by the proprietor narrower are often claims of the contested patent filed, that when g under the o.. Criteria are permissible against which the material criteria are checked. Only the patent owner himself can request changes to his patent. Neither the opponent nor the patent office can make changes of their own accord.
costs
The official opposition fee is due once and regardless of the value of the patent. The opponent has to pay it.
Otherwise, each party usually pays its own costs. There is no claim to reimbursement based on the subject principle.
details
Effect ex tunc
A (partial) revocation of the patent is basically ex tunc, i.e. back to the past until it was granted. This means that no compensation has to be paid for a possible injury in the past. However, license fees that have already been paid do not usually have to be repaid.
Investigation principle
Since patents are rights against everyone, the patent office can also consider circumstances that are relevant beyond the submission of the party. After the objection has been raised, the proceedings can be continued ex officio.
Opponent
Everyone is entitled to appeal. A legal interest is not required. Therefore, those interested in the objection who want to remain anonymous can also appoint another person ( straw man ).
stand-in
The parties can be represented in opposition proceedings. As a rule, this is done in proceedings before the German Patent and Trademark Office or the Federal Patent Court by a patent attorney , in proceedings before the European Patent Office by an authorized representative before the European Patent Office .
See also
Web links
- Website of the German Patent and Trademark Office
- Website of the Federal Patent Court
- European Patent Office website