Table 10 Options for (i) contesting patents and patent applications and (ii) and joint agreements
Action | Description | Pro | Con |
|---|---|---|---|
Filing third party observations | Providing relevant information (e. g. prior art references) to the patent office before grant | • Very low cost and low effort if relevant prior art is already known • Anonymous filing may be possible • Offered at least with EPO, USPTO, UKIPO, and CIPO; • Outcome known before granting (on non-granting) of the patent | • Narrow time frame (between publication of the application and grant) • Outcome unclear • May not be possible in some jurisdictions |
Filing an opposition | Challenging the patent in post-grand proceedings before the patent office | • Costs comparatively low compared to a nullity suit • Patent offices that have an opposition period include EPO (9 months), JPO (6 months), IP Australia (3 months), and others; • For bundle patents (like EP, even with opt-out regarding UPC) this affects the whole bundle | • Needs to be filed during the defined post-grand opposition period • Outcome unclear • Costs comparatively high (compared to third party observations) • Usually takes years until final decision |
Filing a nullity suit | Challenging the patent before a local court or before the Unified Patent Court (UPC) | • Should always be possible, in all jurisdictions and (with possible exceptions) during the whole lifetime of the patent | • High costs • Outcome unclear • Usually takes years until final decision |
Cooperation | Negotiating a cooperation between two or more parties | • Terms of the cooperation may be geared towards the common interests of the parties | • May require extensive negociations • In an unbalanced situation, it may be challenging to come to an agreement |
Cross-licensing | Two (or more) parties agree to exchange licenses for the use of each other's patented technologies | • Low-cost (no fees for courts, etc.) | • Requires that both parties hold patents • May be considered unsatisfactory when only one of the exchanged patents is thought to be invalid |
Licensing | Obtaining a license from the patent owner for the use of the patented technology | • Well-defined costs | • Unsatisfactory when the patent is thought to be invalid |
No-attack-agreement | Obtaining permission to use a patented technology for free, in return for the assurance that no invalidating action against the patent is taken | • Use is for free | • Requires convincing arguments that the patent would be invalidated if challenged • Usually silently negotiated between two parties |