Opposition Proceedings Before the European Patent Office: A New, Streamlined Procedure

By: Francesca Giovannini

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The European Patent Office (EPO) has revised the workflow of opposition proceedings with the general aim of providing early certainty from opposition. More particularly, the goal of the revised workflow, which came into effect on July 1, 2016, is to reduce the total time needed for a first-instance decision in “straightforward cases” to 15 months starting from expiry of the nine month opposition period.

According to EPO statistics, the average duration of the first-instance opposition proceedings before the adoption of the new 15-month workflow was about 26 months, or even longer, depending on the technical field.  In contrast, the average duration of the second-instance (appeal) opposition proceedings, which is untouched by the new workflow, is about 33 months.

Although no information is available as to the definition of “straightforward cases”, it may be  assumed that such cases involve one or a limited number of opponents, are based on a reasonable number of cited prior art references and rely on grounds of opposition which are not based on public prior use and do not require hearing of parties, witnesses or experts as means of evidence.

In order to ensure the intended reduction of the time needed for a first-instance decision, the EPO now requires that the patent proprietor submits a full response to the opposition(s) and any amendments to the patent within a generally non-extendible time limit of four months from the EPO invitation. Extension of this and any further time limit, in fact, is now granted in exceptional cases only, in response to duly substantiated requests. As usual, the proprietor’s submissions are forwarded to the opponent and the Opposition Division. However, according to the new procedure, the Opposition Division does not set a time limit for further comments from the opponent. Also, any further comments from the opponent are simply incorporated in the proceedings.

As a general rule, following the proprietor’s response, the Opposition Division used to directly summon the proprietor and the opponent(s) to oral proceedings.  Under the new procedure, the parties are summoned at least six months in advance, thus giving more time to the parties to prepare, because the final date for written submissions is two months before the date of the oral proceedings. Also, the summons to oral proceedings is now always accompanied by a non-binding opinion. The parties may be summoned to oral proceedings whenever the Opposition Division considers it expedient, even if the oral proceedings are not requested by any of the parties. At the end of the oral proceedings, the Opposition Division’s decision is announced orally. The decision is notified to the parties in writing without delay.

The EPO opposition proceedings have always been a powerful, highly cost-effective means to challenge the validity of a European patent centrally, requiring no economic or legal interest in the patent, thus permitting any person to oppose, including a straw man. In view of the new streamlined procedure, the EPO opposition proceedings may become even more attractive to users both because of the reduction of time and because of the simplification of the procedure.