In the field of intellectual property (IP), quality of a patent is very important. Ensuring patent can survive legal analysis and challenges is equally significant.

What is an Opposition Search?

An opposition search examines patent and non-patent prior arts to find possible challenges that might be made against the issuance of a new patent (the patent office refers to this as the opposition window, which is the brief time frame before and after a new patent is granted).

Why is opposition search a critical process for businesses and inventors?

Businesses that conduct opposition searches are able to anticipate the threats posed by their competitors. By determining potential prior arts, they can take proactive measures to resolve problems before they arise.

Legal and commercial consequences of not conducting Opposition Search?

Legal Risks: Contesting a registered patent or trademark through litigation or cancellation procedures becomes more challenging, costly, and uncertain. In addition to losing the opportunity to present arguments or supporting documentation, missing the opposition window may lead to the rejection of any subsequent attempts to contest the registration.

Commercial Risks: Letting similar or conflicting intellectual property continue unchallenged can lead to lost revenue or market share, consumer confusion, and weakened brand identity.

Legal Foundations of Opposition Search

Opposition search is founded on patent and trademark legislation that establishes a formal mechanism for third parties to contest the validity or registration of intellectual property during a designated opposition timeframe.

What is the difference between Validity Search and Opposition Search?

Both Validity Search and Opposition Search focuses on the strength of the Patent, that is how it is going to withstand with legal disputes and challenges.

Validity Search is mostly conducted by the third party and patent owner to investigate the granted patent strength. This search is done as soon as the patent is granted to check that the patent can withstand with legal challenges by identifying prior art that may affect its novelty or inventive step.

Opposition Search is conducted by the third party during the opposition window which a short time before and after grant of the patent to challenge the validity of the patent through an opposition process.

How patent rights vary by Jurisdiction for Opposition Search?

Patent Rights for opposition searching vary across jurisdiction due to legal procedures and timing.

Timing for Opposition Filing

• Europe (EPO): Opposition must be filed within nine months after patent grant. This opposition filing comes under post-grant patent type of opposition search.
• United States: There is no such opposition filing process but provides post-grant review (PGR) and inter parts review (IPR) procedures through Patent Trial and Appeal Board (PTAB).
• PGR: It can be filed within 9 months of grant.
• IPR: It can be filed after the 9 month of PGR window.
• India: It allows pre-grant opposition, which can be filed after publication before grant, and post-grant opposition within one year of grant.
• Other Jurisdictions: Opposition filing vary from 2 months to 6 months for pre-grant and 6-12 months for post grant oppositions.

Legal Procedural Differences

• Europe: Opposition processes are managed by both technical and legal specialists. The evidence mainly centers on prior art documents.
• United States: PTAB processes allows limited discovery and expert evidence/testimony (more restricted compared to traditional litigation). The petitions must fulfil rigid requirements which include a detailed argument and evidence. Further, the PTAB has a high bar for starting a review. The petitioner needs to provide strong evidence to prove that the patent might be invalid, to get the review process started.
• Costs and Formalities: Opposition fees vary, but is generally lower than the litigation expenses. However, legal representation and evidence collection can increase costs. Procedural formalities vary, with certain countries maintaining highly structured systems while others adopt a more adaptable approach.

How prior arts are preferred for opposition search?

While conducting an opposition search, the selection and use of prior arts are critical for challenging the validity of a patent application or a granted patent. This is how it’s been selected.

Different types of prior art taken into consideration.

• Patent Document: Previous granted and published patents.
• Scientific Literature & Technical Publications: Journals, technical reports, and research papers could be considered.
• Books, Magazines, and Industry Journals: These are useful for non-patentable subject matter or lack of inventive step.
• Academic Theses & Conference Papers: Publicly accessible University research, theses, and presentations.

Relevancy and Impact on the Patent

There are two types of prior arts one is anticipatory and other is in combination. Anticipatory references disclose that all the claim elements have been mapped using single prior art. Combination means all the claim elements are mapped using two or more prior arts. 

Importance of Opposition Searching

Opposition searching is a crucial intellectual property strategy for businesses, inventors, and innovators. It involves both legal and commercial considerations, and plays a significant role in maintaining a fair and competitive marketplace.

Improving Patent Quality

Opposition searches are useful as they ensure that only patents fulfilling the required criteria (such as Novelty and Inventive step) are granted. These searches help in identification of relevant prior-arts or other grounds for opposition, preventing the grant of patents not meeting the required criteria.   

