Nullification of a patent in opposition
Federal Mogul is an American multinational. The company is a global supplier of products for the automotive, rail and aerospace industries. Federal Mogul, already an Arnold + Siedsma client since the 1990s, was in need of our assistance. They wished to oppose the patent on an competitor’s invention.
Valeo, a major competitor of our client Federal Mogul, claimed that it had produced an invention in the field of windscreen wipers. It involved an adapter for connecting a windscreen wiper blade to a windscreen wiper arm. The adapter was provided with a double-click system, i.e. an additional protection to attach the windscreen wiper blade firmly to the arm.
Arjen Hooiveld (Amsterdam office) and Martin Luten (The Hague office), both patent attorneys:“Federal Mogul needed our assistance to oppose the patent on Valeo’s invention. According to our client, Valeo’s invention, for attaching a windscreen wiper blade to a windscreen wiper arm by means of a double-click system, was not novel and was certainly not inventive. Federal Mogul wanted the freedom to be able to use this technology in the future.
In order to safeguard the future commercial interests of our client, opposition proceedings were instigated against Valeo to nullify the patent. As patent attorneys, we submitted arguments and documents for Federal Mogul in the written proceedings prior to the oral proceedings to demonstrate why the patent should never have been granted to Valeo.
So far, this was not an unusual case. It only became unusual during the oral proceedings with the Opposition Division of the European Patent Office. It was just as well that we did not know at nine o'clock in the morning that the oral proceedings would last almost twelve hours.
The oral proceedings took so long because Valeo was given the opportunity by the Opposition Division to reword the patent in each case in response to our nullification arguments. Thanks to our thorough preparation, there were no substantive surprises for our client during the course of the oral proceedings. On the contrary, we still held a trump card which visibly surprised both Valeo and the Opposition Division during the oral proceedings.
During our preparation for the oral proceedings, we discovered that the double-click system on which Valeo had obtained the patent was not at all inventive. We in fact found a nullifying publication, an earlier patent specification which, it should be noted, was already in Valeo’s file and had previously been dismissed by Valeo and the European Patent Office as irrelevant. This publication actually seemed very relevant to us in the light of the arguments put forward by Valeo prior to the oral proceedings. We were also able to convince the Opposition Division of the significance, so that the Opposition Division had no option other than to conclude that Valeo’s patent was perhaps novel, but was certainly not inventive.
At a quarter past eight in the evening, Valeo seemed to be beyond salvation and, after almost 12 hours of pleading, the victory was sealed and the patent was nullified.”
Arjen Hooiveld and Martin Luten: “With a major client such as Federal Mogul, it is important not to try to do everything on your own, but to form a team. Together we meticulously examined and unravelled the case. We devised a strategy and looked for strong arguments to knock down the patent. We also worked closely with Federal Mogul to obtain the required technical input to underpin the arguments.”
Arjen Hooiveld and Martin Luten: “Is important to be well prepared and not to be too easily satisfied. You need to examine your arguments critically in advance. In this way, you can prevent surprises during the oral proceedings.
Because we investigated the case very thoroughly, we recognised the relevance of an earlier patent specification, which, it should be noted, was already present in the file and had been overlooked by Valeo and the European Patent Office. So we were able to prove in the oral proceedings that Valeo's invention was not inventive and that Valeo's patent had therefore been unlawfully granted.