Case where a medium-sized Japanese enterprise was uncommonly involved in objection filed in EPO.

 

A medium-sized Japanese chemistry manufacturer, which invented a special chemical substance, received many invention awards in Japan, and obtained patents in Japan and in many overseas countries.

A Chinese competitor possessed similar technologies and exported similar products (which infringed on the patent) to European countries.

Subsequently, a large European enterprise selling the abovementioned Chinese products filed an objection after the patent was effectively approved by the European Patent Office (EPO). The evidences thereof were troublesome.

Most of the evidences were sworn affidavits produced in China which certified that “it was open to the public”.

For example, there was a record of testimony stating that “I saw this chemical substance at an exhibition held in Hong Kong” with a seal affixed by the person in charge of an administrative agency in Hong Kong.

More than twenty of such evidences were submitted to Objection Division of the EPO.

At the time, I was very embarrassed when I received copies of such evidences. I believe that Objection Division of the EPO were more embarrassed.

Furthermore, such evidences were continuously and additionally submitted off and on. Objection Division of the EPO holds an oral hearing for most cases.

It was decided that an oral hearing would be held for this case. Therefore, we started a “training camp” one week prior to the oral hearing with a department manager of the company holding the patent, an EP patent attorney, and an attorney-at-law in Dusseldorf to prepare for the oral hearing.

The oral hearing started at 10:00 a.m. at the trial court in EPO building located in Munich. After lunch time, it continued until 4:00 p.m.

The oral hearing was closed at 4:00 p.m. and the trial decision was rendered at 5:00 p.m. Fortunately, we won the lawsuit without amendment of claims.

 

The inquiry panel of the EPO, which consists of three persons, overruled the objection because the evidences like above did not have the rationality of proof of facts and admissibility of all evidences was denied.

It seemed that this was the first case for the EPO and I heard that it was widely known for a while in the EPO.

 

The matter we learned from this case is that “evidences” like above become easily effective with a seal of an officer of any administrative agency in China. We had an inclination to think in a negative manner as the lawsuit proceedings went on after the objection was filed. We sometimes had discussion out of concern that “we will be unable to win the case.”

The EPO rendered a fair judgment eventually and our concern ended up being a groundless fear. We learned the importance of coping with any situation whatsoever with a positive way of thinking at any time.