Opposition procedure before the European Patent Office

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The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative [1] procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public (no commercial or other interest whatsoever need be shown). This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

The opposition can only be based on grounds mentioned in Article 100 EPC, i.e. on the grounds that the subject-matter of the patent is not patentable, on the grounds that it is not sufficiently described to allow a person skilled in the art to carry out the invention, or on the grounds that the content of the patent extends beyond the content of the application as filed.

The notice of opposition must be filed in writing at the EPO (either at Munich, The Hague or Berlin) within nine months from the publication of the mention of the grant of the European patent, along with the payment of an opposition fee. Opposition divisions of the EPO are then responsible for the opposition procedure.

Contents

[edit] Filing and admissibility

Before starting the substantive examination of the opposition, the Opposition Division examines whether the opposition must be considered as filed ("Is there an opposition?") and whether it is admissible ("Is the opposition admissible?"). The Opposition Division may find that the opposition is not deemed to have been filed, for instance because the opposition fee has not been paid within the nine-month opposition period, because the notice of opposition is not signed or because the notice is not in an accepted language. [2]

In order for an opposition to be admissible it must meet the provisions of

  • Article 99(1) EPC, i.e.
    • a notice of opposition must be filed within nine months from the publication of the mention of grant of the European patent by a natural or legal person, and
    • the notice must be filed in the form of a written reasoned statement, and
  • Rule 76(1)(c) EPC, [3] i.e. the extent and grounds of the opposition must be contained in the notice, as well as an indication of facts, evidence and arguments to support the grounds.

In addition, an opposition is also rejected as inadmissible if it fails to meet the requirements of Rule 76(1)(a), (b) and (d) EPC[4] after the opponent was invited to remedy to these failures within a given time limit. If the opposition is not admissible, the opposition is rejected under Rule 77(1) or (2) EPC. [5]

Inadmissible oppositions and oppositions which are deemed not to have been filed are not substantively examined.

[edit] Substantive examination

If the opposition is admissible, the grounds for opposition are examined as to their merits. [6] The patent proprietor has also the opportunity to reply to the grounds of opposition developed by the opponent. Arguments and, to a certain extent, [7] amendments may be filed in reply by the patent proprietor.

In view of the grounds of opposition, and in view for instance of a prior art document introduced into the proceedings by the opponent, the patent proprietor may amend the patent, i.e. the description, claims and drawings of the patent. [7] The patent proprietor is master of its own patent in that the decision to amend or not, and how to amend the patent, is a decision of the patent proprietor alone (although the Opposition Division or the opponent may apply pressure to have amendments made). [8] The patent, however, may not be amended in such a manner that the amendment would lead to an extension of the protection conferred by the patent.[9]

If amendments are made to the patent during the opposition proceedings, the patent (and the invention to which it relates) must meet the requirements of the EPC. [10] These requirements notably include the requirements of support in the description and clarity (Article 84 EPC), even though those are not listed as grounds of opposition in Article 100 EPC. However, the requirements to be met by the amended patent do not include the requirement of unity of invention (because divisionals cannot be filed after grant). [11]

During the opposition, oral proceedings may take place at the request of the EPO or at the request of any party to the proceedings, i.e. the patentee or an opponent. [12] The oral proceedings are held before the Opposition Division itself. [13] They are held in Munich, the Hague or Berlin, and are public unless very particular circumstances apply. [14] This contrasts with oral proceedings held before an Examining Division, which are not public. [15] The list of public oral proceedings in opposition before the EPO is available on its web site. [16] The right to oral proceedings is a specific and codified part of the procedural right to be heard. [17] A decision is often taken at the end of the oral proceedings.

