PROFESSIONAL SERVICE
EPO OPPOSITIONS
The EPO allows third parties to challenge its decision to grant a European patent for a short period of time after that patent has been granted. If successful, an opponent may convince the EPO to revoke the patent, or at least get the proprietor to amend it, which can be vital for the opponent’s commercial strategy. EPO opposition proceedings are much cheaper than challenging validity of a patent in the courts, and the result of the opposition proceedings takes effect in all of the European countries in which the patent has effect. This means EPO oppositions are very attractive to those wishing to have a European patent invalidated.
To oppose a European patent, the opponent has to present its case to the EPO within 9 months of the grant date of the patent. The EPO will then give the proprietor of the patent an opportunity to respond within about 4 months of being informed that an opposition has been filed. The EPO’s Opposition Division will then consider the arguments put forward by each side, and will usually then issue its preliminary, non-binding opinion on the pertinent issues. In many cases, both sides will then be set a deadline for filing further written arguments and evidence, and there will normally then be an oral hearing for both sides to present their arguments to the Opposition Division directly. The Opposition Division will then decide on the matter, and a written decision (i) maintaining the patent as granted, (ii) maintaining the patent in amended form, or (iii) revoking the patent altogether will be issued shortly afterwards.
Whilst the exact time EPO oppositions take to complete can vary depending on the complexity of the case and the number of parties involved, an approximate timeline for these types of proceedings is illustrated below.
We have a wealth of experience in oppositions before the EPO, both in terms of defending our clients’ patents from attacks by opponents and attacking the patents of our clients’ competitors. Our team is accustomed to handling high-value, complex proceedings and is, for example, currently involved in attacking a collection of highly valuable, cutting-edge life sciences patents relating to the revolutionary gene-editing technology known as CRISPR/Cas9.
If there is a European patent that you want revoked, then we would be happy to work with you to file an opposition at the EPO. Similarly, if your European patent is under attack from your competitors and you would like our help defending it, then we would be happy to work with you to fend off that opposition, as well.
EPO oppositions can be filed anonymously, and thus if you are concerned about your competitors learning that their European patent is problematic for you, then we can file the opposition in our name, avoiding the need to identify you at any stage.
MOST EPO OPPOSITIONS FOLLOW THE SAME PROCESS
EPO OPPOSITIONS TIMELINE
0
Months
European Patent Granted
9
Months
Opposition Filed
10
Months
EPO Invites Proprietor to Respond
14
Months
Proprietor Files Response
17
Months
EPO Issues Summons and Preliminary Opinion
19-25
Months
Deadline for Making Final Written Submissions
20-27
Months
Oral Proceedings and Verbal Decision
24-33
Months
Written Decision Issued
PROFESSIONAL SERVICE
EPO APPEALS
Sometimes, the EPO’s Examining Division may refuse one of your European patent applications, or the EPO’s Opposition Division may reach a decision that is not in your favour. Fortunately, those adverse decisions can be appealed to the EPO’s Boards of Appeal, where you have an opportunity to have that decision overturned. Convincing the Boards of Appeal to overrule the Examining and Opposition Divisions is no easy task but, with our team’s technical and legal know how and years of experience representing clients in these types of proceedings, we have handled a large number of EPO appeal cases with successful outcomes.
To appeal a decision of the EPO, the appellant must file notice of that appeal within 2 months of the decision being issued. Within 4 months of the decision being issued, the appellant has to set out the grounds on which its appeal is based. In the case of appeals arising from opposition proceedings, the EPO will then notify the other side that an appeal has been filed, giving the other side approximately 4 months to file a submission in response. Typically, the EPO will then issue a preliminary, non-binding opinion on the arguments presented, and will summon the parties to an oral hearing to present those arguments further. A decision will be taken on the matter at the oral hearing, and written reasoning for that decision will then be issued by the Board of Appeal within the next few months.
We frequently represent clients who want to appeal a decision of the EPO that hasn’t gone their way and, with our team’s specialist expertise regarding a variety of different technologies, we are well-placed to help you challenge a decision that has gone against you, too.
Recent Insights
Read the latest insights from the Schlich team reporting recent cases and updates from the EPO.
When “Monotherapy” Means Monotherapy: A Cautionary Tale on Claim Interpretation and Added Matter at the EPO
In this recent EPO Board of Appeal (BoA) decision, the claims of European patent No. 3288980 were found to lack basis in the application as filed as a result of the BoA’s reluctance to accept a bespoke meaning of the term “monotherapy” advanced by the patentee. The decision serves as a useful reminder that non-standard definitions must be clear, consistent and reflected in the claim language itself, particularly as questions around claim interpretation and added matter remain under close scrutiny while we await the outcome of G 1/26.
Has the EPO TBA Demolished the Essentiality Test?
In these proceedings the European Patent Office (EPO) Technical Boards of Appeal (TBA) revoked a patent owned by Husqvarna AB following an appeal brought by Brokk AB. With regard to assessing amendments for addition of matter under Article 123(2) EPC the TBA were clear that the decisive test with respect to added matter remains the “gold standard” test of G2/10 as to whether subject matter is “directly and unambiguously derivable from the […]
A Clear Way Forward for Description Amendments: Decision Issued in G 1/25
The Enlarged Board of Appeal of the EPO has decided in G 1/25 that claim interpretation requires the specification to be read as a unitary process, endorsing the decision in T 439/22 and potentially ending the debate about what it means to ‘consult’ the description. The decision also confirms the EPO can only require description amendments where these are necessary to ensure compliance with certain articles of the EPC.
G 1/26: The EPO’s Unfinished Business on Claim Interpretation
Following G 1/24, which held that the description must always be consulted when interpreting claims for patentability, a new referral to the Enlarged Board of Appeal - G 1/26 - asks whether that same approach applies more broadly, including to added matter, and whether the description can go beyond merely explaining claim terms to actually influence their meaning.
Sequence Identity Claims After T 0137/24: How Broad Is Too Broad?
The recent Board of Appeal decision in T 0137/24 provides useful guidance on how sequence identity claims are assessed under the EPC, particularly in relation to added matter and sufficiency.
Where to Start? Somewhere Realistic or Promising, Says the EPO!
Another Board of Appeal decision has confirmed that, following G 1/23, a non-reproducible product can be the closest prior art, but adds the non-reproducible nature of the product should be taken into account when deciding whether the claimed solution is obvious.
Inventive Step Based on a “Black Box” Following G1/23
The EPO Technical Boards of Appeal (TBA) decision in T 1044/23 offers the first practical insight into how the EPO Enlarged Board of Appeal (EBA) decision in G 1/23 will shape novelty and inventive step assessments when the prior art consists of commercially available products whose manufacturing processes remain undisclosed, i.e. effectively an intellectual “black box.”
An Appellant is an appellant, and an intervener in an appeal is an intervener – G2/24
Following our earlier article, the Enlarged Board has now provided its Decision in this matter,
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Our team of UK and European Patent Attorneys and Chartered Trade Mark Attorneys are highly knowledgeable and experienced in assisting clients with all aspects of their IP needs.
Contact us now to find out more about how we could help you and your business.
