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. 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 patent owner, and other undesirable commercial consequences. For an opponent, an unsuccessful patent opposition can produce a serious freedom-to-operate issue with the potential 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. We have represented the patent owner in over 1000 opposition proceedings, and have acted for the opponent in over 750 cases.

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 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 bear on creating 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 flexible 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.

In terms of final, non-appealable decisions by the EPO, our results speak for themselves: As can be seen below, over a ten year period GJE’s oppositions team has consistently outperformed the industry average set by all other firms operating within the European market. Between 2005 and 2014 GJE’s oppositions group achieved a significantly higher success rate with 52% of all cases during this period being revoked, and only 16% being maintained as granted; this compares highly favourably to the overall EPO oppositions average where only 39% of cases resulted in revocation and 28% were maintained as granted.

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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 2012 and 2014 for both Legal 500 tier 1 firms and all UK firms.

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What others say about our Oppositions team

“Gill Jennings & Every LLP’s team advises on cross-border mandates for a number of non-UK clients. ‘One to watch’, Arnie Clarke achieved a crucial patent revocation for Teva before the EPO. John Jappy and Lucy Samuels are also recommended. Gill Jennings & Every LLP ‘has a host of good people'”. 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.

“GJE understands our technology and they provide and add value to what we send them to do. They produce very high quality work and are very trusted. What I notice when we go to hearings is that our competitors say that they are very impressed with our attorneys.” Dr Chris Eastell, De La Rue Holdings.

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.

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