Avoiding Costly Disputes

Having the opposition search conducted, the inventors/businesses may identify the challenges before the grant of their patent. Opposition search can save their time and cost.

Protecting Public and Competitive Interests

Opposition search play a crucial role in guaranteeing that only those patents which fulfil all legal criteria such as novelty and inventive step are granted, thus enhancing the overall quality and dependability of the patent system. By uncovering prior art or other bases for opposition, these searches assist in averting the granting of patents that are not warranted, thereby minimizing the likelihood of unwarranted monopolies.

Legal Certainty and Efficiency

• Early Dispute Resolution: Opposition proceedings provide an efficient, accessible, and less adversarial means of resolving patent validity disputes, reducing reliance on costly litigation and providing greater legal certainty for all parties.
• Expert Evaluation: The proceedings in opposition are handled by technically qualified experts, which helps in maintaining the accuracy and reliability of the decisions/outcomes.

Supporting Innovation

Safeguarding Authentic Innovation: Opposition searches ensure that only inventions with merit (or genuine innovations) receive protection, while preventing the grant of unworthy patents, thereby fostering continuous research and technological progress.

Strategic Decision-Making

The insights obtained from opposition searches guide patent filing strategies, resource distribution, and competitive positioning, ensuring that investments in innovation are safeguarded and effectively directed. Information derived from opposition searches can enhance a party’s stance in negotiations or settlements, possibly preventing protracted disputes.

When and How to Conduct an Opposition Searching

Opposition Search is conducted by Businesses, Inventors and Innovators. This search is conducted in small time frame before and after the grant of the patent.

Businesses that conduct opposition searches are able to anticipate the threats posed by their competitors. By determining potential prior arts, they can take proactive measures to resolve problems before they arise.

The steps involved during patent opposition searching are –

• Having a brief understanding of the claim and subject matter of the patent.
• Identifying prior arts relevant to the claims of the patent and mapping it with relevancy of the identified patent.
• Prior art includes published patents, Journals, Thesis, Articles, Audio, Video or any online resources.
• Prepare clear evidence and explanation showing how the prior art anticipates the claimed invention obvious or otherwise non-patentable.
• Prepare an opposition submission, draft a written document that includes the legal details of the opponent, references to the relevant law that permits the opposition, a clear and detailed statement of the grounds for opposition supported by arguments and evidence, and a summary of the applicant’s claims explaining why they should be refused or amended.
• Submit the opposition to the relevant patent office within the prescribed time frame, such as within nine months of the grant publication at the European Patent Office or within one year of the grant’s publication in India.
• If the opposition is accepted, the patent applicant will be notified and given an opportunity to respond, which may include submitting further arguments, participating in hearings, or amending the claims; the patent authority will then review all submissions and ultimately decide whether to grant, amend, or refuse the patent.

Tools & Resources for Opposition Searches

There are many databases which are useful in opposition searches, including free of cost databases, paid databases and some AI-based tools. Some of them are listed below:

• Free Databases: Some of the freely available databases used in opposition search include Google patents, Espacenet, USPTO etc.
• Paid Databases: Some paid databases useful in carrying out opposition searches include Orbit, PatSeer, Derwent Innovation, PatBase etc.
• AI Tools: Several AI based tools are also available for performing opposition searches. These include PatSeer AI search, PQAI, Amplified etc.

Role of Patent Attorneys and Search Firms in Opposition Search

Patent attorneys and search firms play a vital role in opposition searching process, keeping tabs on steps to be aligned with legal constraints maximizing the probabilities of a successful challenge.

Patent Attorneys:

Patent attorneys are responsible for advising clients and ensuring the fulfilment of deadlines and formalities, utilizing their expertise in patent law and jurisdiction specific procedures to successfully carry out an opposition search. These attorneys draft comprehensive opposition notices referencing relevant statutes and case laws, present well-structured arguments, manage/handle the filing process, and represent clients before patent offices/tribunals during proceedings. They gather, organize and present the evidences including prior arts to make the opposition stronger and compliant with all the requisites.

