Opposition, Prior Use and a Mid-Proceeding Amendment
An application for a drip-irrigation emitter is accepted and published in Israel on 1 March 2024. The applicant is an Israeli kibbutz. On 28 May 2024 a competitor files opposition. The opponent asserts three grounds: (i) prior public use of the emitter at an Israeli trade fair in 2019, supported by two invoices and a brochure without photographs; (ii) a US patent published in 2019 disclosing a similar labyrinth but not the claimed 0.8–1.2 mm gap; and (iii) the claimed gap is obvious over the US patent in view of a 2020 handbook. The applicant wants to amend claim 1 to require a gap of 0.9–1.0 mm and an inlet filter. The filter is disclosed only in the description, in one embodiment. The opponent argues that the amendment adds matter and broadens the claim. The Registrar sets a hearing.
1. Was the opposition timely, and how should the Registrar assess the prior-use evidence?
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The opposition was timely. Publication of acceptance was on 1 March 2024, and the three-month opposition period ended on 1 June 2024. Filing on 28 May 2024 is inside the period. The opponent must still state the grounds and facts with sufficient specificity.
The prior-use evidence is weak on its face:
- Two invoices may prove sales, but not the configuration of the emitter sold. They do not show the 0.8–1.2 mm gap or the labyrinth geometry.
- A brochure without photographs or a date may not establish what was publicly available at the 2019 trade fair.
- There is no witness statement from a person who saw the emitter, no photographs, no sample and no link between the invoices and the alleged product.
The opponent bears the initial burden of establishing a prima facie case of prior public use. If it cannot tie a specific product with the claimed features to a public disclosure before the priority date, the ground should fail without the applicant needing to prove a negative. The Registrar should also consider whether the trade fair was public and whether the emitter was displayed confidentially.
The US patent is prior art if published before the priority date. It discloses a similar labyrinth but not the gap, so it is novelty art only for the features it discloses. The 2020 handbook is prior art only if published before the priority date; if the priority date is earlier, it cannot be combined. Obviousness requires a motivation to combine, not mere existence of two documents.
2. Can the applicant amend claim 1 to add the inlet filter and narrow the gap? What objections will succeed?
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The amendment should be allowed only with leave and only if it satisfies the no-new-matter and no-broadening rules.
- Narrowing the gap from 0.8–1.2 mm to 0.9–1.0 mm is a narrowing, not a broadening. The opponent's broadening objection is misconceived. The narrower range is within the original disclosure and should be supported.
- Adding the inlet filter is supported only if the description discloses the filter as part of the emitter, not merely as a generic optional feature. If the single embodiment clearly includes the filter, the amendment is supported. If the filter is mentioned only in a laundry list, the support may be challenged.
- The amended claim must be clear and must not introduce a different invention that the examiner has not considered. The Registrar has discretion to allow the amendment and may impose conditions, such as re-examination of the amended claim.
- The amendment will not save the claim if the narrowed gap is obvious over the US patent and handbook. The applicant should provide comparative data or a technical effect for the 0.9–1.0 mm range and for the filter combination.
The opponent can succeed on added matter only if the filter is not adequately disclosed. It cannot succeed on broadening. The stronger opposition argument is that the amendment does not overcome the prior art.
3. What procedural and evidentiary steps should each party take before the hearing?
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Applicant:
- File a formal amendment request with clean and marked-up claims and precise support citations for the 0.9–1.0 mm range and the inlet filter.
- Submit a declaration from the inventor or technical expert explaining the function of the filter and any comparative advantage of the narrower gap.
- Prepare a conditional fallback position: claim 1 with the filter and narrower gap, and a dependent claim without the filter if the Registrar refuses the filter.
- Consider settlement, because opposition costs may exceed the value of the claim.
Opponent:
- Replace the invoice-and-brochure assertions with a witness statement from a trade-fair attendee, photographs, a product sample or a dated catalogue that shows the claimed emitter.
- Link any invoice to the specific product and date.
- File an expert declaration on obviousness explaining why the US patent and the handbook would be combined and why the 0.9–1.0 mm range is routine.
- Object to the amendment with specific support citations, not a generic added-matter allegation.
Both: observe the Registrar's deadlines, request cross-examination of witnesses if the facts are disputed, and keep a clear record for an appeal.