Spotlight on Life Sciences Oppositions

Time is of the essence

"Patentees now have much less time to respond to an opposition. More than ever before, they need to review oppositions early and be prepared to respond within the initial four-month time limit. This means that a very early review of the opposition is required and, in particular, possible claim requests should be considered at an early stage and prompt consideration given to whether expert declarations or additional data are required.

Hearings are being appointed much sooner and there is now very limited time for opponents to review a patentee’s response before a summons is issued. Therefore, for an opponent, a prompt review of the patentee’s response is essential to determine whether or not a response should be fled before issuance of the summons, so that any rebuttal arguments are considered by the Opposition Division when preparing the summons."
Simon Kiddle

Changes in behaviour

"We knew that extensions of time for the patentee’s response had become much less common following the introduction of the streamlining initiative, but wanted to explore whether this was just because the EPO was much less willing to allow these requests or because patentees feel it’s no longer worth asking.

Our analysis showed that it’s both – the EPO and patentees have changed their behaviour.  Not only is the EPO much less likely to allow requests for an extension of time by the patentee, especially for single opponent cases, but patentees are also much less likely to request an extension of time, perhaps feeling that there’s little point in doing so."
Emily Hayes

Multi-party oppositions

"There is no limit on the number of oppositions that can be fled against any one patent. Filing of a large number of oppositions can signal, for example, that the patent in question covers a particularly valuable technology, that the claims are particularly broad, or that the patentee is active in a particularly crowded or litigious field, or a combination of such factors.

The vast majority of oppositions, however, involve just one opponent. Cases in which there are seven or more opponents are rare."
Katherine Green