Infringement Proceedings | IP Dispute | Bauer-ip | Patent-Trademark-Design Attorney

European Patent Opposition

If you’re looking to oppose a European patent, there are certain procedures that you must follow. Within nine months of the mention of the grant of the European patent in the European Patent Bulletin, you may give notice to the European Patent Office of opposition to that patent. However, notice of opposition shall not be deemed to have been filed until the opposition fee has been paid.

It’s important to note that the opposition shall apply to the European patent in all the Contracting States in which that patent has effect. Additionally, opponents shall be parties to the opposition proceedings as well as the proprietor of the patent.

If you provide evidence that in a Contracting State, following a final decision, you have been entered in the patent register of such State instead of the previous proprietor, you may replace the previous proprietor in respect of such State at your request. However, the previous proprietor and the person making the request shall not be regarded as joint proprietors unless both so request.

Opposition may only be filed on the grounds that the subject-matter of the European patent is not patentable under Articles 52 to 57, the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, or the subject-matter of the European patent extends beyond the content of the application as filed.

If the opposition is admissible, the Opposition Division shall examine, in accordance with the Implementing Regulations, whether at least one ground for opposition under Article 100 prejudices the maintenance of the European patent. During this examination, the Opposition Division shall invite the parties, as often as necessary, to file observations on communications from another party or issued by itself.

If the Opposition Division is of the opinion that at least one ground for opposition prejudices the maintenance of the European patent, it shall revoke the patent. Otherwise, it shall reject the opposition.

Each party to the opposition proceedings shall bear the costs it has incurred, unless the Opposition Division, for reasons of equity, orders, in accordance with the Implementing Regulations, a different apportionment of costs. The procedure for fixing costs shall be laid down in the Implementing Regulations.

Notice of opposition shall be filed in a written reasoned statement. The notice of opposition shall contain particulars of the opponent as provided in Rule 41, paragraph 2(c), the number of the European patent against which opposition is filed, the name of the proprietor of the patent and the title of the invention, a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based, as well as an indication of the facts and evidence presented in support of these grounds. If the opponent has appointed a representative, particulars as provided in Rule 41, paragraph 2(d) must be included.

Trademark Opposition

EU trademark application and Czech trademark application can be opposed based on validly filed notice of opposition provided, all formality and substantive argumentation are fulfilled within a period of 3 months following the publication of the application.

The notice of opposition has to contain reasons and has to be supported by evidence enabling its examination. The Office shall not consider any amendments to the opposition or any evidence submitted in support of the opposition made after the expiry of the time-limit of 3 months as mentioned above.

The notice of opposition may be filed on the basis of one or more earlier rights provided that all of them belong to the same opponent.

The opposition may be based on a part or all of the goods or services in respect of which an earlier right is protected or in respect of which is applied for and may relate to a part or all of the goods or services in respect of which an application is filed.

The opposition shall contain:

an indication of the goods or services to which the opposition relates or indication that the opposition relates to all of the goods or services stated in the application;
identification of the opponent’s earlier rights on which the opposition is based; and
an indication of the goods or services on which the opposition is based or indication that the opposition is based on all of the goods or services protected by the opponent’s earlier rights.

Opposition fee must be paid within the same time limit for filing a notice of opposition.

Bauer-IP can prepare a notice of opposition, including substantive argumentation, and represent the opponent during the proceeding. In particular, we will draft and file reasons and supported evidence(s) enabling the examination in oppositionproceeding.

We will meet all formal requirements as well.

Observation by a third party is also possible.

Trademark Invalidation

Czech trade mark or EU trade mark can be invalidated in the proceedings initiated upon a request for invalidation is filed by third party.

The Office shall declare the trade mark invalid in the proceedings initiated upon application filed by third party, where the trade mark has been registered contrary to the provisions of absolute ground of refusal or where the trade mark application was not filed in good faith.

Where the trade mark has been registered contrary to the provisions, it shall not be declared invalid if, in consequence of the use which has been made of it, it has, prior to the initiation of the proceedings, acquired a distinctive character in relation to the goods or services for which it is registered.

The Office shall declare a trade mark invalid in the proceedings initiated upon application of the person having earlier rights.

The conditions for claiming the earlier rights shall be fulfilled already on the date of filing of the trade mark application or on the date of the right of priority of the later trade mark.

Where the trade mark is declared invalid, it shall be considered as never registered.

A trade mark may be declared invalid even after its proprietor surrendered the trade mark or after the trade mark has lapsed or has been revoked.

Where the ground for invalidity exists only in respect of some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.

We are offering drafting the request for invalidation and representation in the invalidation proceeding.

Trademark Revocation

Both, Czech and European trademark can be invalidated based on a request for invalidation.

The proceedings initiated upon the request is filed by a third party, where the trademark has been registered contrary to the legal provisions or where the trademark application was not filed in good faith.

