Post-Grant Patent Opposition in Europe and the U.S.
Under the America Invents Act (AIA), the US Patent and Trade Office (USPTO) received more than 2,700 petitions for inter partes review (IPR) that challenge the patentability of an issued patent. In Europe, such oppositions are long standing.
Since many inventions are protected by quite closely related patents Europe and the US, patent owners need to co-ordinate post-grant patent challenges or defenses to challenges in both jurisdictions. But, challenging the validity of a patent through the court in Europe and the US can be time consuming and expensive. Any opposition must be filed within nine months with the European Patent Office (EPO) and EPO data show that approximately two thirds of oppositions revoke or amend the opposed patent in 2013. Other issues for consideration include how and where a patent is challenged, the grounds for challenging patents, fees for each venue, discovery, amendments and litigation estoppel.
Patent counsel must be able to understand and the complex procedures of the EPO and USPTO to ensure strong protection of patent that might face such post-grant opposition in one or both jurisdictions.
In this CLE course, a panel of distinguished professionals and thought leaders assembled by The Knowledge Group will review the grounds for Post-Grant Patent Opposition in Europe and the US and discuss how they differ from those in Europe; how discovery and expert testimony affect the opposition, and strategies counsel use to optimize post-grant patent oppositions in Europe and the U.S.
Key topics include:
- America Invents Act (AIA)
- European Patent Convention (EPC)
- Post-grant Patent Oppositions
- Patent Litigation
- European Proceedings
- US Proceedings
- Primary similarities
- Primary differences
- Consistency Across Jurisdictions
- Post-grant Opposition Protection
Christopher P. Carroll, Counsel
Ropes & Gray LLP
Introduction to EPO Oppositions
- What is an EPO opposition
Heather Petruzzi, Counsel
Introduction to Post Grant Proceeding in US
- What is IPR/PGR
- Comparison of US Post Grant vs. EPO Opp.
Claus Elmeros, Partner
- Substantive basis ( Patentability, Novelty/Inventive step, added matter)
- Problems (good point by Claus about added matter attack)
- Strategies for optimization/winning
- Coordination of EPO Opp. and US IPR/PGR (from EP perspective)
Michael T. Siekman, Shareholder
Richard F. Giunta, Shareholder
Eugene T. Perez, Partner
Birch, Stewart, Kolasch & Birch, LLP
Post Grant Proceeding in US
- Substantive basis
- Strategies for optimization/winning
- Real Party in Interest Requirement in IPR/PGR/CBM
- Claim construction before the PTAB
- USPTO Rules changes (“Quick Fixes”)
- Pending Legislative Changes
Sander van Rijnswou, PhD, LLB, Associate Partner
Impact of the Unified Patent Court (UPC) on post grant proceedings
- Status of UPC
- Central revocation under the UPC
- Applicability of UPC. Considering the opt-out and unitary patents
- EPO opposition versus UPC proceedings
Who Should Attend:
- IP Attorneys
- IP Consultants
- Patent Attorneys
- Patent Consultants
- Patent Litigators
- Other Related/Interested Professionals
Christopher P. Carroll is counsel in the Boston and London offices of Ropes & Gray. In addition to being a U.S. patent attorney, he is a solicitor in England & Wales and solicitor in the Republic of Ireland. He is currently handling over 50 Oppositions and Appeals before the EPO. He has argued at Oral Proceedings before the Examining Division, Opposition Division, and Boards of Appeal of the EPO.
Christopher P. Carroll is counsel in the Boston and London offices of Ropes & Gray. In addition to being a …
Heather M. Petruzzi, counsel at WilmerHale, focuses her practice on complex intellectual property issues. She represents clients across a variety of technologies in strategic post-grant proceedings before the USPTO, including inter partes review, ex parte reexaminations, and inter partes reexaminations proceedings. She has represented both petitioners and patent owners during inter partes review proceedings. Ms. Petruzzi also coordinates global patent strategies for international companies facing oppositions and litigation in several forums. She handles pre-litigation investigations, discovery, claim construction, expert discovery, expert reports and depositions. She also assists in drafting briefs and preparing for oral argument before the Federal Circuit. Ms. Petruzzi counsels clients on freedom to operate matters and drafts invalidity and non-infringement opinions. Additionally, she advises on IP sales and acquisitions and performs due diligence analyses. She prosecutes patent applications for start-up and large companies in the pharmaceutical and medical device space and has represented these clients in district court.
