there is no doubt if recaptcha is a brand -- and a huge one on top of it.
because of whatever reason, the cmu never registered the word recaptcha as a trademark.
This means that any invalidation arguments are fixed, with no further argument from the infringer possible.
This contrasts with the appeal for invalidation process where parties challenge each other inter parte, thus allowing flexibility of arguments which creates a potentially more difficult and risky challenge for the patent owner.
This gives the infringer further freedom under the opposition period. Notification of infringement of a patent during the opposition period, and subsequent lodgement of an opposition in this period has some advantages for the patent owner.
However, reuse of prior art in the appeal that was previously tested in the opposition petition weakens the infringers case. It is possible that an infringer may take a compromise position in negotiations with a patent owner whilst simultaneously pursuing invalidation under opposition. After filing for invalidation under opposition, the infringer cannot participate further in the invalidation process and it becomes a matter for the patent owner and patent office to resolve.
It may therefore be preferable in this case that the infringer lodges the opposition for invalidation as this presents less risk to the patent owner due to the limited participation of the infringer in the invalidation process at this stage.
In one opposition, an infringer may argue that the patent claims are broad and therefore include prior art, thus invalidating the patent, whilst in the following law suit the infringer has the freedom to argue that the claims of the patent are narrow and therefore do not include the alleged infringing product/service, thus reducing the effectiveness of the patent.
The ease at which opposition can be filed means that the infringer will probably file at least one opposition if informed of infringement within the opposition period, thereby increasing the risk for a patent owner. If an opposition fails, and the infringer proceeds to lodge an appeal for invalidation, there is no obligation for the infringer to maintain the same direction of argument in the appeal for invalidation as was used in the opposition, since the initial opposition was anonymous.
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| first published: 2016/12/07, last updated: 2016/12/15 even while it was being in the cmu hands recaptcha was a quite big brand.