Oppositions (1) - Overview

This first article provides an overview of the process and then future articles will look at specific aspects of the process from the point of view of the patentee and opponent. 

An opposition can be filed by any third party within 9 months of the date of grant of a patent by the EPO.  A patent can be opposed on specific grounds of opposition and the proceedings can lead to one of three outcomes -- the patent being maintained as granted, maintained in amended form, or revoked.  The outcome of an opposition is effective automatically in all contracting states in which the patent is in force and cannot be appealed nationally.  Statistics show that each of these outcomes occur in roughly 1/3 of cases.   

The opposition process therefore provides a powerful tool to revoke or limit patents on a European-wide basis.  With low costs compared to patent litigation, no disclosure, and minimal estoppel, it is a process that should be carefully considered as a tool to maintain freedom to operate. 

Opposition Period

An opposition must be filed within 9 months of the EPO's date of grant for a patent.  This period is not extendible and the ten-day communication allowance does not apply.  The only situation where an opposition can be filed outside of this 9 month period is if a party is threatened with infringement proceedings under the patent, and an opposition is already in progress. In such cases the alleged infringer can "intervene" with an opposition of their own.  

The Opponent 

Any third party can file an opposition.  The restriction to third parties prevents a patentee from self-opposing a patent (although similar effects can now be achieved by the EPO's limitation procedure).  A party does not need any standing or reason to file an opposition. 

The third party can be a "strawman" in order to obfuscate the actual party behind the proceedings, provided this is not done to circumvent the law, for example, to self-oppose a patent or attempt to bypass representative requirements.  The mere desire to remain anonymous is acceptable.  A real or legal person must be named as opponent even where they are a strawman. 

Grounds of Opposition 

The EPO defines three grounds on which an opposition can be filed:- 

• Lacking novelty or inventive step, or being excluded from patentability. 

• Lack of sufficient disclosure such that the invention cannot be implemented by the Skilled Person. 

• Amendments have been made which extend beyond the content of the application as filed. 

No other requirements can be raised during the opposition procedure, with the exception of clarity if an amendment is made during the opposition which introduces a clarity problem which was not present in the claims as granted. 

All grounds of opposition, and the basis for those grounds, must be raised during the 9 month opposition period. However, the opposition divisions do have discretion to allow late-filing of objections and evidence where they consider it appropriate. Usually this is allowed where an amendment has changed the relevance of prior art or arguments, or where there is a genuine reason for the argument arising late, but only if the new details are prima facie relevant to the validity of the patent. 

The Process

The opposition process is predominantly in writing but concludes with oral proceedings where one or more party requests them (which is in almost all cases).  After an opposition is filed the patentee will be invited to comment on the opposition, which they can do with arguments and amendments. The patentee can also include a set of auxiliary requests which will be considered in turn if the main request is not allowable. 

Usually, the next step will be for the EPO to issue a preliminary opinion and summons to oral proceedings, but in some cases the EPO can invite further written comments.  The preliminary opinion gives a summary of the arguments and sets out the division's view on the opposition.  The parties have an opportunity to make further written submissions on which the arguments at the oral proceedings will be based. Where oppositions are filed by multiple opponents these are joined into a single proceeding. 

At the oral proceedings each party has an opportunity to present their case and the opposition will decide each issue in turn, announcing the outcome orally during the proceedings.  A final decision on the opposition is reached and announced at the end of the oral proceedings, with written reasons following. The Decision is final on the date it is announced orally. Typically oral proceedings run for a half to a full day but can be held over multiple days for complex cases. 

Timeline

Having historically been quite slow, the EPO now have a stated aim to reach a decision within 15 months.  Prior to the COVID pandemic the EPO were on track to meet that aim, but delays in holding oral proceedings mean timing has slowed somewhat, albeit the EPO are doing a good job of continuing work.  The timeline can be very dependent on the technical field, the conduct of parties, and the general complexity.  In recent years we have experienced oppositions reaching a decision as quickly as 10 months from the opposition being filed, to as slow as 2 years. 

Unfortunately, despite the improvements in timing, the Boards of Appeal are still lagging behind and it can be 3 years or more before a final decision in appeal is issued. 

Estoppel

There is no formal estoppel in subsequent national court proceedings meaning parties can have two shots at an argument. However, Judges do have respect for the EPO Boards of Appeal and may view arguments in light of previous decisions.  Also, the use of prior art in an opposition can influence infringement proceedings in Germany when considering whether a nullity action has reasonable prospects of revoking or amending a patent. 

Summary 

The opposition process is a powerful tool that leads to revocation in a significant portion of cases. With the relatively low cost and unitary application in all contracting states it can be very valuable to parties to obtain freedom to operate and to avoid litigation.  Our future articles will look at each stage in more detail and consider available strategies. 

This article is a part of our EPO Practice and Peculiarities series. Click here to explore