EPO Procedural Change to Accelerate Opposition Proceedings

In light of the introduction of the Unified Patent Court, the European Patent Office has recently confirmed a change to its procedure which should simplify patent enforcement in European.

The problem

According to the European Patent Convention, any party may object to a European Patent being granted using Opposition Proceedings. These Opposition Proceedings are used widely by parties seeking to revoke problematic patents, and they are often raised as a prelude to litigation or alongside litigation. As it stands, Opposition Proceedings can often take years to be concluded, meaning that an infringement action before a national court can be ruled upon, before the EPO has ruled on the validity of a patent. It this circumstance, a patent found to be infringed may subsequently be found to be invalid. A potentially more difficult situation may arise if a decision on infringement is issued before a patent is maintained in amended form in the opposition proceedings. Does the infringement decision still apply to the amended patent?

The introduction of the Unified Patent Court may lead to an increase in the number of such cases, creating greater inefficiency for patent enforcement across the Europe.

The solution

Accordingly, the EPO have revised their practice concerning the possibilities for accelerating opposition proceedings. It has always been possible for a party to infringement proceedings before a national court to request that parallel opposition proceedings be accelerated, but now this will apply to both infringement and revocation cases before the Unified Patent Court, a national court or a competent authority of a contracting state. Furthermore, opposition proceedings will now be accelerated if the EPO is informed of an infringement or revocation case by the Unified Patent Court, a national court, or a competent authority of a contracting state. A request by a party may still be made but is no longer required.

This change in practice is intended to provide legal certainty and procedural efficiency by ensuring that parallel opposition proceedings are concluded as quickly as possible.

In the published notice OJ EPO 2023, A99, the EPO detailed the changes to its procedure, which are summarised below:

• The opposition division will make every effort to issue the next procedural action (e.g. communication, summons to oral proceedings) within three months.
• Oral proceedings will be scheduled to take place at the earliest possible date.
• Requests from the parties to extend time limits over and above the normal period or to postpone oral proceedings will only be granted in exceptional, duly substantiated cases.

These changes apply to European or Unitary patents, subject to Opposition Proceedings, where the EPO is aware of infringement or revocation actions before a qualifying court (including the Unified Patent Court, a national court, or a competent authority of a contracting state).

What this will mean for European Patents

If successful – the revised practice will help to increase the efficiency of Opposition Proceedings, but parties and their advisors will need to take care in order to comply with the shorter and more rigid time constraints.