Opposition to a patent: How to proceed
A granted patent is a strong property right, but it does not always meet the legal requirements. Companies or individuals who feel that their rights are compromized by a patent have the option of filing an opposition against a patent. This procedure enables a cost-efficient review of patentability by the competent authorities.
Invalid or unjustifiably granted patents can be contested within a non-extendable time limit in order to obtain legal clarity. In this article, you will learn how opposition proceedings work, what deadlines and costs must be observed and why professional support is helpful in this process.
What is an opposition to a patent?
Opposition to a patent is an official procedure aimed at the subsequent review of a granted patent. It examines whether the patent is patentable, i.e. whether the patent meets the legal requirements such as novelty, inventive step and industrial applicability. Other aspects, such as a possible right of prior use or formal errors in the patent application, can also be examined.
An opposition is only successful if the patentability of the patent in dispute can be called into question. Possible grounds are:
- Lack of novelty: The patent relates to an invention that was already known (prior art).
- Lack of inventive step: The invention is obvious to a person skilled in the art.
- Insufficient disclosure: The description in the patent is not sufficient to rework the invention.
- Other legal obstacles: For example, a violation of statutory provisions in the patent procedure, such as an impermissible extension beyond the original content.
The opponent bears the burden of proof for the reasons given. It is therefore advisable to submit all relevant information and documents at an early stage in order to maximize the chances of success.
Deadline for filing an opposition
The opposition to a patent must be filed within nine months of the patent being granted. This deadline is mandatory and cannot be extended. If you miss this deadline, you only have the option of initiating more expensive nullity proceedings.
While opposition is a time-bound option for challenging a patent, nullity proceedings offer the opportunity to have the validity of the patent reviewed at any time after it has been granted.
What is the nullity procedure?
Nullity proceedings are a legal means of challenging a patent that has already been granted, even after the opposition period of nine months has expired. In Germany, it is conducted in the first instance before the Federal Patent Court (BpatG) and aims to revoke the patent entirely or in part.
After a decision of the Federal Patent Court, the unsuccessful party has the option of continuing the nullity proceedings in a second instance before the Federal Court of Justice (BGH). This appeal instance offers a complete legal review of the first instance decision by the highly specialized patent panels of the BGH, which consist of three professional judges and two technical judges.
In contrast to opposition proceedings, nullity proceedings are not subject to a time limit, but are associated with higher costs, as the court fee is based on the value in dispute. In addition, considerable attorney's fees are usually incurred. The procedure is more time-consuming, but offers a later opportunity to take action against problematic patents.
Opposition against patent: Procedure
The opposition procedure follows the principle of official investigation, albeit with certain restrictions. In proceedings before the European Patent Office (EPO) in particular, it is up to the parties involved to submit comprehensive arguments and evidence as early as possible. In Germany, official investigation is more pronounced, which means that the German Patent and Trade Mark Office (DPMA) actively searches for relevant facts on its own initiative. Nevertheless, the more comprehensively you present your arguments and evidence from the outset, the greater your chances of success.
Patent: Opposition and appeal
The opposition against a patent takes place in two instances:
- First instance: The opposition is filed with the competent authority, either the DPMA or the EPO. There, the patent division or opposition division – generally a panel of three examiners – decides on the admissibility and merits of the opposition. In this phase, you can present extensive arguments explaining why you believe the patent is not valid.
- Second instance: If the first instance decision is not in your favor, you have the option of appealing against the decision. In Europe, this is done before the Boards of Appeal of the EPO. In Germany, the Federal Patent Court is responsible. This appeal procedure is more demanding and cost-intensive. In addition, new grounds for opposition and new evidence are usually no longer admitted to the proceedings, particularly before the Board of Appeal, which is why it is advisable to submit all relevant documents and arguments at first instance.
Costs of opposition proceedings
The costs of opposition proceedings are relatively low. The official fee for filing an opposition in Germany before the DPMA is currently only 200 euros and in Europe before the EPO 880 euros (as of January 2025). These fees are intended to cover the expenses for processing by the office.
Additional costs may arise if a specialized patent attorney is mandated. These vary depending on the complexity of the case and the scope of the necessary research and argumentation. Overall, however, the costs of opposition proceedings remain lower than those of nullity proceedings, where the court costs are linked to the value in dispute and higher attorney fees are incurred.
A timely opposition is therefore not only a quick, but also a cost-efficient way to review and challenge patent rights.
Why professional support makes sense
An opposition against a patent requires sound legal and technical knowledge. Incorrect or belated arguments can significantly reduce your chances of success. An experienced patent law firm can help you develop a sound strategy, present your arguments precisely and represent your interests professionally before the competent authorities.
It is also useful and sensible to work preventively and recognize potentially threatening patent applications at an early stage. Efficient patent monitoring can help you to identify problematic patents and patent applications early on. This involves checking whether patent applications have been filed for inventions that might conflict with your own technology or business area. This measure is particularly important in order to prepare an opposition early and well and to avoid missing opposition deadlines, i.e. to always act with foresight.
Conclusion
Opposition to a patent is an important tool for securing one's own freedom to act and revoking unlawful property rights. With a deadline of nine months after the patent is granted, this procedure offers a cost-effective way of addressing potential infringements at an early stage. To ensure that you recognize them, we recommend patent monitoring by a specialist patent attorney.
A comprehensive argumentation is crucial from the outset in order to maximize the success of the opposition. The support of an experienced patent law firm is essential to master the complexity of the proceedings and to represent your interests in the best possible way.