Oppositions (2) – Filing the opposition

To oppose the grant of a patent, a party must file a notice of opposition within 9 months of the date of grant of the patent. The notice includes payment of the opposition fee, identity of the opponent, and the grounds of opposition. This deadline is not extendible, other than if it falls on a day the EPO offices are closed, and so must be treated with great care. 

One exception to the 9 month period is where an opposition is filed as an intervention. If an opposition is already pending and a third party is threatened with infringement proceedings, or such proceedings are initiated, that third party can intervene with their own opposition. The notice of intervention must be filed with 3 months of the first action in the infringement matter. The intervention is then treated as an opposition. 

The information regarding the opponent must be sufficient to allow the EPO and patent proprietor to identify the party named as the opponent.  An opposition can be filed by a "strawman" and so the information does not need to identify the actual party behind an opposition, but only the entity identified as the opponent to the EPO.  That said, the entity must be a person or a legal entity, and so where a strawman is used it is common to use an attorney or firm, or a shell company.  If the identified entity does not exist the opposition is not admissible.  The representation rules are the same for opponents as applicants; opponents from outside of an EPC contracting state require a professional representative.  It is important to get the opponent correct because an opposition is not assignable as an item of property, and it is rarely possible to change the opponent's identity after filing. 

The grounds of opposition must identify the extent of the opposition, which of the permissible grounds is used in the opposition, the evidence & facts on which the opposition is based, and the relevant arguments. 

The possible grounds of opposition are that the patent: 

• Lacks novelty 
• Lacks an inventive step 
• Relates to subject matter excluded from patentability
• Does not contain sufficient information for the Skilled Person to implement the claimed invention 
• Extends beyond the content of the application as filed 
• Is not industrially applicable 

A patent can be opposed on any, or all, of these grounds, but only grounds properly substantiated by the end of the 9 month opposition period can be relied upon.  

Importantly, patentability requirements such as clarity, support in the description for the claims, and unity of invention are not valid grounds of opposition and cannot be raised in a notice of opposition.  As will be explained in later articles there are exceptions, and it is sometimes possible to add new grounds, or argue issues such as clarity, later in the proceedings. However, this should never be relied upon. 

A ground of opposition is properly substantiated if the EPO & proprietor can understand and evaluate the nature of the objection without conducting their own investigation.  For prior-art based objections, it is necessary to explain the relevant sections of the prior art and how they relate to the claimed invention.  Due to this requirement to substantiate objections, there is little to no benefit in including a "place holder" ground of opposition by ticking the relevant box, or making a cursory objection, as it will likely be immediately dismissed. It is very unlikely to increase the chances of getting something admitted later, and indeed may well turn the opposition division against the opponent. 

The opposition must identify the prior art on which the opponent relies.  Where an opposition relies on additional evidence (such as prior use or experiments), that evidence must be indicated in the notice of opposition but the evidence can, if necessary, be filed later.  An opposition can include witness statements, which can also provide an offer for the witness to be examined verbally during the proceedings. 

The prior art relied upon can be anything eligible as prior art, and the same rules as during examination apply. National prior-rights (unpublished at the patent's priority date) are not admissible.  Where the prior art is not in an official EPO language the EPO can request the opponent to file a translation into one of the EPO's languages, and if they do not file one, the document can be disregarded.  Alleged prior-use must be proven to a high standard including evidence of what was disclosed, to whom, and when. 

A patent can be opposed in its entirety or in part. For example, only some of the claims could be opposed, but it is relatively unusual that all claims are not attacked.  

Opponents should treat the notice of opposition as their one chance to set out their case for the whole process. Although it is sometimes possible to supplement an opposition, this should never be relied upon and all arguments should be included in the opposition to avoid a risk of them being lost.  

The next stage of the proceedings is the Patentee's reply, which we will look at in next week's article. 

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