Health Technology and EPO Oppositions: Why Your Dependent Claims Matter – Patent
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Advances in diagnostic devices such as X-ray machines and MRI scanners, as well as prosthetic implants and surgical tools, have led to a patent boom in medical technology. Patent filings in this field are increasing year on year,
the number of patent applications filed with the EPO surpassing all other sectors in all but one of the past 10 years. Reflecting the value of these innovations in healthcare, opposition to EPO in the industry is also on the rise. In the meantime, the EPO has streamlined its opposition and appeal procedures. But are there more patentees who could do to obtain patents who are better placed to resist an opposition at the EPO?
The EPO opposition procedure
An opposition can be filed against a granted European patent within 9 months of its grant. Although other grounds may be invoked, the opposition will generally contain attacks on novelty and inventive step. Most often, these attacks are based on new documents that were not taken into account during the examination.
As part of its defence, the patent proprietor will normally present fallback positions limiting the claims in one or more auxiliary requests. There are three good reasons for focusing these fallback positions on the dependent claims of the granted patent. First,
clarity cannot be challenged when modifying a combination of a granted independent claim and a granted dependent claim. Second, any new facts and evidence submitted by the opponent in response to an amendment to a dependent claim
will be treated as a late product and will not be admitted to the proceedings unless considered prima facie pertinent– the opponent should have taken into account its position on the dependent claims when filing the opposition. Lately, changes to granted dependent claims are much more likely to be allowed at the opposition hearing than other changesand the realization that further changes are needed might only arise at the opposition hearing itself when a point goes against the patentee.
Appealing an EPO opposition decision
The main purpose of the EPO’s appeal procedure is to review the decision under appeal, and the possibility of amending the claims is extremely limited.. For the patentee, this means that the appeal proceedings will focus on defending the claim sets of the requests that were submitted during the opposition proceedings. For the reasons already mentioned, it is very likely that these applications are based on the dependent claims of the issued patent.
Dependent claims can save the day
Before grant, it is easy to overlook the importance of dependent claims in a European patent. For the case to be granted, independent claims take center stage, with dependent claims being only secondary players. However, dependent claims may come to the fore in oppositions and appeals to the EPO, alone or in combination with each other. In addition to those which further define the features of the invention, dependent claims potentially useful in an opposition or appeal may limit the technical scope of the invention or its use in a way which focuses the claim on the areas most important to business plan while surviving a particular novelty or inventive step. advance step attack by the adversary. And, as already mentioned, dependent claims provide by far the best fallback positions to use when defending your patent.
So what should you do?
It is not possible to predict whether your European patent will be opposed, or how exactly it will be attacked. But you may be prepared to fully defend your position not only by including other features of the invention in your dependent claims, but also by ensuring that you have dependent claims that limit the scope of your protection to your field or most important use. Now is the time to consider this as part of your copywriting strategy at the very beginning of the patenting process. This way, if your European patents are attacked, you will be able to defend them as best you can and where they add the most value to your business.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
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