Heather M. Petruzzi, counsel at WilmerHale, focuses her practice on complex intellectual property issues. She represents clients across a variety …
Michael Siekman counsels clients of all sizes in the biotechnology and pharmaceutical industries on a range of intellectual property matters, including patent prosecution and portfolio strategy, due diligence, licensing, opinions, post-grant proceedings, and litigation. His over 20 years of experience has involved blockbuster drugs as well as orphan drugs, and he has managed patent portfolios for several pioneering biotechnologies. He serves as the co-chair of Wolf Greenfield’s Biotechnology Group.
Michael has successfully run and argued ex parte and inter partes cases before the Patent Trial and Appeal Board (PTAB). He also has extensive experience extending patent terms in the U.S. and abroad, obtaining several Patent Term Extensions and Supplementary Protection Certificates, and maximizing Patent Term Adjustment for clients by petition and litigation.
Michael Siekman counsels clients of all sizes in the biotechnology and pharmaceutical industries on a range of intellectual property matters, …
Rich Giunta has over 25 years’ experience and specializes in post-grant proceedings before the United States Patent Office. He co-chairs Wolf Greenfield’s Post-Grant practice group and its Electrical and Computer Technologies practice group.
Rich has successfully represented clients in Inter Partes Review (IPR), Covered Business Method (CBM) Review, and inter partes and ex parte reexamination. He specializes in high stakes matters involving market leading companies involved in parallel litigation and has successfully represented clients in matters with more than one billion dollars at stake. He has represented patent owners in twenty two post-grant proceedings without losing a single claim.
Rich also has an extensive patent prosecution and counseling practice. He counsels clients on the development of commercially valuable patent portfolios and leads teams to build those portfolios. He has written and prosecuted patents that have withstood post-grant attacks and been successfully asserted in litigation.
Rich also has significant litigation experience. He has architected infringement and validity aspects of major patent litigations and drafted winning claim construction motions.
As a former senior design engineer, Rich has particular expertise in handling all types of computer and software related technologies. He has also handled other technologies in the electrical, medical device, and consumer products fields, including storage systems, digital rights management systems, automatic availability systems, databases, automatic speech recognition, text-to-speech generation, natural language understanding, semiconductor processing, imaging devices, healthcare systems, wireless networking systems, computer aided tomography, explosive detection devices, graphics systems, guidewires, stents, catheters, surgical patches, and endoscopes.
Rich represents a full spectrum of clients, including industry leading multi-national corporations (e.g., EMC, Nuance Communications, C.R. Bard,), mid-size companies, start-ups, venture capitalists, and academic institutions.
Rich Giunta has over 25 years’ experience and specializes in post-grant proceedings before the United States Patent Office. He co-chairs …
Eugene Perez has practiced in intellectual property field since 2000, specializing in chemical, pharmaceutical and biotechnology patents, with some work in the mechanical arts. His experience includes all aspects of patent prosecution for patent and reissue applications, including corresponding with clients and preparing replies to all USPTO correspondence such as Office Actions, Restriction Requirements, Appeal Briefs, and filing Preissuance Submissions (third party submissions). The experience also includes initiating and conducting post-grant proceedings such as inter partes reviews, ex parte and inter partes reexamination, as well as conducting legal research and preparing freedom-to-operate, patentability, infringement, and validity opinion letters. Mr. Perez is also the editor of the microsite dedicated to Post-Grant Patent practice (www.postgrantproceedings.com), and provides his clients comprehensive post-grant patent counseling including advice on strategies and pitfalls of the emerging USPTO post-grant proceedings. Mr. Perez has also argued before the Court of Appeals for the Federal Circuit, as well as before the USPTO Patent Trial and Appeal Board (previously the Board of Patent Appeals and Interferences).
Eugene Perez has practiced in intellectual property field since 2000, specializing in chemical, pharmaceutical and biotechnology patents, with some work …
Claus Elmeros is a Partner and European Patent Attorney and European Design Attorney at HØIBERG A/S and work for clients ranging from start-up, small, and medium-sized companies to multi-national companies within mechanical technology, medical devices, manufacturing technology to control systems and software.
Claus has a M.Sc. in mechanical engineering/manufacturing from Aalborg University. Claus started in the patent profession in 1990 as a patent examiner at the European Patent Office in the Netherlands. Since 1995, Claus has advised on patents and registered design protection, including drafting and prosecuting patent applications, patentability assessment, licensing, patent infringement assessments, and opposition and appeal proceedings before the European Patent Office and the Danish Patent & Trademark Office. Claus received authorization as European patent attorney in 1997 and in 2013 completed the studies in the patent litigation in Europe.
In 2010, he was appointed technical judge at the Maritime and Commercial Court and acts as court appointed technical expert in patent related legal disputes.
