July 05, 2016

Changes in the Opposition Procedure before the European Patent Office

Por: Guido Hackländer

Since July 1, 2016, changes in the opposition procedure before the EPO have become effective. The changes are a result of the EPO’S Expanded Early Certainty Initiative and are intended to streamline and shorten the duration of opposition proceedings to provide expedited legal certainty to the opposition parties and to the public. A notice describing the changes in detail is available here.

Opposition before the EPO is the last chance for third parties to centrally challenge the validity of a granted European patent within a nine-month period of the publication of the grant of such patent. When successful, an opposition or, where applicable, the following appeal leads to revocation or limitation of the European patent with effects in all countries where the European patent has been validated. At present, after the opposition period expires or the opposition proceedings have been finalized and completed, revocation proceedings are to be filed in every jurisdiction where the European patent has been validated.

According to the EPO’s latest Annual Report, in 2015, 31% of all oppositions resulted in the European patent being revoked, 38% being maintained in amended form and 38% being maintained as granted.  4.4% of European patents were opposed. Opposition proceedings currently take about 19 to 27 months until a decision is rendered by an opposition division.

The changes in the opposition procedure are aimed to allow opposition divisions to reach a decision within 15 months of the opposition period, and basically apply to what has to be done by the parties. For instance, contrary to the prior opposition procedure, in the new procedure

  • all relevant documents intended by the parties to be used as reference, even when they are available to the EPO and translations of any documents that are not in English, French or German must be submitted by the parties at the same time they submit their respective initial pleadings i.e. opposition or response to the opposition.
  • the patent proprietor will still have to respond to the opposition within four months after notification thereof, but this term will be extended for two months only in exceptional cases with duly substantiated requests.
  • facts, evidence and requests not filed by the parties at the beginning of the opposition procedure or, when this is not possible, filed at a late stage without sufficient justification, , and if, as a consequence, the costs of oral proceedings or taking of evidence are incurred by another party, this may be taken into account in the apportionment of costs.
  • evidence submitted for the first time by any of the parties at the oral proceedings will only be considered if they are of prima facie relevance.

It is evident that the new procedure does not impose the meeting of any specific timeline  on the opposition divisions, but merely obliges the parties to submit additional documents, and upon submission of such documents, along with the facts, arguments and evidence before the deadline request  in the prior opposition procedure.

Time will tell if the aim of these changes will be achieved taking in view that the opposition divisions’ decisions may be appealed by any of the parties before a Technical Board of Appeals. Appeal proceedings usually take three or four years, so that the changes in the opposition procedure might not result in a substantial shortening the overall period until a final decision becomes available i.e. the time up to the decision by the opposition divisions followed by the time up a second instance final decision being rendered in subsequent appeal proceedings.

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