Suspending a Patent Opposition Pending Examination of Divisional Application

janssen pharma.jpgApplication for patent IL 253468 to Janssen Pharmaceuticals is a divisional application of IL 206448, filed under Section 24 of the Law. The parent application is being opposed by TEVA.

TEVA has asked that the Opposition against the parent application be frozen for 18 months from when the Opposition was submitted, in accordance with Circular 020/2012 which regulates oppositions to allowed patents where there is a pending divisional application.

The Opposer claims that there is an overlap between the invention claimed in the parent and that claimed in the divisional.  Thus it is reasonable to assume that if an Opposition is filed against the Divisional application, similar factual and legal issues will arise, and the expert witnesses will likely be identical. Consequently, freezing the opposition to the parent application until the examination of the divisional application is completed will contribute to the efficiency of both the current proceeding and the expected future proceeding.

TEVA further claims that if the current opposition is not frozen, the Applicant will obtain an advantage since he can manipulate the prosecution process of the divisional application in response to issues revealed in the Opposition process of the parent.

The Applicant does not consider it appropriate to freeze the procedure. Nevertheless, they agree that conclusions reached in the Opposition to the allowed parent application will apply to the divisional application if the Opposer should file an opposition against it. The Applicant considers that this agreement makes freezing the Opposition unnecessary, since if an opposition is filed against the divisional, the findings of the present opposition will apply to it, and this makes the process efficient.

Discussion

The Commissioner thinks that on the grounds of efficiency, the request to freeze the Opposition proceedings should be accepted. As explained in the ruling concerning the Opposition to IL 195030 Teva Pharmaceuticals ltd vs. Boehringer Ingelheim International GMBH, 28 January 2002, paragraph 3 of the ruling:

The authority of the courts to delay a proceeding whilst a different proceeding occurs, raises similar issues that are not contentious. These issues are authority to do so, and discretion, which are applied to ensure efficiency of the proceeding, efficiency of the legal system, saving time and resources, preventing conflicting decisions from issuing, convenience for the parties, fast resolution, balance of convenience and the like. These are true, not only when the parties in the two proceedings are identical, but also when there are different parties but similar issues, similar legal considerations, and the interests to be considered are identical.

In this instance, the parties concur that there is a similarity between the inventions in question. In this case, if an opposition would eventually be filed against the divisional application, it is indeed likely that the similar issues will be raised, similar witnesses will be required to testify and the prior art will be the same in the two proceedings.

The Applicant’s consent that findings in the parent opposition be applied to the divisional, does not adequately address these issues. From a practical perspective, it is unreasonable to make a determination concerning the parent opposition before an opposition is filed in the divisional.

Such a situation would create a state of affairs wherein it is necessary to manage two proceedings with similar witnesses and experts, and similar issues will be considered, or that either the opposition in the divisional case be suspended until the issues are determined in the parent case, or the opposition in the parent case be suspended until the issues are determined in the divisional case or the cases are combined.

Furthermore, even if even various determinations are made in the parent case, it will be appreciated that the parent and the divisional will not have identical claims, and so uncertainty will arise as to whether conclusions from the parent case can be applied to the divisional, and what is the decision in similar but not identical matters to those raised in the parent case.

The commissioner rejects the Opposer’s claim that freezing the opposition is essential to prevent the applicant from applying lessons from the Opposition to the prosecution of the divisional application. Whilst there is some truth in this, it is insufficient, in and of itself, to justify freezing an opposition proceeding. It will be remembered that the Opposer can oppose the divisional application and in that framework, issues relating to the patentability of the divisional application will be considered.

In light of the above, the Commissioner rules that the Opposition proceeding to the parent application be suspended for 18 months from when it was filed, i.e. until 29 September 2019.

The Secretariat of the Patent Office will ensure that the Examiner of the divisional application is aware that there is an opposition against the parent case, and that the divisional application should ,therefore, be examined in accordance with Circular 020/2012.

No costs are awarded at this stage.

Interim ruling regarding suspension of an Opposition to a parent application pending examination of a divisional application, in re IL 206448 to Jenssen, opposed by Teva, ruling by Commsioner Ofer Alon, 19 June 2018.

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