Sterne Kessler Goldstein Fox

We have extensive experience in developing strategies to help you avoid infringing competitors' patents.  One means of avoiding infringement damages is to have the patent declared invalid during an opposition/cancellation proceeding.  We frequently analyze the validity of a competitor's patents or applications in the US and/or elsewhere.  Once we determine that the patent is invalid, a cost effective way to obtain a similar determination from a court or patent office is to file an opposition or cancellation request.

Oppositions or validity challenges can be filed against patents granted in Europe, Japan, Australia, New Zealand and elsewhere.  We work closely with you to determine the best country in which to file an opposition.  Oppositions must usually be filed within a specific period of time - for example, in Europe, an opposition must be filed within 9 months from the date of publication of the grant of the patent. In Japan, however, trials for invalidation may be filed at any time during the life of the patent.  In the United States, opposition of a patent is only available via inter parties reexamination which is rarely used.  However, legislation is pending in the U.S. to create an expanded opposition system (see below for more information).

Foreign Oppositions

Why file a foreign opposition if you are only concerned about the U.S. market?

• Most important - COST - the cost of an opposition proceeding in a foreign country is significantly less than U.S. or foreign litigation.  Companies are thus using oppositions more and more as a cost-effective offensive tactic.
• Companies often file the same patent application in many foreign countries. While some clients have no interest in foreign commercialization of a product, filing an opposition in Australia, Europe or elsewhere may assist to weaken the competitor's patent position in the United States.
• The defeat of a patent in a foreign country will give a competitor something to consider before engaging in patent litigation in the United States.
• The opposition proceedings may be considered material to prosecution in the U.S. of a related application and would consequently have to be disclosed to the U.S. patent office.
  

United States Oppositions

While a patent opposition system is not currently available in the United States, it is under review by the United States Congress.  In drafting legislation, consideration is being given to the opposition systems of other countries. Given our experience with foreign oppositions, upon passage of U.S. opposition legislation, we will be uniquely positioned to provide our clients an advantage in their opposition of competitor's U.S. patents.