Patent Oppositions

Formulating opposition strategy requires in-depth knowledge of the interplay between U.S. and international patent law and global business factors. Oppositions or validity challenges can be filed against patents granted in Europe, Japan, Australia, New Zealand and elsewhere. Sterne Kessler works closely with clients to determine when and where it is well-advised to file an opposition.

As part of a global patent procurement and freedom-to-operate process, we analyze competitors’ patents or applications. As an additional step in this process, we advise clients on putting an opposition or cancellation strategy into play. By having a patent significantly amended or even declared invalid during an opposition/cancellation proceeding, we help clients minimize infringement risk.

Considerations for Foreign Oppositions

  • Cost-effectiveness: The cost of an opposition proceeding in a foreign country is significantly less than U.S. or foreign litigation, promoting their use as a cost-effective offensive tactic.
  • Effect on competitive positions in the United States: Companies often file the same patent application in many foreign countries. Some of our clients have no interest in foreign commercialization of a product, but filing an opposition in Australia, Europe, or elsewhere may help to weaken the competitor’s patent position in the United States.
  • Testing for U.S. enforcement strategy: Arguments in support of amendment and invalidity can be “road-tested” in a foreign jurisdiction before pursuing a similar, more costly strategy in the United States.
  • Influencing competitor’s U.S. enforcement strategy: The defeat of a patent in a foreign country will give a competitor something to consider before engaging in patent litigation in the United States.
  • Effect on U.S. patent prosecution outcomes: Opposition proceedings may be considered material to prosecution in the United States of a related application and would consequently have to be disclosed to the USPTO.
  • Timing of filing: The timing of oppositions filing varies by jurisdiction—for example, in Europe, an opposition must be filed within nine months from the date of publication of the grant of the patent. In Japan, however, trials for invalidation may be filed at any time during the life of the patent.

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