Healthcare technology and EPO oppositions: why your dependent claims matter

Healthcare technology and EPO oppositions: why your dependent claims matter

Advances in diagnostic devices like X-ray machines and MRI scanners, as well as prosthetic implants and surgical tools, has led to a boom in patenting in the field of medical technology. Patent filings in this field are increasing year-on-year, with the number of patent applications filed at the EPO exceeding all other sectors in all but one of the last 10 years. Reflecting the value of these healthcare innovations, EPO oppositions in the sector are up too. Meanwhile, the EPO has been streamlining its opposition and appeal procedures. But, is there more patentees could be doing to secure patents that are best placed to withstand an opposition at the EPO?

The EPO opposition procedure

An opposition can be filed against a granted European patent within 9 months of its grant. Although other grounds can be used, the opposition will usually contain attacks on novelty and inventive step. More often than not, these attacks are based on new documents which weren't considered during examination.
As part of their defence, the patentee will normally present fall-back positions narrowing the claims in one or more auxiliary requests. There are three good reasons to focus these fall-back positions on the dependent claims of the granted patent. First, clarity cannot be challenged when amending to a combination of a granted independent claim and granted dependent claim. Secondly, any new facts and evidence submitted by the opponent in reply to an amendment to a dependent claim will be treated as late-filed and will not be admitted into the proceedings unless considered prima facie relevant - the opponent should have considered their position on the dependent claims when they filed the opposition. Lastly, amendments to granted dependent claims are much more likely to be admitted at the opposition hearing than other amendments, and the realisation that further amendments are needed might only become apparent at the opposition hearing itself when a point goes against the patentee.    

Appealing an EPO opposition decision

The primary object of the EPO's appeal process is to review the decision under appeal, and the opportunity to amend the claims is extremely limited. For the patentee, this means the focus of the appeal proceedings will be on defending the claim sets of the requests that were submitted during the opposition proceedings. For the reasons already mentioned, it's most likely that these requests will be based on the dependent claims of the granted patent.  

Dependent claims can save the day

Before grant, it's easy to overlook the importance of the dependent claims in a European patent. To get the case granted the independent claims take the limelight, with the dependent claims mere bit-part players. However, the dependent claims can come to the fore in EPO oppositions and appeals, both on their own and combined with one another. As well as those which define features of the invention further, potentially useful dependent claims in an opposition or appeal might limit the invention's technical field or its use in a way that focusses the claim on the most commercially important areas yet survive a particular novelty or inventive step attack advanced by the opponent. And, as already mentioned, the dependent claims offer by far the best fall-back positions to use when defending your patent.

So, what one thing should you do?

It's not possible to predict whether your European patent will be opposed, or how exactly it will be attacked. But you can be prepared to defend your position fully by not only introducing further features of the invention in your dependent claims but by also ensuring you have some dependent claims that limit the scope of your protection to your most important field or use. The time to consider this is as part of your drafting strategy at the very beginning of the patenting process. That way, if your European patents are attacked, you'll be set up to defend them the best you can and where they confer the most value for your business.  

Please contact Gareth Fennell or your usual Kilburn & Strode advisor to discuss any further questions.


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