Opposition proceedings before the European Patent Office ("EPO") are notoriously slow, as a rule lasting an average of 3.5 years. As part of efforts to increase procedural efficiency, the EPO has revised the procedure for first instance Opposition Proceedings, with the aim of issuing decisions in "straightforward" cases within 15 months of expiry of the opposition period. The revised procedure is detailed in an EPO Notice of June 1, 2016 and will come into force on July 1, 2016.
The revised opposition procedure mainly concerns limiting the time available for patent owners to respond to notices of opposition. Presently, patent owners are given a four-month period to respond to oppositions, extendable by a further two-month period, which is generally granted upon request without substantiation. Starting July 1, 2016, extensions of time will be allowed only in exceptional cases with duly substantiated requests. Specific information about the exceptional cases or the requirement to duly substantiate is not yet available.
Furthermore, the EPO Notice appears to suggest that opponents are no longer automatically given the opportunity to reply to the patent owner's observations and amendments. Specifically, the Notice states, with reference to Rule 79(3) EPC, that the patent owner's reply to the opposition will be immediately communicated to the opponent for information, further indicating that the opposition division will prepare the next action at the same time. The Notice indicates that in most cases, the next action will be a summons to attend oral proceedings. Only if the Opposition Division considers it necessary will it invite the opponent(s) to reply within a specific time limit. Although not stated in the Notice, it seems likely that claim amendments made as part of the patent owner's response would trigger such an invitation.
The Notice establishes specific time limits for responding to communications from the Opposition Division: four months for communications raising matters of substance and two months for other communications. Extensions of time limits will be granted only in exceptional cases with duly substantiated requests.
The revised procedure requires oral proceedings to be held no earlier than six months from the date of the summons. Observations and amendments in preparation for oral proceedings will be due no later than two months before the date of the hearing. As before, any request to change the date will be considered only in exceptional cases.
The streamlined opposition procedure is intended to establish legal certainty for all parties to an opposition and for the public. It remains to be seen whether these revisions, when applied in practice, will respect the fundamental procedural principles of the EPO, such as the right to be heard, under Article 113(1) EPC.
The revised procedure will come into force very soon. Therefore, owners of recently opposed patents who wish to delay filing their response are advised to act quickly and request an extension before July 1, 2016.
Finally, parties to oppositions are on notice that the pace of proceedings will be increasing; practitioners should switch gears to keep up.