Observations by third parties are effective tools because they allow anyone to argue and file evidence so as to limit the scope of protection of applications for industrial property rights or prevent them from being granted. It is advisable to follow up the observations by third parties with the surveillance of the application against which such observations were filed so as to evaluate their effectiveness and possibly intervene again if the situation so requires. The observations, unlike the oppositions, can also be filed anonymously.
Patents
Observations by third parties at the European Patent Office (EPO), at the World Industrial Property Organization (WIPO) and at national Patent and Trademark Offices – where the law so provides – are very useful to prevent the grant of competitors’ patent applications or limit their scope of protection.
Trademarks
Observations by third parties are filed e.g. when the trademark is in violation of absolute grounds (e.g. trademark consisting exclusively of the common name of a product, a geographical indication). Filing them may therefore be useful when there is an interest that a certain sign, e.g. commonly used in trade, does not fall within the exclusive rights of a single entity .
Opposition is an administrative procedure aimed at having an industrial property right revoked or limited, and can be filed within a specific period of time. In some countries, an opposition can be filed before the industrial property right is granted. Opposition is an essential tool for all companies wishing to strategically protect their industrial property rights and make their investments fruitful.
Patents
Patent opposition is available in many countries/regions around the world as shown in the table. We can represent clients in oppositions before the European Patent Office, where the deadline for filing is nine months from the date of grant of the patent. The grounds for opposition are lack of novelty, lack of inventive step, added subject-matter, insufficient disclosure and exclusion from patentability of the subject-matter of the patent. Arguments and any prior art on which they are based must be filed by the nine-month deadline. Facts and evidence submitted after such deadline are deemed to be late-filed and their admission in the proceedings is at the discretion of the Opposition Division.
Trademarks
Opposition against third parties’ trademarks is possible in several countries worldwide. We assist our clients in opposition proceedings in Italy and in the European Union and, through our network of agents, in any overseas country that provides for such procedure so as to prevent third parties from taking advantage of others’ investments to establish themselves in the market. Deadlines, grounds and procedures for opposition vary according to local jurisdictions.
Designs
There are no opposition procedures against the registration of designs, at least at the Italian and Community levels. However, invalidation of community designs after registration may be requested through an administrative procedure before the EUIPO, in which we can act as representatives of our clients. Invalidation of community designs is an important tool in effective commercial competition strategies to defend the validity of our clients’ designs or to invalidate the design rights of some competitors. Furthermore, the time frame for this procedure, which takes place completely in writing, is rather short (one year or so for each instance). Through our network of agents, we can also assist our clients in any overseas country that provides for invalidation and opposition procedures for designs.
Plant varieties
At the European level, the grant of a Community variety right may be opposed to as long as the relevant application is pending. Furthermore, once the right is granted, it may only be canceled through an action at the competent Community Office (CPVO). In both cases, we can proceed directly on behalf of our clients. Furthermore, also in this case, with our widespread network of agents, we can intervene with similar activities (in accordance with the specific procedures provided for in each country) in other foreign territories.
