What to do if your patent is opposed?

Most applicants and patentees will find out from their patent attorney that an opposition has been filed. In the case of an opposition against the grant of a patent, there are three main tasks that require consideration at this early stage: a consideration of the value of the patent, selection of the right patent attorney to have carriage of the opposition and commencement of a strategic analysis. Our specialist opposition attorneys are uniquely positioned to advise you through this process and throughout the conduct of the opposition.

Considering the value of the patent

Key questions to ask are:

  • What is the value of the patent application or innovation patent to your business? and
  • How does that value compare with the anticipated cost of defending the opposition?

The answers to these questions will inform the vigour with which the opposition is to be defended, if at all, or whether the option of settlement with the opponent may be best.

It is important to obtain an understanding of the process and costs associated with the various steps of the opposition and to have a frank and open discussion with the patent attorney selected to run the opposition on the costs and the trade-offs available between higher and lower cost options for the conduct of an opposition.

Select the right patent attorney

For any opposition that is to be defended, one of the first considerations is the selection of a patent attorney. Running an opposition is very different to dealing with the regular patent examination process; an opposition requires separate experience and expertise. While it is often appropriate to use the same attorney who was responsible for prosecution of the patent application, this should only be an option where the attorney has demonstrated experience and expertise in conducting oppositions.

Timing things right

Specific time periods exist to complete various steps of opposition proceedings, and any delay in taking action could result in the opponent having the upper hand and/or there not being sufficient time to prepare and file evidence. Recent amendments to the Patents Act and Regulations also now make it more difficult to obtain extensions of time during opposition proceedings. It is therefore in your best interest to work closely with a patent attorney that has substantial opposition experience and who understands and appreciates the complexities of opposition proceedings. A summary of the procedure is available at: Australian patent oppositions.

Start the strategic analysis early

For many oppositions the basis on which an opponent seeks to challenge a standard patent application or innovation patent must be set out in a statement of grounds and particulars. In some cases it is on receipt of this statement that the case on which the opponent will rely becomes clear. In others, it is only once the evidence in support has been filed that a substantive evaluation of the opponent’s case can proceed.

In either case, it is important to immediately start preparing a responsive strategy. Each opposition is different, but items to consider include:

  • To the extent possible in advance of receiving the evidence of the opponent, what is the strength of the opponent’s case and is a responsive amendment required?
  • What is the nature of the evidence that will be required to address each ground of opposition and who would be best positioned to provide that evidence?
  • Should an application for further and better particulars be made, or should a request to dismiss the opposition be filed on the basis that the opposition is clearly untenable?

Although an applicant has a period of three months to prepare and file evidence in answer from when the opponent completes any evidence in support, this period is in practice relatively short, especially as an applicant often has to identify and work with an independent expert. Analysis at an early stage is key to providing a foundation to obtain and file the most relevant evidence.

Keep an eye on the big picture

Throughout the opposition process, remember what was considered to be the underlying reasons for the patent’s value. This will influence the decisions as to what aspects of the opposition should be given the most careful consideration and also influence the decision whether an amendment is appropriate. Winning a battle in the opposition is of little consolation if the commercial value of the patent is severely diminished as a consequence.

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