Claus Elmeros is a Partner and European Patent Attorney and European Design Attorney at HØIBERG A/S and work for clients …
Sander van Rijnswou is a European patent attorney specializing in computer-implemented algorithms and cryptography. He is an experienced tutor in the DeltaPatents’ opposition courses making full use of his experience in opposition and appeal proceedings before the EPO. In addition to his patent qualifications, he has a PhD in mathematics and a bachelor degree in law. Sander is the editor of DeltaPatent’s EPO case law blog and associate partner.
Sander van Rijnswou is a European patent attorney specializing in computer-implemented algorithms and cryptography. He is an experienced tutor in …
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About Ropes & Gray LLP
Ropes & Gray is one of the world’s premier law firms, with approximately 1,100 lawyers serving clients in major centers of business, finance, technology and government. The firm has offices in New York, Washington, D.C., Boston, Chicago, San Francisco, Silicon Valley, London, Hong Kong, Shanghai, Seoul and Tokyo, and has consistently been recognized for its leading practices in many areas, including private equity, M&A, life sciences, health care, finance, investment management, hedge funds, tax, intellectual property, litigation, securities litigation and government enforcement.
WilmerHale is a leading international law firm with more than 200 attorneys focused on intellectual property matters in the United States, Europe and Asia. The firm’s lawyers are experienced in providing comprehensive solutions to the intellectual property business challenges that face companies at all stages of growth and in every aspect of their business that involves the acquisition, exploitation or protection of intellectual property. WilmerHale has been deeply involved in patent litigation since the battle between Amgen and Genetics Institute over EPO in the 1980s. Since that time, the firm has represented clients such as Roche, GlaxoSmithKline and Becton Dickinson in many of the landmark patent cases in these industries.
About Wolf Greenfield
Wolf, Greenfield & Sacks, P.C. is the largest New England-based law firm focused solely on intellectual property (IP) law. The firm’s lawyers are technical and legal specialists at the forefront of their fields supporting leading companies, inventors, and research facilities with a full range of intellectual property portfolio management including patent, copyright and trademark acquisition, prosecution and litigation; opinions and strategic counseling; trade dress protection; intellectual property audits and due diligence; and licensing and other issues related to commercialization of intellectual property. Now in its ninth decade, Wolf Greenfield continues to represent innovators in the fields of biotechnology, chemical & materials technologies, pharmaceuticals, clean technology, electrical & computer technologies, mechanical technologies, medical devices, and consumer products. Learn more at www.wolfgreenfield.com.
About Birch, Stewart, Kolasch & Birch, LLP
Since 1976, Birch, Stewart, Kolasch and Birch, LLP (BSKB) has been providing a full range of intellectual property law services to clients in the areas of patent prosecution, post-grant review, litigation, ITC litigation, opinions and counseling, trademarks, design patents and licensing. BSKB’s knowledgeable attorneys and agents hold advanced degrees and are experienced in the fields of chemistry, electronics and IT, mechanical engineering and life sciences/biotechnology.
BSKB believes in offering every client quality, personalized service, and are committed to educating clients to help them make the most of their intellectual property. BSKB has a rich tradition of offering seminars on intellectual property law that have been attended by practitioners from around the world.
About HØIBERG A/S
HØIBERG A/S is a full service patent and trademark company providing services within the fields of Intellectual Property Rights (IPR), including Patents, Trademarks and Designs, Innovation Management, Technology Transfer and Business Development
HØIBERG A/S was founded in 1995 by Susanne Høiberg as a life sciences patent firm. Since its foundation, HØIBERG has undergone rapid development. In 2006 the company merged with Elmeros Patents, thereby acquiring substantial IP rights expertise within the fields of electronics and mechanics.
The company now employs about 40 highly qualified people at offices in Copenhagen and Aarhus. All of the patent attorneys at HØIBERG hold degrees from international universities and work in all fields of technology, ranging from biotechnology and medico-technology, through mechanical technologies, physics, electronics, optics and software to manufacturing technology and mechanical technologies.
HØIBERG’s clients include a wide range of national and international companies, start-up companies and researchers from the universities and hospitals.
DeltaPatents is a full-service patent attorney firm based in Eindhoven and Leiden—both widely recognized hubs of technology and learning in The Netherlands. Their patent professionals have extensive industrial experience and work exclusively in English for both multinational enterprises and local startups.
They are proud to be the leading educator of the next generation of European patent attorneys and IP administrators. DeltaPatents provide an extensive range of IP training courses that are continuously maintained with the latest law changes, case law, and procedural requirements.