MBM recently received an interesting update from Harrison Goddard Foote detailing lessons from recent EPO Enlarged Board Referrals regarding patent defence. In this update HGF provide guidance to patentees on claiming strategy in opposition defence, noting that:
Patentees facing opposition are well advised to think ahead and at least by the stage of reply to the Summons to Oral Proceedings before the OD endeavour to have on file any claim requests that could be required to save the Patent. Auxiliary claim requests should be structured on the basis that added subject matter, novelty and inventive step can be expected to be considered and decided upon at oral proceedings in that order. Where an OD sees that a simple new request will overcome an issue, particularly where this will permit full discussion of all objections at first instance and/or if the issue is unexpected, then they may well be helpful in offering the Patentee opportunity for further such amendment on the day. Such offer should only be overlooked where it is clear that there can be no commercial worth in the possible amendment. On occasions it may be far better to secure maintenance of a European patent with narrower claims before an OD and appeal rather than see complete revocation.
The full update from HGF can be found at http://www.hgf.com/uploads/Lesson%20from%20recent%20EPO%20enlarged.pdf.