Search firms:

Search firms play a really important role in opposition searches, utilizing their technical and analytical expertise to uncover evidences crucial for opposition. These firms have dedicated teams of experts (including engineers, researchers, and IP experts) who make sure no stone remains unturned during their thorough search including patent and non-patent literature. Careful selection of most relevant prior-art and clear mapping to the claims under review during the opposition search, makes the opposition successful. These firms provide their clients with detailed reports demonstrating the extent to which a prior-art is mapped to each clause of the claims. These reports play a vital role in making the opposition case strong. Based on the insights and analysis reported by these firms, the attorneys can confidently form legal arguments during proceedings. Additionally, some of the firms also provide services like continuous monitoring of filings made by competitors, and notifying their clients about potentials threats before time which gives them strategic advantages.

Handling Identified Risks in Opposition Search

To ensure the protection of intellectual property, it is very crucial to manage the risks identified during an opposition search. After the identification of a potential challenge (i.e. a clashing prior-art or possible evidence for invalidity), the businesses should take some strategic steps for the mitigation of such challenges including:  

Identifying and prioritizing risks:

It is very important to identify the impact of the prior-arts and to analyse which of the identified prior-arts present great threat to the validity of your patent. Prioritizing the risks based on the potential and commercial consequences attached to them can help in mitigation strategies.  

Amending Claims:

Considering the amendment of your claims, after the identification of a relevant prior-art, can make your case stronger. The claims can be drafted in a narrower manner, to reduce the chances of a successful opposition. 

Conduct Further Analysis and Monitoring:

Continuously monitoring the patent landscape for latest publications or competitor movements can give you an edge. By periodically updating the original search and analysis, you can stay informed and can strategize in advance to tackle any challenges. 

Seek Expert Legal Advice:

In-depth analysis of the identified challenges can help in making strategies to deal with the risks. This is where patent attorneys and IP experts can help you, as legal experts using their expertise can provide you with sound advice – be it claim amendments, continuation filings or preparation of opposition proceedings.  

Make Defensive Strategies:

Building a patent portfolio around your core technologies and key product features can help you in long run. A portfolio can empower you by providing a leverage in negotiations, enabling cross-licensing opportunities, and even helping in responding to legal threats/challenges from competitors.

Disclose Relevant Prior Art:

Disclosing all the known relevant prior-art during prosecution can strengthen your patent’s validity and reduce the potential challenges.

Collaborate Across Teams:

To make risk management strategies comprehensive and aligned with overall business objectives, it is generally a great idea to encourage collaboration among legal, technical and business teams.

Opposition Search Opinions

What exactly is a formal legal opinion in opposition searching?

Well, it’s a detailed, written report given by a patent attorney or legal expert. This report calculates the strengths and weaknesses of a potential or ongoing opposition against a patent application or an already granted patent. It dives into the legal reasons for the opposition like lack of novelty, inventive step, or insufficient disclosure backed by relevant evidence and legal precedents. Ultimately, it offers a professional judgment on how likely it is that the opposition will succeed if it moves forward.

When might you need a formal legal opinion?

When you’re looking to file an opposition, or responding to an opposition filed against your own patent, or during due diligence in business transactions (like mergers, acquisitions or licensing deals), a formal legal opinion might come in handy. It can shed light on legal challenges, help in strategic decision making, and ensure that actions are based on a solid ground of relevant laws and facts. It can act as a game-changer, when commercial interests are involved or when the outcome has the potential to affect the market exclusivity or your freedom to operate.

What does a standard Opposition Search Opinion look like?

• Introduction and Background: This section offers a brief introduction to the patent or application, providing context for the opinion.
• Summary of Claims: This part outlines the claims that are being either challenged or defended.
• Legal Reasons for Opposition: This section suggests legal reasons for the opposition are identified, such as lack of novelty, inventive step, or incomplete disclosure.
• Prior Art Analysis: Reviewing of relevant prior art and its implications for the claims.
• Assessment of Strengths and Weaknesses: The evaluation of the merits of the opposition judging whether the opposition is likely to succeed or has some weak points. The evaluation also considers the possible counterarguments.    

Value in litigation or due diligence

When it comes to litigation or due diligence, a formal legal opinion is incredibly needed. It provides a clear, expert evaluation of a patent’s strengths and weaknesses. In litigation, this opinion can guide legal strategies, bolster negotiations, and serve as evidence of due care or good faith. For due diligence, especially in mergers or investments, it helps assess the strength of a patent portfolio, pinpoint potential risks, and shape the terms of the deal. It minimizes uncertainty and aids in making informed decisions in complex business and legal scenarios.

