New streamlined EPO opposition proceedings
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The European patent office (EPO) recently announced that it is streamlining the opposition procedure, starting 1 July 2016.
Background
Within 9 months of the grant date of a European patent, any party can file an opposition to the patent, centrally at the EPO. This is a powerful tool as it can potentially lead to revocation of the patent in all designated states in a single action.
At present, a first instance EPO opposition decision takes around 26 months from expiry of the opposition period. Under the new procedure, the EPO will aim for a first instance decision within 15 months.
The changes
Two major changes are designed to expedite proprietor and opponent responses to EPO communications. First of all, the EPO will only grant extensions of time in exceptional circumstances (previously extensions were available as of right). Secondly, the opponent will not be invited to comment upon the patentee’s reply to the statement of opposition within a set time limit, although the opponent may still file a reply of his own volition.
The EPO is also expediting its own processes. It intends to make more use of its existing powers to summon the parties to oral proceedings rather than relying upon parties to request such oral proceedings. Because first instance decisions are normally only reached at oral proceedings, this will reduce timeframes.
Additionally, the EPO is reducing its internal handling time once it has received the statement of opposition and proprietor comments. At present, handling time is 11 months; from July 2016 it will be 5 months.
Comment
The new regime will perhaps have less effect on opponents who must still comply with the strict 9-month opposition period. However, it is common for patentees to take extensions of time to reply to statements of opposition, since delay is usually in the patentee’s favour. Thus, the new process will favour opponents desiring prompt legal certainty: the opponent will have at least the 9 month opposition period to formulate its opposition, whereas the patentee only has 4 months to respond.
With these streamlined procedures, the procedure will have comparable timescales to the proposed Unified European Patents Court. And as the EPO’s official fees are much lower than the proposed court’s, the EPO opposition procedure remains an attractive forum for those desiring freedom to operate in Europe.
Finally, opposition decisions are open to appeal at the Boards of Appeal, and most opposition decisions do proceed to appeal, where delays can still be expected.
