Oppositions

Gill Jennings & Every has one of the most experienced and active patent opposition practices in Europe, and has an enviable reputation to show for it. Over the past 10 years we have handled over 700 opposition cases.

We understand that the often drawn out and complex European Patent Office (EPO) opposition procedure represents an anxious time for our clients. An unfavourable result can lead to the loss of substantial investment and protection for a patentee, and other undesirable commercial consequences. For an opponent, an unsuccessful patent opposition can produce a serious freedom-to-operate issue with the potential for descent into costly national litigation.

Opposition proceedings are fundamentally different from the written procedure of patent filing and prosecution before the Examining Divisions of the EPO – they are unique in being adversarial in nature, often requiring strong oral advocacy skills at the Hearing in order to prevail on the day. GJE has a 360° understanding of what it takes to achieve such success.

When preparing for and during opposition proceedings, we take time to assess the commercial goals of all the parties, and this will help to determine whether a compromise can be achieved or if all-out war is inevitable. Either way, our attorneys do not like losing – you will find us tenacious and determined. We will collaborate closely with your people to help devise and develop creative technical arguments and evidence in order to maximise the chances of success. At the same time, we will bring a meticulous approach as well as the full weight of our experience to create robust tactical and strategic legal arguments which complement your technical support.

Arnie Clarke and Lucy Samuels lead GJE’s oppositions practice and are supported by a sizeable and adaptable team. This enables both complex and multi-party cases to be handled effectively.  In this way our clients always have someone they can turn to – they don’t have to rely on just one or two individuals.

We understand the commercial need to plan for the future, and to account for the prospects and progress of important contentious actions. We will not sit on the fence – we clearly set out the short term and long term impact of our suggested advice and actions, and we will provide you with a quantified indication of the prospects of success. This includes the likely costs of dealing with such matters. We will help you to risk-manage the situation and enable you to clearly and accurately articulate this to the decision makers of the business.

In terms of final, non-appealable decisions by the EPO, our results speak for themselves. As can be seen below, for the last five years, GJE’s oppositions team has consistently outperformed the industry average set by all other firms operating within the European market. Between 2012 and 2017 GJE’s oppositions group achieved a significantly higher success rate with 57% of all cases during this period being revoked, and only 14% being maintained as granted; this compares highly favourably to the overall EPO oppositions average where only 39% of cases resulted in revocation and 29% were maintained as granted.

 

GJE Patent opposition attack statistics

A similar level of success has been achieved by the GJE team for defending patent oppositions. EPO data shows that GJE has outperformed the market between 2013 and 2018.

GJE Patent opposition defence statistics

 

What others say about our Oppositions team

“It [GJE] has notable strength in patent oppositions, led by Arnie Clarke who has particular expertise in small molecule pharmaceutical chemistry, and Lucy Samuels, who acts for clients in both defence of their patents and in opposition to those of their competitors. Demonstrating its capability in the space, Clarke represented Mylan in the high-profile revocation of Bristol-Myer Squibb’s European patent relating to the anti-cancer drug dasatinib.”

The Legal 500

“Ms Samuels and Dr Clarke are my benchmark. To date, no other firm has matched their ability and professionalism.”

FTSE 100 company in-house attorney

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