Industry Specific Considerations

When you're diving into an opposition search, it's essential to consider industry-specific factors that can really shape your strategy. These elements influence the types of prior art you should focus on and the legal arguments you might want to highlight. Here are some key points to keep in mind:

Nature of Technology and Patent Landscape

In highly innovative fields like pharmaceuticals, biotechnology, electronics, and software, the patent landscape can be quite dense. This means you'll need to conduct more thorough and expansive searches to find relevant prior art and anticipate potential challenges.

In fast-paced industries, such as software or electronics, non-patent literature, standards documents, and recent publications can be just as crucial as traditional patent documents.

Regulatory and Legal Requirements

Certain sectors, like pharmaceuticals or chemicals, face strict regulatory standards. When conducting opposition searches in these areas, you may need to tackle issues related to industrial applicability, the sufficiency of disclosure, and compliance with local regulations.

In some jurisdictions, the patent can be opposed if it lacks industrial applicability or if it doesn’t have any technical effect.

Type of Prior Art and Data Sources

The choice of databases and search sources varies by industry. For example: Pharma/Biotech: Scientific journals, and regulatory filings are critical.

Engineering/Electronics: Standards documents, technical conference activities, and product manuals may be highly relevant.

Software/AI: Open-source reservoir, code documentation, and internet publications are often key sources.

Search firms and attorneys often tailor their search strategies and tools to the technical field, using scientific databases and domain-specific knowledge.

Commercial Stakes and Risk Tolerance

In industries with high litigation risk or significant commercial stakes (e.g., telecom, pharmaceuticals), the budget invested in an opposition search may be much higher, with a focus on increasing recall and decreasing the chance of missing critical prior arts. The balance between precise search (recall) and cost is often dictated by the potential business impact of a success or unsuccessful opposition. Grounds for Opposition. Specific reason may be more relevant depending on the industry. For example, industrial application and assistance are often inspecting in life sciences, while novelty and inventive step are universal but may be interpreted differently based on the technical field.

Common Misconception in Opposition Searching

There are several misconceptions about opposition searching which can hamper its true potential, and can eventually lead to missed opportunities and wasted resources. Some of the common misconceptions include:

Assuming Opposition Searches are the same as Patentability or Invalidity Searches:

One of the most commonly held misconceptions about the opposition search is that, by many, it is believed that it follows the same approach as a patentability or an invalidity search, which is not true and far from reality. As each of the searches mentioned above serves a distinct purpose and has a distinct scope and strategy. Specifically, the opposition search focuses on finding prior-arts and making arguments which are particularly relevant to the grounds used in opposition proceedings, which are different from those in litigation or patent examination.

Neglecting the Importance of Non-Patent Literature:

Another common mistake during an opposition search is overlooking the non-patent literature and narrowing the search to only patent documents. Non-patent literature, including scientific articles, technical manuals, product documentation etc., is often helpful in cases where patents fail to disclose the challenged invention. Overlooking non-patent literature, therefore, undermines the opposition case.

Not Understanding the Purpose or Scope of the Search:

Sometimes, the people responsible for searching carry out their searches without having a clear understanding of the actual goal. Due to this uncertainty, they often have no clear idea about what they’re doing (i.e. trying to challenge the novelty, inventive step, or the sufficiency of the disclosure). And, without a well-defined purpose, their search often ends up being too broad/narrow, which results in missed relevant references.

Relying Only on Keywords and Not Using Classification Codes:

It is never a good idea to just rely on keyword-based searching in any kind of search. Many times, the searchers tend to miss some important keyword/synonym during a search. There are cases where some references do not include the keyword directly but are relevant. So, to cover all the bases, it is generally a good strategy to include patent classification codes (including IPC, CPC etc.) in your search.

Believing That a Single Search Is Sufficient:

A common misconception that one thorough search will be enough to uncover every relevant reference, often leads to missed opportunities. Sometimes, opposition searches do require multiple rounds of searching which include adapting strategies based on new information coming to light and as claims evolve during proceedings.

Confusing Opposition with Litigation:

One of the most common misconception is that people consider opposition and invalidity challenges to be the same. However, these are two different kinds of processes. The opposition is generally an administrative process with its own timing, scope and evidence requirements which are different from those in litigation or post-grant invalidity proceedings. The opposition is typically handled by a patent office, not a court.

About Effectual Services

Effectual Services has a team of highly skilled professionals, including lawyers and engineers who specialize in conducting comprehensive patent searches. The Engineers and technical experts bring in-depth understanding and knowledge of the Indian Patent Act 1970 and in various technical fields.

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