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Proceedings Before the European Patent Office

A Practical Guide to Success in Opposition and Appeal Marcus O. Müller, Boards of Appeal of the European Patent Office, Munich, Germany and Cees A.M. Mulder, European Patent Attorney, Maastricht University, the Netherlands
Experienced practitioners will find that the detailed case law citation adds depth to their knowledge. The practical advice and the illustrations from case law provide patent lawyers and patent attorneys with invaluable guidance on specific procedural and substantive questions, as well as on how to act properly in opposition and appeal proceedings. Proceedings Before the European Patent Office: A Practical Guide to Success in Opposition and Appeal is an indispensable tool in the armoury of all patent practitioners.
Extent: 200 pp
Hardback Price: £75.00 Web: £67.50
Publication Date: 2015
ISBN: 978 1 78471 009 5
Availability: In Stock
Paperback Price: £55.00 Web: £44.00
Publication Date: 2015
ISBN: 978 1 78471 530 4
Availability: In Stock
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  • Law - Professional
  • European Law
  • Intellectual Property Law
Proceedings Before the European Patent Office: A Practical Guide to Success in Opposition and Appeal provides a better understanding of how opposition divisions and boards of appeal approach the cases before them. The book discusses such topical issues regarding how to:

- draft and prosecute patent applications to avoid problems later on
in opposition and appeal
- properly attack or defend a patent
- react if the patent is amended
- argue in case of late filings
- act in oral proceedings.

The Rules of Procedure of the Boards of Appeal are also discussed including their influence on opposition proceedings. This insightful book focuses on the practical aspects of the proceedings and contains numerous ‘practical advice’ sections and ‘example cases’.

Experienced practitioners will find that the detailed case law citation adds depth to their knowledge. The practical advice and the illustrations from case law provide patent lawyers and patent attorneys with invaluable guidance on specific procedural and substantive questions, as well as on how to act properly in opposition and appeal proceedings. Proceedings Before the European Patent Office: A Practical Guide to Success in Opposition and Appeal is an indispensable tool in the armoury of all patent practitioners.

‘The book gives a new approach to opposition and appeal. It starts with setting out the consequences of choices made during drafting the patent application for opposition and appeal. It provides arguments both for proprietor and opponent, for defence and attack. The topics are illustrated by very instructive examples, often taken from case law. The book is also a good introduction into the art of filing requests before the opposition division and the board of appeal. Warmly recommended.’
– Derk Visser, European Patent Attorney, Of Counsel, Patent Attorney, EIP, London, UK and Lecturer at CEIPI, Strasbourg, France

‘Opposition proceedings and appeal proceedings in opposition cases are quite different from prosecuting an application at least in two respects: Proceedings involving numerous procedural aspects are contentious and in many cases, there is already a conflict on the market increasing the commercial interest in the case. Proceedings Before the European Patent Office: A Practical Guide to Success in Opposition and Appeal keeps the promise made in its title and helps the practitioner to avoid procedural pitfalls. The authors come from different backgrounds and the book profits from their different perspectives. Marcus O. Müller is a member of the Boards of Appeal whereas Cees A.M. Mulder is a European Patent Attorney and both have profound experience in teaching the EPC. Two features of the Guide deserve to be highlighted. First, the emphasis on the interrelations between the different stages from drafting the application until the oral proceedings in opposition appeal proceedings with the conclusion that failures and omissions at an early stage can possibly not be repaired later on. Second, the numerous examples mostly on the basis of the relevant case law and the practical advices complementing the explanation of the procedural problems arising at different stages of opposition and appeal proceedings. In this way, the Guide illustrates the rules of the game before opposition divisions and boards of appeal, and may help the users to avoid unpleasant and dangerous surprises.’
– Rudolf Teschemacher, Bardehle Pagenberg, Munich, Germany

‘From the trainee assisting on their first opposition to the seasoned patent attorney, Messrs Müller and Mulder have written a book relevant to anyone interested in contentious IP proceedings. Covering every aspect of opposition and appeal law and procedure, and supported by relevant and thoughtful examples throughout, even in relation to the intensely practical considerations surrounding oral proceedings, this is a welcome augmentation to current texts on European Patent Law. Essential reading for every practitioner!’
– Gwilym Roberts, European Patent Attorney and Partner, Kilburn and Strode LLP, UK

‘The book illustrates, in a very instructive manner, the proceedings before the European Patent Office (EPO), specifically with regard to opposition and appeal procedures. It guides the reader on what to avoid when drafting and prosecuting European patent applications, and will help practitioners, both in industry and in the legal profession, to take appropriate account of the most recent case law developments of the EPO with regard to opposition and appeal proceedings.’
– Heinz Goddar, University of Bremen, Germany

‘We are now blessed with a whole academia of intellectual property that delight in studying the issues arising in big court decisions, but much less is written to help agents make inventions become valid patents that will be valuable business assets. Well done Edward Elgar for bringing us something so usable.’
– Solo IP
Contents: 1. Introduction 2. Drafting and Prosecution Stage 3. Opposition Stage 4. Appeal Stage - Inter Partes Appeal 5. Appeal Stage - Ex Parte Appeals 6. Further Issues 7. Conclusion Acknowledgement Index