Patent oppositions

Oppositions and appeals before the EPO, invalidity actions and defence of patent validity.

The procedure for obtaining a European patent, governed by the relevant Convention, provides third parties with the opportunity to file an opposition against the granted title. More specifically, anyone may oppose a European patent within nine months of the publication, in the European Patent Bulletin, of the mention of its grant.

Article 100 of the Convention exhaustively identifies three grounds on which an opposition may be based:

• lack of patentability of the subject-matter, in violation of Articles 52 and 57;
• a description of the invention lacking the clarity required for a person skilled in the art to carry it out;
• extension of the subject-matter of the patent beyond the content of the application as originally filed (or, in the case of divisional applications, beyond the content of the parent application).

Once the opposition has been filed, the competent Division of the Office examines it: if it finds that even one of the listed grounds is well founded, it may revoke the patent; otherwise, where it considers the grounds unfounded, it will decide to maintain the patent.

The Italian system differs in this respect, as it provides no administrative opposition procedure before the Italian Patent and Trademark Office. Once a patent has been granted, the only way to challenge it is through the courts, by resorting to the remedies provided by the Industrial Property Code before the ordinary courts.

Our firm is available to provide legal assistance, both in administrative proceedings and in court, to protect your patent, drawing on solid and well-established professional experience in the field.