The Office shall revoke the trade mark in the proceedings initiated upon application filed by third party if:

within a continuous period of 5 years prior to the application for revocation, the trade mark has not been put to genuine use in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non–use; the use which commenced or which was resumed following 5 years of non–use of the trade mark within 3 months preceding the filing of the application for revocation shall be disregarded where the preparations for the commencement or the resumption of the use occurred only after the proprietor becomes aware that the application for revocation may be filed;
in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered;
in consequence of the use made of the trade mark by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

In a proceeding initiated upon application filed within 6 months following the date on which the court decision declaring the use of a trade mark to be unfair competition becomes final, the Office shall revoke the trade mark. The time limit for filing the application for revocation of the trade mark cannot be extended or restituted.

The application for revocation of a trade mark has to contain reasons and shall be supported by evidence enabling its examination.

The application for revocation of a trade mark may relate to a part or all of the goods or services for which the trade mark is registered.

The application for revocation of a trade mark shall identify the goods or services to which it relates or information that it relates to all goods or services.

We can prepare the request and represent the client before CZ PTO as well as EUIPO.

Patent Applications / Patents in the Czech Republic

Observation by a third party

Following publication of an invention application, any person may submit observations on the patentability of the subject–matter; the Office shall take such observations into consideration when carrying out the full examination of the application.

On behalf of the party of interest, the Bauer-IP may prepare and submit observations concerning the patentability of the invention after the patent application is published.

However, the person who have submitted observation does not become party to the procedure with respect to the application. However, the applicant shall be informed of any observations submitted.

Revocation

Bauer-IP can prepare and file a request for revocation of a patent with the Czech Patent Office. The request may be filed even after the patent has lapsed, but proof of legal interest is necessary.

The Office shall revoke the patent, if it is ascertained subsequently:

that the invention did not meet the conditions of patentability;
that the invention is not disclosed in the patent so clearly and completely, to be carried out by a person skilled in the art;
that the subject–matter of the patent extends beyond the content of the invention application as filed or the subject–matter of the patents granted on the divisional application extend beyond the content of the invention application as filed, or the extent of the protection arising from the patent was extended;
revocation upon the request of the authorised person.

Partial revocation is available and it will be carried out as an amendment of the claims. Bauer-IP can also prepare a request for an amendment to limit the scope of protection by the Patent Office.

Revocation of a patent shall have retroactive effect to the date on which the patent became valid.

The request for revocation of a patent may be filed even after lapse of the patent if the person filing the request can prove a legal interest.

For industrial or utility model, please contact us for concerning the costs and representation by Bauer-IP.

Infringement - Litigation

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Request at Czech Patent office – Declaratory proceedings

Bauer-IP can prepare a request for a decision to determine whether the production process, the given products, their exploitation or their presence on the market fall within the scope of the patent.

Civil proceeding

Nullity/counterclaim for revocation

Bauer-IP can prepare and file a request for invalidity of a patent. The leading attorney may further ask a court to suspend a proceeding on infringement until the Patent Office decides.

Claims resulting from imminent or existing infringement of industrial property rights acquired to the prejudice of their beneficiary fall within the exclusive competence of the Municipal Court in Prague.

The leading attorney can initiate proceedings at the request either the patent owner or another person entitled to use the rights.

The system for patent revocation and infringement is bifurcated. The revocation is entrusted to the Czech Industrial Property Office and infringement is entrusted to Municipal Court in Prague.

Remedies

Right to information, preliminary injunction, recall of products from the market, permanent removal, destruction (products and tools), pecuniary compensation, damages.

Disputes before Unified Patent Court

The Unified Patent Court is a specialized court system established to handle disputes related to European patents. It is composed of a Court of First Instance and a Court of Appeal, and its decisions have effect throughout the territories of its member states.

The Unified Patent Court provides a centralized forum for resolving patent disputes in Europe, which allows for greater efficiency, consistency, and predictability in the adjudication of patent disputes. It also aims to reduce the cost and complexity of patent litigation by providing a streamlined procedure for resolving disputes.

The jurisdiction of the Unified Patent Court extends to both infringement and validity disputes, and it is empowered to grant injunctions, damages, and other remedies. It also has the authority to revoke European patents and to declare them null and void.

Parties can bring cases before the Unified Patent Court by filing a claim with the Court of First Instance, which has exclusive jurisdiction over patent disputes in its member states. The proceedings before the Court of First Instance are conducted in accordance with the Unified Patent Court Agreement and the Rules of Procedure.

Appeals from the decisions of the Court of First Instance are heard by the Court of Appeal, which has its seat in Luxembourg. The Court of Appeal is composed of judges from the member states of the Unified Patent Court, and its decisions are final and binding.

Overall, the Unified Patent Court represents a significant development in the European patent system, providing a centralized and specialized forum for resolving patent disputes in a more efficient, consistent, and cost-effective manner.

Infringement and IP dispute

Patent

Trademark

Design or Utility Models