Oppositions (3) – Patentee’s reply

The patentee's reply is their first opportunity to comment on the opposition, and although not as limiting as the notice of opposition is a critical first-step in defending an opposition. 

Once the 9 month opposition period has expired the EPO will set the patentee a deadline for filing their response, which is invariably 4 months.  It is worth noting that this deadline is set after the end of the opposition period, not the actual date an opposition was filed. This means if an opposition is filed well before the 9 month period is over the patentee will have more time to review and prepare a response. 

In their response the patentee can argue against the opposition, request amendments to the claims, and/or file auxiliary requests with amendments to give fall-back positions.   

At the EPO a set of claims is considered as a single entity, and so if one claim is unallowable the whole request is unallowable; the opposition division will not go on to consider validity of the dependent claims.  This means dependent claims by themselves do not provide fall-back positions but must be included in an independent claim if they are to be relied upon. Dependent claims are still, though, valuable as it can be significantly easier to amend to include a dependent claim in an independent claim compared to an amendment from the description. 

Amendments to the claims during opposition can only be ones which are occasioned by a ground of opposition.  It is not therefore permissible to "tidy up" a claim set or add extra claims during an opposition.  If a request includes amendments which are not occasioned by a ground of opposition the request will not be admitted into the proceedings. Particular care needs to be taken not to introduce any accidental amendments (eg adding or removing reference numerals) since these can lead to a request not being admitted, and if only noticed at a late stage, a replacement request could be refused as being late filed. 

If an amendment does not find basis in a direct combination of granted claims then the amendment is open to examination for clarity to the extent that the amendment does not come from the claims.  This can be a powerful objection and often forms a squeeze against an added matter objection as a fix for the added matter problem may cause a lack of clarity.  This highlights the importance of dependent claims. 

An amended set of claims can include multiple independent claims (contradicting the rules during examination), but only where the claims arise from dependent claims which would be lost due to an amendment to the independent claim. For example, if claims 2 and 3 were separately dependent on claim 1, it can be permitted to present a first independent claim as a combination of claims 1 and 2, and a second independent claim to claims 1 and 3. 

After grant a patent cannot be amended to extend the scope of protection, and therefore all amendments must stay within the scope of the independent claims as granted. 

The patentee does get a further opportunity to file requests and arguments after the EPO have issued their preliminary opinion.  However, filing requests at the start means they receive full attention and a preliminary opinion which assist in arguing at the oral proceedings.  A concern is often raised by patentees that filing requests at the start suggests a weakness in your case, but the EPO are very good at partitioning requests and forming opinions independently on each one.  It is also sometimes suggested to hold back requests to surprise the opponent at the last minute. In our view this simply leads to the EPO being equally surprised and reduces the chances of the request being properly considered.  Linked with recent changes to the rules of the Boards of Appeal regarding when requests must be filed, it is almost always a better strategy to file requests early. 

Since the Opposition Division will form their first view of the merits of the case based on the patentee's reply, presenting a strong, comprehensive reply gives the patentee the best prospects of success. Strategies such as keeping one's powder dry are risky and often lead to arguments being lost or weakened. 

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