Agile IP have recently helped Smart Terminal supplier, JAOtech Limited, defeat a competitor’s European Patent Application which had threatened to hinder its worldwide sales.
Just over two years ago, JAOtech received a threatening letter from lawyers mentioning a competitor's UK Patent for a hospital entertainment system. The competitor had been contacting JAOtech’s client base with a view to securing sales in return for a licence, provided of course they bought the competitor's product instead of JAOtech's.
JAOtech’s Chief Operating Officer, Graham Grover, came to Agile for assistance. He was adamant that the competitor’s system related to known technology and the patent should never have been granted. Agile’s Rob Sayer led the team that conducted research into finding proof that the technology was indeed well known before the competitor’s patent filing and located a number of relevant documents.
Since it was clear that the competitor’s UK Patent was weak, the possibility of formally revoking the patent was considered. Whilst a successful revocation action would achieve legal certainty, there was a cost implication that prompted a more cost-effective and tactical approach. This was to present evidence of the prior systems to the European Patent Office (EPO) who had not yet granted the competitor’s European Patent Application. Such ‘third party observations’ are permitted in many jurisdictions whilst an application is pending and are a useful way of bringing new information to the Patent Office's attention.
Following a recent hearing at the EPO’s Munich base, the EPO rejected arguments put forward by the competitor and formally refused the European Application based on the evidence Agile and JAOtech had uncovered.
This relatively simple approach left the hard work to the EPO and allowed the client to refer customers to the ongoing proceedings, which could be followed using the EPO’s online database. More importantly, the very public failure of the competitor to secure a European patent now leaves the enforceability of the rights it has acquired elsewhere very much in question.