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Dealing with the Streamlined Opposition Process at the European Patent Office

New practices to speed up European Patent Opposition proceedings came into force on 1 July this year. Our experiences suggest that the EPO Opposition Divisions are taking the new procedures seriously so that the typical time from the filing of an opposition to the decision to revoke or maintain will be reduced to about 15 months.

The new approach has been incorporated into the revised EPO Examination Guidelines, which came into force on 1 November 2016. Key features are set out below:

An extension to the four month period for the Patentee to respond to an Opposition will now only be available in “exceptional cases with duly substantiated requests”. We have seen this put into practice, and whereas previously it was relatively easy to get an extension of two months, now we advise working strictly to the four month deadline. It is safest to assume that any request for an extension will be refused, even if the opposition was filed in a language other than the language of proceedings.

There is no clear loss of rights for the Patentee if no response to the Opposition is filed, and the Patentee will get a further chance to respond to the comments made by the Opposition Division accompanying the summons to oral proceedings. The question is whether new requests filed by the Patentee, after the four month response period, will be deemed “late-filed” and hence inadmissible. It will be interesting to see how the case law develops, but the safe approach is for the Patentee to get any auxiliary requests, to address issues raised in the original Opposition, on file within the four month response period.

The Opposition Division will send the Patentee’s response to the Opponent (or Opponents). Then, instead of waiting for up to a year to allow the Opponent to comment further, under the new regime, the Opposition Division will prepare its preliminary assessment of the case and issue a summons to oral proceedings. We have already seen this happen within four months of the Patentee filing its response.

This means that if the Patentee’s response raises new issues, the Opponent needs to get its further comments on file at once if it wants to influence the Opposition Division’s preliminary assessment. It is important to remember that the Opposition Division members are human beings, and once they have committed to the public file a statement that something is black, it may be hard to convince them to agree that it is grey, let alone white. Also, if the Patentee’s requests take material from the description, so that new prior art may be needed by the Opponent to attack new claims, it is crucial to get this new evidence filed as soon as possible. Do not wait until the deadline for final submissions under Rule 116 EPC.

The summons to oral proceedings, issued shortly after the Patentee’s response, will set the hearing date at least six months in the future, with the deadline for final submissions two months prior to the hearing. However, new requests or evidence submitted by the deadline are not automatically admitted into the proceedings. They may be treated as “late filed” unless they are clearly of high relevance (prima facie) and were filed within a reasonable period following some event that led to the need for the new submissions.

The hearing will be held, the decision taken and issued verbally at the hearing, and the written decision summarising the reasons issued soon after.

Typically, the Opposition process will not be over at that point. The decision can be appealed by either party, provided they didn’t get what they requested. In that case, the decision is suspended. The EPO Technical Boards of Appeal handle the Appeal, any they are judicially independent and not constrained by the streamlined procedure at first instance. If anything, the Appeal process seems to be slowing down, based on our experiences, and so the final decision on whether the Patent survives, or is revoked, may still be several years away after the Opposition Division has completed its job.

It is important to remember that the EPO Boards of Appeal rarely admit new requests or evidence into the Appeal proceedings, so ensuring timely filing of submissions during the accelerated first instance Opposition proceedings is crucial. The new, streamlined Opposition procedure makes timely case management even more important.

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