What is the EPO Opposition Procedure?
A powerful and cost effective mechanism whereby third parties are able to challenge the grant of an European patent.
When does an EPO Opposition start?
When an opponent submits a notice of opposition that sets out the reasons on why they wish to challenge the granted European patent.
What is the timeframe for being able to submit a notice of Opposition?
Notice must be made within 9 months from the date of the granted European patent.
What happens during the EPO Opposition Procedure?
A hearing that lasts for 1 day takes place at the EPO and involves a board of three patent examiners. The board of examiners will decide on one of the following options:
- Cancel the European Patent completely
- Maintain the European Patent as is
- Maintain the European Patent in an amended form
The decision would apply to all of the European states that the European patent has been validated for. Once a decision has been made, an appeal procedure is available at the EPO should an appeal be needed against the decision.
What are the downsides to the current Opposition Procedure?
Currently, it can take several years before a hearing takes place and a decision made. Therefore it is impossible for both the patent applicant and the opponent to know how long the procedure will take on any given case.
What are the benefits of the new Opposition Procedure?
The EPO will be introducing a new streamlined approach to opposition proceedings whereby there will be greater emphasis placed on both parties to present all of their arguments from the outset of proceedings and less opportunity to obtain extensions of time for submitting responses. The new approach will:
- Help simplify the Opposition procedure
- Reduce the time taken to reach a decision
- Provide more certainty for the parties involved
This change will make a considerable difference and may reduce the overall timeframe of typical opposition cases from 19-27 months down to 15 months.
What changes will be made to the new Opposition Procedure?
- Submission of evidence
Under the new streamlined procedure, any evidence required to support reasons for opposition will be requested within two months (if not filed within the notice).
If evidence is not filed within this timeframe, the EPO may decide to disregard any arguments. It is therefore crucial as of 1st July 2016, that all evidence required to support the reasons of opposition are prepared and submitted as early as possible so that all arguments are considered by the Opposition Division.
From a practical perspective, it is clear that the new procedures will require both patent applicants and opponents to submit all arguments and evidence as early as possible. Given the time limits that the EPO will potentially enforce, all parties will need to treat deadlines in opposition proceedings as a high priority.
- Invitation to respond to the notice of Opposition
The patent owner will be given 4 months to respond to the notice of opposition. At this time, the EPO may request further clarifications. In some exceptions, the EPO will request to hear one party’s response to the arguments of the other party, this will be required within a set timeframe.
No timeframe is set for further comment from the opponent, suggesting that the new procedure is seeking to avoid ‘rounds’ of written submissions. This will help to cut the overall duration of the opposition procedure.
- Summons to oral proceedings issued by the EPO
Once the patent owner has responded to the opposition it can be expected that the EPO will issue a summons for oral proceedings. The EPO will issue a summons even if neither party has requested it if they consider it to accelerate proceedings.
- Granting extensions of time
Under the new procedure, extensions of time will only be granted in exceptional cases with extenuating requests. This is a clear distinction from regular EPO deadlines which are often extendible without reasons being required. It is not clear if this change will apply to current pending oppositions or only oppositions filed after 1st July 2016. Until this is verified by the EPO, it would be advisable to treat deadlines on opposition cases with caution.
- Oral Proceedings
The EPO have stated that the minimum date of oral proceedings outlined in the summons will change from at least 2 months to at least 6 months from the date the summons has been issued.
This change merely brings the EPO’s policy into alignment with the practice of the Examining Division since they normally schedule hearings significantly in advance.
- Internal Handling Time of Cases
The EPO are aiming to reduce their internal handling time of cases from 11 months to 5 months. This should make a significant contribution to the EPO’s target of reducing the overall duration of opposition cases from 19-27 months down to only 15 months.
For further information on the changes, please visit the EPO website.
When will the new streamlined Opposition Procedure come into effect?
From 1st July 2016
How will the new streamlined Opposition Procedure affect my rights?
The EPO stresses that despite the changes in procedure, the rights of the parties involved remain unchanged.
What do I do if I want to oppose/ have an interest in opposing a Patent application?
It is advisable to speak to your usual contact at Wynne-Jones IP as early as possible and not to wait until after the grant of the Patent.
If you have any questions, either on the changes or on the EPO Opposition Procedure in general, please get in touch with your usual contact at Wynne-Jones IP.