Opposition and Appeal Procedures at the European Patent Office: What Every U.S. Practitioner Should Know

The post-grant opposition procedure at the European Patent Office (EPO) is a powerful tool. More than two-thirds of European patents that are opposed end up being either narrowed in scope or revoked entirely. With applicants from the United States receiving the most European patent grants, understanding how the EPO opposition procedure works, from both offensive and defensive perspectives, will form a key part of any U.S. practitioner’s international patent strategy.

Developing consistent strategies and knowing how to take advantage of both the similarities and the differences between EPO oppositions and U.S. post-grant challenges can give rise to time and cost efficiencies, while ensuring consistent and optimized strategies in each jurisdiction. Please join Finnegan’s European Patent Attorneys as they discuss the following topics and provide practical tips and insights:

• Opposing: When, how, and what to file; grounds of opposition; admissibility/institution; late submissions; official fees and timescales
• Responding: How to defend against an opposition; when to file counter-arguments and/or narrowing claim amendments; auxiliary requests; timescales
• Oral Proceedings: Summons to oral proceedings; preparing final written submissions ahead of oral proceedings; what happens on the day and how to prepare; submitting new requests; delivery of the decision
• Appeals: When and how to challenge an adverse decision; notice and grounds of appeal; nature of appeals; parties to appeals; official fees and timescales; reformatio in peius; Enlarged Board of Appeal
• U.S. Post-Grant Procedures: A compare and contrast of EPO oppositions with post-grant review (PGR) and inter partes review (IPR) proceedings; coordinating post-grant proceedings at the U.S. Patent and Trademark Office (USPTO) and EPO

Speakers:
M. Paul Barker
Aaron J. Capron
Philip L. Cupitt, Ph.D.
Martin D. Hyden

Date:
Wednesday, December 2, 2015

Time:
1:15 - 1:30 p.m. – Registration
1:30 - 4:30 p.m. – Seminar
4:30 - 5:30 p.m. – Reception

Location:
Menlo Park, CA