The opposition procedure
There are several ways to challenge the intellectual property of others. In the case of European patents, oppositions can be filed after grant to seek revocation or a reduction in scope.
The opposition procedure involves the following:
An opponent needs to file an opposition by no later than nine months from the date of grant of a European patent. The opposition needs to contain arguments as to why the European patent should be revoked or narrowed and should include suitable evidence (e.g. documents showing that the invention was not new or was obvious before the European patent application was filed).
The patentee will then be given an opportunity to respond. Further submissions may be made by the opponent and patentee. The European Patent Office (EPO) will usually provide a preliminary, non-binding opinion, and will issue a summons to attend oral proceedings (usually in Munich or the Hague) at which the parties can present their arguments, and at which the case will be decided by an opposition board.
Prior to 1 July 2016 the opposition procedure could be quite lengthy. The patentee could obtain an extension of time for responding to the opposition, and subsequent steps could proceed slowly, meaning that it could take several years for the opposition procedure to reach a conclusion.
Streamlined procedure with effect from 1 July 2016
The EPO has brought in a streamlined opposition procedure with effect from 1 July 2016. The main changes are as follows:
- The EPO has stated that it will shorten the period between expiry of the opposition period and the issuing of a decision to fifteen months in straightforward cases.
- One of the ways the EPO aims to achieve streamlining is by limiting the possibilities for the parties to obtain extensions of time. Under the previous system a patentee was set a period of four months for responding to an opposition but this could be extended as of right by two months, and further extensions could sometimes be granted. The EPO has now stated that the four month period will only be extendable in exceptional circumstances.
- The streamlined procedure will also be made possible by the EPO speeding up its own actions. In particular, in straightforward cases, the EPO will take action promptly after receiving the patentee’s response, without waiting for any further submissions. In practice we believe that this could mean receiving a preliminary opinion and summons to attend oral proceedings about five to nine months after expiry of the opposition period.
- The EPO intends to give at least six months’ notice of the date of oral proceedings so that the parties have adequate time to prepare for the oral proceedings and if desired submit further written observations (the deadline for which is usually two months prior to the oral proceedings).
The changes will be appreciated by those who want early certainty regarding the outcome of oppositions, including opponents who intend to knock patents out quickly, and also some patentees who want to know where they stand and/or who are confident of the strength of their patents. However, some patentees may have preferred keeping the slower procedure so as to retain uncertainty in the eyes of competitors for as long as possible.
It is likely that the maximum extent of streamlining will not be possible in many cases, for example where the patentee files amendments in response to an opposition, or where there are multiple opponents.
It should be noted that opposition decisions are open to appeal, and that many are appealed. Appeal proceedings are not subject to any proposed changes regarding streamlining and may take several years.
Author: Robert Gregory, Director