[edit] Issue and effects of the opposition

After the end of the opposition proceedings, the patent is either

  • maintained as granted, that this, the opposition is rejected; [18]
  • maintained in an amended form. [19] In this case, a new patent specification is published; or
  • revoked. [20]

The opposition has an effect on all designated states in the European patent. Decisions by Opposition Divisions, like any other final decisions of first instance divisions, are appealable. [21]

A decision of the EPO to revoke a European patent is final (when the opportunity to appeal before the EPO is exhausted). In contrast, a decision of the EPO not to revoke a European patent (the decision instead maintaining the patent as granted or in an amended form) leaves the way open for revocation by the national court. The EPO decision does not create an estoppel precluding a subsequent challenge by an unsuccessful opponent at the national level (at least before the English courts). [22] The validity of a European patent can be scrutinized both at the national level, before a national court, and at the international level, before the European Patent Office during opposition. The same is not true for infringement proceedings, upon which national courts exercise exclusive jurisdiction.

[edit] Transfer of opponent status

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The opponent status cannot be freely transferred. As far as legal persons are concerned, the opposition can only be transferred or assigned to a third party together with the business assets belonging to a company, i.e. its economic activity, and more precisely the assets in the interests of which the opposition was filed.

[edit] Statistics

Overall, about 6% of the European patents granted by the European Patent Office are opposed. [23] Of those, about 1/3 are revoked, 1/3 are maintained in an amended form, which generally means "reduced in scope", and 1/3 are maintained as granted, that is, the opposition is rejected.

[edit] Parallel national proceedings

The "possibility of parallel validity proceedings in national courts and in the EPO is inherent in the legal arrangements in the EPC under which the EPO was established".[22] If a third party files an opposition to a European patent with the EPO and also, in parallel, initiates a revocation action (also called "nullity action" or "validity proceedings") against the same patent before a national court, the national court (at least in England) may exercise its discretion to either

  • stay the national proceedings, in order to wait the outcome of the EPO opposition proceedings, or
  • allow the revocation proceedings to go ahead, without waiting the outcome of the EPO proceedings. [22]

[edit] References

  1. ^ Jacob LJ in Unilin Beheer BV v Berry Floor NV & Ors [2007] EWCA Civ 364 (25 April 2007): "Proceedings at this level are called "administrative" rather than "judicial" though it is difficult to see why – after all the opposition division is deciding a dispute between rival parties."
  2. ^ Rule 1(1) EPC[obsolete fact]
  3. ^ Rule 76(1)(c) EPC corresponds to old Rule 55(c) EPC 1973
  4. ^ Rule 76(1)(a), (b) and (d) EPC corresponds to old Rule 55(a), (b) and (d) EPC 1973
  5. ^ Rule 77(1) or (2) EPC corresponds to old Rule 56(1) or (2) EPC 1973
  6. ^ Article 101(1) EPC
  7. ^ a b Rule 80 EPC
  8. ^ EPO Board of Appeal decision T 1099/06, Reasons 6.
  9. ^ Article 123(3) EPC
  10. ^ Article 101(3) EPC
  11. ^ Enlarged Board of Appeal decision G 1/91 of 9 December 1991. The reference to Article 102(3) in the decision is a reference to Article 102(3) EPC 1973, corresponding to Article 101(3)(a) EPC (of the revised text of the Convention, the so-called EPC 2000).
  12. ^ Article 116(1) EPC
  13. ^ Article 19(2)(fourth sentence) EPC
  14. ^ Article 116(4) EPC
  15. ^ Article 116(3) EPC
  16. ^ EPO web site, Oral proceedings calendar. Consulted on April 30, 2008.
  17. ^ "The right to oral proceedings according to Article 116 EPC is a specific and codified part of the procedural right to be heard according to Article 113(1) EPC." in Decision T 1012/03 of December 1, 2006, Reasons 25.
  18. ^ Article 102(2) EPC
  19. ^ Article 102(3) EPC
  20. ^ Article 102(1), (4) and (5) EPC
  21. ^ Article 106 EPC
  22. ^ a b c Glaxo Group Ltd v Genentech Inc & Anor [2008] EWCA Civ 23 (31 January 2008)
  23. ^ EPO web site, CA/PL 29/99 dated 8.11.1999, Revision of the EPC: limitation procedure, in Travaux préparatoires 1997-2000, Patent Law Committee documents, item II.7.

[edit] See also

[edit] External links

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