Patent overturned on appeal
We were asked by a large company to take over responsibility for an action it had taken to overturn a patent held by one of its major competitors. Our client was concerned that the patent covered several of its products; if the patent remained in force, our client could face the prospect of having to remove its products from the market and/or face lengthy and expensive legal proceedings to protect its position. Our task was therefore to do all we could to ensure that the patent was cancelled.
The patent had been granted by the European Patent Office (EPO) and our client had taken advantage of the “opposition” procedure by which it is possible to object to the grant of such a patent. The opposition was filed by the client’s in-house patent department but had initially been rejected by the EPO. An appeal against that rejection had been filed, and the hearing at which the appeal would be decided was only a few weeks away when we were instructed to take over the case.
After we had assimilated all the written material in the case, it was clear to us that a key issue was the significance of technical data that had been put forward by the patentee to support its case. We held intensive discussions with our client’s technical personnel, as a result of which we formed the view that the data did not in fact show what had been alleged. The challenge for us was to present our technical argumentation to the Board of Appeal in a convincing and persuasive manner.
A technical expert from our client accompanied us to the hearing at the EPO, and we presented our arguments. After adjourning the hearing for deliberation, the Board of Appeal announced that our appeal was to be allowed and the patent revoked. There being no possibility of any further appeal by the patentee, that was the end of the matter.
The patent ceased to have effect and our client was able to continue to market its products without fear of facing action for infringement.