Opposition and Nullity Action

With EHF at your side you are equipped with the necessary experience and expertise for the particular requirements and challenges involved in attacking third-party property rights or defending your own property rights.

Not every patent is set in stone

Do you have the impression that your competitor was wrongly granted an IP right? Perhaps you are right and your competitor is only holding a bogus right. We help you to recognize bogus and flimsy IP rights and take action against them. If disruptive property rights are identified at an early stage, an opposition can be cost-effectively filed. However, a third party patent can also be challenged later with a nullity action.

Conversely, one of your patents can also be attacked. Whether it can withstand attack depends firstly on the prior art cited, but also on the identification of deficiencies in the grounds advanced by the opposing party and a convincing argumentation as to why the claimed idea involves sufficient inventive content.

Opposition proceedings

An opposition against a European or German patent may be filed within nine months of publication of the grant. The prior art must be indicated, on the basis of which lack of novelty or lack of inventive step is to be asserted. Perhaps you already know a good document or had a similar product in the market before the opponent's patent application was filed? If not, our in-house search team can perform a database search. The utmost care is required here, because in opposition proceedings it is important to substantiate every claim feature in the prior art.

An advantage of opposition proceedings against a European patent is that the result is effective for all validated countries.

Nullity action

The purpose of nullity proceedings, similar to opposition proceedings, is to establish that a patent has been wrongly granted in whole or in part. Unlike opposition proceedings, its initiation is not subject to a time limit. However, the associated costs are significantly higher. Nullity proceedings are mainly used when a lawsuit for alleged patent infringement has been filed or threatened by the patent owner.

In the context of European patents, it is important to note that after the opposition period has expired in the validated countries, these can only be challenged nationally with nullity actions, so that an invalidation is only legally effective for the respective country. Although invalidation in one country can have a signalling effect for other countries, there is no legal certainty in this respect. This is an advantage of opposition proceedings against a European patent: the result is effective for all countries. 

Nullity action before the UPC

In the future, under certain conditions, it will also be possible to bring nullity actions against European patents that are effective in all countries. This is the task of the “Unified Patent Court” (UPC), the common patent court of the European Union, which is expected to commence its work in early 2023.

What about non-EU countries?

You are an internationally operating company and foreign patents in Asia or America are just as important for your business? While EHF cannot represent you in court in these regions, novelty and inventive step are – at least in the essential points – global criteria. Here EHF can serve as a central contact to coordinate proceedings and arguments and, together with our partner law firms around the world, help you to obtain your rights there as well.

EHF – an excellent choice

We determine and analyze the situation in order to develop an optimal strategy with you. We focus on the prospects of success and carefully weigh the cost-benefit risk. We advise you on alternatives in order to avoid legal proceedings. We keep a close eye on economic efficiency in balance with a legal assessment of the situation.

Numerous opposition and nullity proceedings around the world have left their mark.

Our many experienced attorneys are at home in different technical fields and provide you with the best possible technical and legal expertise. The members of our in-house search team can assess which document has the potential to be a “show-stopper” as early as the search stage.

With our search team and our experienced patent attorneys, we always manage to meet your requirements. Even when time is tight.

We work closely with law firms abroad that we know we can rely on, and that we suggest depending on the case and the technology. We provide you with a central contact person who ensures that your arguments are consistent worldwide. If an infringement suit is filed, we will organize and coordinate your defense.

We work closely with you and, if necessary, with our partner law firms abroad when attacking a third-party property right or defending your own property right. We place great emphasis on good teamwork to achieve maximum success.

If legal validity proceedings do not only affect the domestic market, we work closely with experienced and renowned partner law firms in all important industrial locations.

Get in touch!

    Epping Hermann Fischer
    Patentanwaltsgesellschaft mbH
    Schlossschmidstr. 5
    80639 Munich
    Germany