The EPO provides a low-cost opposition procedure by which it is possible to challenge the grant of a European patent. If successful, the single opposition procedure can lead to the revocation of the European patent in all designated states. The request for revocation of the patent must be filed within the nine-month period following the mention of the grant of the patent in the European patent bulletin. The EPO have recently published two notices setting out changes to the opposition procedure. The notices provide an overview of opposition procedure that will be in force from 1 July 2016.
Notable changes in practice include:
- It was previously a safe assumption that time limits would be extended simply on request. However, in future time limits will be extended only in exceptional cases with duly substantiated requests.
- The opposition division may exceptionally consider other grounds for opposition beyond those raised in the notice of opposition if these prima facie seem to prejudice the patent.
- A recent decision of the Enlarged Board of Appeal confirmed that clarity objections may only be raised during opposition proceedings to the extent that a fault has been introduced by an amendment made after the grant of the patent. This has been formally adopted into the new procedure.
- Typically, any final written submissions could previously be made up to one or two months before the oral proceedings. The new procedure states that the final deadline for written submissions will now normally be set at two months prior to the hearing.
- The EPO recently imposed a requirement that amendments filed during oral proceedings should be in the form of typed documents. The notice confirms that a decision at the oral proceedings may be based on handwritten amendments, with formally compliant documents filed subsequently, reversing the earlier change in practice.
Whilst this is not a great change in the procedure, there is a general aim to streamline the opposition procedure. It therefore seems likely that in areas of discretion the opposition division is likely to lean more towards a more “procedurally expedient” approach. This is, of course, likely to lead to a more restrictive procedure for the parties.
In the new procedure, following receipt of the Patentee’s reply, the opposition division will immediately prepare the next action. This will be either a decision or, more usually, a summons to oral proceedings. When a summons is issued, the parties will be notified at least six months in advance of the date of the Oral Proceedings.
The intention of this new procedure is to reach a decision in most cases within 15 months of expiry of the opposition procedure (i.e. barring appeal, this means that oppositions should be completed within two years of grant of the European patent). The aim here is stated as providing certainty to all parties. However, I would note that the changes are also beneficial from the perspective of the Unified Patent Court, since they would reduce the number of revocation proceedings being run in parallel.