News

Offensively Defending EP Patents During Opposition – The Hydra Approach

Posted: May 21, 2024

When Professional Representatives before the EPO defend a patent in opposition proceedings, they are not always aware of the fact that at least in two countries, Germany and Austria, the patent can additionally be defended on a national level (if within 10 years from the filing date) by branching off a utility model. When drafting claims for the utility model, they are only bound by Art. 123 (2) EPC, but not Art. 123 (3) EPC. Therefore, branching off a utility model may be the only chance of escaping from the inescapable trap, at least nationally in Germany and Austria.

It may well be that the European patent survives the opposition only slightly amended; in this case, the patent proprietor could branch off a valid utility model, and is in a better position than before the opposition. We may call this strategy the “Hydra Approach,” after the Hydra, a serpentine water monster with many heads in Greek mythology. For every head chopped off, the Hydra would regrow two heads.

The approach in practice

Even though the utility model may only run for a short period of time- since it expires 10 years from the filing date- it may well be a big disturbance for the opponent (potential infringer). Since branching off utility models during opposition is only possible in Germany and Austria, the question arises whether it is fair that the patent proprietor has the right to create a further protection right post-grant. I would suggest that it is fair, since the opponent is usually in a more favourable position than the patent proprietor. For example, the opponent can attack the European patent in European opposition proceedings, then before the Boards of Appeal of the European Patent Office, and then nationally, e.g. in nullity proceedings before the German Federal Patent Court, and finally before the German Federal Supreme Court. The opponent therefore has four possibilities of convincing a deciding body to revoke/nullify the patent.

If the Boards of Appeal revoke the patent, then the patent is “dead” in all European Patent Convention (EPC) countries- in fact, it has never existed. There is no possibility of reviving the patent nationally. The only option that allows protection to continue on a national level is to branch off a utility model.

Utility models

Branching off a German utility model during opposition may also be useful in the following situations: The client wants to have immediate protection in Germany because they think that an infringement takes place. Branching off a utility model allows the patent proprietor to tailor claims directed to the potentially infringing product. Branching off a utility model may be an alternative to filing a divisional patent application (which is not possible during opposition). Branching off a utility model may be useful since it has reduced prior art: An Art. 54 (3) EPC application is only prior art according to the “prior claim approach”. A document published by the inventor within six months from the priority/filing date is not prior art. A prior use outside Germany and any oral disclosures do not form part of the prior art either. Since the prior art is reduced, broader claims can be obtained for the utility model.