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
European Patent Granted
EPO Invites Proprietor to Respond
Proprietor Files Response
EPO Issues Summons and Preliminary Opinion
Deadline for Making Final Written Submissions
Oral Proceedings and Verbal Decision
Written Decision Issued
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.
Read the latest insights from the Schlich team reporting recent cases and updates from the EPO.
Oppositions (and then appeals of the opposition decisions) are a mainstay of the work of the EPO, allowing third party scrutiny of granted patents prior, and often in place of, litigation. The process can also be a safe means of testing the litigation water as, with only a few exceptions, no estoppel is generated through these EPO proceedings.
The requirement to amend the description of a European patent application so that its scope of disclosure matches that of the claims is a particular requirement of EPO practice and there is debate within the EPO as to whether such description amendments should be required before allowance. As part of this ongoing debate, the Board of Appeal in T56/21 has proposed a referral to the Enlarged Board of Appeal on this issue.
A recent Decision, T1482/21, from the Board of Appeal of the EPO considered whether a decision to re-establish a patent application can be challenged during Opposition proceedings at the EPO.
Following the Enlarged Board of Appeal decision G 2/21 (“plausibility”) earlier this year, the referring Board has issued its preliminary opinion on how to take EPO appeal no. T 116/18 forwards. It is clear the Board is uncertain how G 2/21 is to be applied, noting several interpretations of that decision seem feasible. Thus, new case law appears to be needed to help those using the European patent system understand the circumstances under which post-filed data can be relied upon by a patent proprietor in the assessment of inventive step.
This recent decision from the Boards of Appeal follows clear guidance from G1/21 that in-person proceedings should remain the default over ViCo proceedings, contradicting both the EPO’s digital first strategy and previous Boards of Appeal decisions implementing G1/21.
The EPO “10-day rule” has for a long time effectively acted as a grace period during which certain responses can be timely filed after the deadline calculated from the face of an official communication only. However, the EPO are abolishing the 10-day rule and for deadlines set after 1 November 2023 this effective extension will not apply. Therefore, it is important that applicants and their representatives, who commonly rely on the grace period offered by the 10-day rule, recognise and remember that this option will not be available to them after 1 November 2023.
A recent EPO Board of Appeal decision has dismissed the common test for novelty of a subrange and has instead proposed that the so-called “gold standard” test should be used. Under the gold standard novelty test, a claimed subrange is considered novel simply if there is no direct and unambiguous disclosure of the claimed subrange – regardless of whether the subrange is “sufficiently far removed” from any range in the prior art.
Any party to appeal proceedings adversely affected by the decision of the Board of Appeal can file a Petition for Review of the decision by the Enlarged Board of Appeal. However, such petitions may only be filed on the grounds that: (i) the composition of the board was not correct, (ii) a fundamental violation of the right to be heard occurred (iii) a fundamental procedural defect occurred (iv) a criminal act had an impact on the decision. Historically, the success rate of Petitions for Review at the EPO has not been high, falling at around 5%. That said, November saw the granting of the 10th Petition for Review. Read on to get a flavour of what it takes to succeed.
Get in touch
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.