Oppositions at the European Patent Office (EPO)

A recent announcement made by the EPO confirmed that the default format for Opposition Oral Proceedings would now be by video conference. But what exactly are Opposition Oral Proceedings, why are they useful, and when do they occur?

What is an Opposition to a European Patent?

The EPO allows Oppositions to be filed against a granted European Patent. That said, the Opposition must be filed within an Opposition Period, which spans nine months after the date of grant of the Patent.

Any party can file an Opposition. And it is permissible to use a “straw man” which means the interested party behind an Opposition need not be identified.

There are specific grounds on which an Opposition can be based, including added matter, lack of sufficient disclosure, lack of novelty and lack of inventive step. Lack of clarity, although a ground of patentability considered during a patent’s initial prosecution, is not a ground for Opposition.

Opposition proceedings

Opposition proceedings are held before an Opposition Division, usually comprising three members.

In a typical procedure, after an Opposition is filed, it is checked to ensure formal requirements are met, such as having been filed on time, the required fee paid, and then forwarded to the Proprietor of the Patent.

Once the Opposition Period has expired the Proprietor is set a period of four months to respond to the Opposition (or Oppositions if more than one has been filed). Assuming the Proprietor wishes to defend the Patent then they may request maintenance of the Patent as granted (rejection of the Opposition(s)) or maintenance in an amended form. Typically, a Proprietor will have a “Main Request” and one or more “Auxiliary Requests”. The latter is often considered if the Patent cannot be maintained on the basis of the Main Request.

The Opponent or Opponents will then typically respond to the response of the Proprietor.

Opposition Oral Proceedings

Although in theory a decision can be issued based solely on written submissions, Parties have the right to be heard in oral proceedings before any adverse decision is issued against them by the Opposition Division. It is good practice, and therefore standard practice, that all Parties request oral proceedings. This means that most Oppositions involve oral proceedings as part of the process.

Typically, a summons to attend oral proceedings is issued by the Opposition Division. This includes a date for oral proceedings, a final date for any further written submissions, and a provisional opinion of the Opposition Division in relation to the objections raised.

Parties should confirm who will attend the proceedings, and the language they will use. Translation services for the proceedings can be provided in most circumstances, if required and if requested. It is also worth noting that oral proceedings are open to the public.

During oral proceeding the Parties present their arguments orally to the Opposition Division. The procedure can vary, but typically the Opposition Division consider each Ground of Opposition which has been raised in turn, and come to a decision on that Ground before proceeding. Depending on the decision on that Ground, for example, they may move on to the next Ground (if the previous Ground is not considered prejudicial to maintenance of the Request under consideration) or on to the next Request (if the Ground is considered prejudicial to maintenance of the Request).

At the end of the oral proceedings the Opposition Division announce the final decision. The Patent may be maintained as granted (Opposition rejected), maintained in an amended form, or revoked. A copy of the minutes and reasons for the decision are then issued after the proceedings.

From this point, decisions are open to Appeal before the Board of Appeal of the European Patent Office.

Should you have any further questions about oppositions to a European Patent or the subsequent Appeal proceedings– feel free to get in touch with our helpful Patents team here at Mathisen & Macara.