Patent Oppositions in the European Patent Office

Darrin Shaya, Black & Decker

10 November 2009

Oppositions – enhance competitive position

Strategy

Offensive Defensive

Remove ObstaclesIncrease cost base

Customer/licensee uncertaintyNegotiation use

Unsafe to sell to customerWar Chest

Reaction to litigation threatDelay National Proceedings (?)

Negotiation use

Oppositions – enhance competitive position

Prior Art collation /

management

IP budget allocation

Competitor Watch

Forum Shopping

Tactics

Oppositions – enhance competitive position

Lose Faith in IP?

Glass Houses & Stones

Time &Resources

ExhaustDefences

/ Art

Cleara Path

forCompetitor

Risks

Oppositions – enhance competitive position

Costs

NationalProceedings

VsOpposition

Use weaponsor keep inreserve

Time scales

Need to contrast

Oppositions – enhance competitive position

• Real examples:

• Global competitor A

• Escalating infringement accusations - $80m+ risk

• Require freedom to use and removal of $ risk

• Multi-jurisdictional litigation threatened

• War Chest approach & oppose their other patents

• Free X-licences

Oppositions – enhance competitive position

• Competitor B• An acquisition target.• IP valued by B at 10s of $m• Prior to due diligence, oppose B’s key

patents• IP valuation significantly reduced• Overall purchase price reduced by $7m• Zero risk

Oppositions – enhance competitive position

• Competitor C

• Small company poaching staff and taking confidential information

• Using outside counsel for all IP

• Oppose a raft of C’s patents

• C’s costs ramp up

• C in administration

Oppositions – enhance competitive position

• Aware of all competitor products & pricing

• Aware of their patents, too ?

• Clearance process ?

• Competitor patents could prevent your sales, but their prices cannot

• Oppositions complimentary to (or instead of) clearance