Spotlight on Chemistry & Materials Oppositions

Patent oppositions are challenging technically, legally, and strategically. Our opposition specialists are able to combine relevant technical expertise with in-depth legal knowledge and clear strategic thinking.

Technically diverse and highly experienced, we work across the whole spectrum of chemical and materials innovation. Whether the subject-matter involves dyes or drugs, catalysts or composites, polymers or pesticides, flavourings or fibreglass, we can offer expertise in every sector. The team inspires loyalty and trust, actively demonstrating a deep interest and genuine awareness of our clients’ technologies and commercial realities.

We understand that successful oppositions require not only deep technical expertise and knowledge of the subject-matter under scrutiny, but a forensic understanding of the evolving procedural aspects of the European Patent Office (EPO) process and timelines. We really dig down and question everything, preparing creative and persuasive submissions. We're not afraid to try and challenge the law and help shape future EPO practice.

We handle everything from compact cost-conscious defences through to multi-party 'win at all costs' proceedings. We never forget that oppositions are always part of a broader commercial context. Defending an opposed patent may be crucial to preserve exclusivity for your product or technology. Opposing a patent may be an important part of a 'freedom to operate' strategy, for example to de-risk entry into new markets. Filing an opposition is also a tool that can be used to commercial and strategic benefit, for example in licence negotiations.

Ultimately, whether enforcing or defending your patent, it is desirable to be able to do so in a cost-effective manner which is commensurate with the importance of your IP asset and your budget. Our approach is tailored to ensure we design a strategy that underpins your commercial aspirations.

With sustained success in oppositions and appeals and excellence in advocacy, the team make formidable adversaries. We have an impressive track record in defending our clients’ patents against attacks by competitors, as well as in attacking third parties’ rights. In addition to defending patents we have drafted and prosecuted ourselves, our success rate in patent oppositions is such that companies often transfer responsibility for defending their patents to us during opposition even when we were not responsible for the original drafting or for prosecuting the case.

Our approach to oppositions - trusted advisors, proven performers

Identify your strongest argument

“Like any advocacy situation, when it comes to persuading the opposition division or appeal board, you need to identify the best arguments you have on each issue. You might have 15 in your favour but only five of them will be strong enough to have a chance of winning the point.”
Callum McGuinn.

It's a team effort

"Good teamwork both with our clients and internally can be the key to a successful opposition. In one case, with the client’s intimate knowledge of their field they spotted anomalies in some key data. We then dedicated time and resources internally to fully analyse the data, understand the problems and used this to build a successful legal argument."
Eleanor Maciver

Preparation is key

"Working on an opposition is all consuming, you need to be familiar with every inch of the documentation and know the case inside out. Preparation is key - you need to make sure no surprises are thrown at you.”
Julie Carlisle.

Understand the commercial reality

“You need to really understand how the opposition fits into the client’s broader commercial strategy, and tailor your approach accordingly. Oppositions are filed with a commercial goal in mind, and a “win” can only be judged relative to those commercial goals – they should not be treated as a purely intellectual exercise. This means not only shaping our own submissions, but often trying to influence the direction taken by the other side, to try to steer them towards a space which our client is comfortable with.”
Paul Dunne

Make sure we are on top of everything scientifically

“We do a lot of background research to understand our client’s technology and their work – to make sure we are on top of everything scientifically, understanding the key experimental work and the technological background. We know what is really important to our clients, we know their invention, how it works and how it relates to other people. We make sure we have explored that on a fundamental level.”
Jonathan Wills

A bold and creative strategy is a must

"Oppositions can be hard, worrisome things for clients and a skill I've been able to acquire through experience is to be able to take a step back and genuinely strategise. Sometimes this is in terms of how to tackle the case, but it also includes understanding the broader business context. If a client can share with me and I can understand the real-world commercial realities, that frees me up to be bold and creative. It also really helps to give that deep awareness of what can happen in an opposition and appeal and paint a strategy that maps for multiple years."
Jeremy Webster

Our opposition specialists work across the whole spectrum of chemical and materials innovation. We handle everything from compact cost-conscious defences through to multi-party 'win at all costs' proceedings. We will work with you to understand the real-world commercial context and offer up imaginative and pragmatic strategic advice that achieves the right outcome for your business, at the right cost.

Not sure who to talk to? Please get in touch and I'll be happy to help.

Jeremy Webster, Head of Chemistry

Guide to

Opposition and examination oral proceedings by ViCo

Without the need for extensive travel, it is now simpler for attorneys and their clients to attend the oral proceedings, and without the need to travel, all parties can better prepare for the oral proceedings in the days leading up to the hearing. ViCo proceedings have also been well run by the EPO, using familiar technology very well and very effectivity.

Guide to

Third Party Observations

Third Party Observations (TPOs) provide a mechanism for third parties to file objections and evidence against a pending patent application which, if successful, can result in limitation or refusal of the patent application. Compared to post grant proceedings such as oppositions and revocation actions, TPOs are low-cost and can provide a highly effective tool in clearing the way for your product.

Experts in chemistry & materials technologies

Pharmaceuticals

Patents are a critically important element of protection, alongside Regulatory Protection, for a given drug asset. Our IP experts have extensive experience of drafting and prosecuting such valuable patents to grant for many pharma and life-science clients – from some of the biggest global firms, to the earlier-stage start-ups. We also have substantial expertise in freedom-to-operate searching and due diligence in this area.

Polymers

Our polymer patent experts continue to build on our long history of working with innovators across the spectrum of polymer technology, spanning the manufacture of simple ‘pure’ polymers, the use of high-performance polymers for specialist applications and the development of complex polymer composite materials. We have a huge amount of experience of EPO practice and case law in this area and understanding of the nature of polymer materials themselves.

Advanced Materials

Our IP specialists have a long track record of working with innovators in advanced material science, in both academia and industry, in fields including novel energy storage materials, and nanomaterials such as graphene. From internationally known fibre and fabric manufacturers and world-leading semiconductor developers through to the SMEs and universities pushing the boundaries with 2D materials, our experience covers every aspect of IP legal advice from conception to consumer.

Performance & Industrial Chemistry

As well as a particular focus on polymers and composites, our industrial chemistry IP experts have experience in obtaining, defending and advising on patents for a vast range of other chemical technologies and industries including glass compositions, detergents, cosmetics and personal care products, dyes and pigments, paints and surface coatings, flavours and fragrances, adhesives and sealants, catalysts, and enzyme formulations. Our wealth of experience also covers fields including bulk process chemistry, electrochemistry, oil well bore chemistry and much more.

Consumer Products & Food Technology

In these high-value and competitive sectors, it is important for companies to navigate carefully the challenges of protecting their own innovation while avoiding pitfalls associated with competitors’ IP. Our specialist team of chemistry patent attorneys has the expertise and experience to help address these challenges. The team has substantial experience of obtaining, defending and advising on patents in the consumer products and food and beverage sectors.