Oppositions (4) – Preliminary opinion

Usually the preliminary opinion of the opposition division is issued after the patentee's reply to the opposition.  Where the case is particularly complex or the patentee's reply significantly changes the focus EPO may invite further submissions prior to issuing the preliminary opinion but that is in a minority of cases.  Equally, a party may choose to make further submissions of their own volition. Although such submissions are not in a formal opportunity to comment the opposition division will usually take them into account. 

The preliminary opinion is exactly what its title says - the preliminary opinion of the opposition division on the merits of the opposition.  The precise form of the preliminary opinion is not specified, but generally it will summarise each side's arguments and give the opposition division's initial view.  Where they really can't form a view they will highlight the point as requiring further discussion.  

As well as the substantive issues the preliminary opinion should also address any legal issues such as whether the opposition is validly filed, the status of any prior-use assertions, and the need to examine any witnesses which have been offered.  The preliminary opinion should address any auxiliary requests that have been filed by the parties such that a complete picture is available. 

Usually the preliminary opinion is issued together with a summons to oral proceedings at which the case will be brought to a decision. Occasionally this is not done, for example where the opposition division considers further written discussion will help advance the case, or recently where oral proceedings were not possible in the early stages of the COVID-19 pandemic.  Exceptionally oral proceedings may not be needed if the parties have not requested them. 

Where oral proceedings are called the parties will be provided with a deadline by which final written submissions can be made. Those submissions can include further argument and auxiliary requests.  This is the last stage at which additional requests will be admitted without the discretion of the opposition division, so it is important to take this opportunity to ensure all required requests are on file.  There are some exceptions to this rule, for example where the preliminary opinion reverses at the oral proceedings.  In such cases a new request to attend to the change should be admitted (but it is always safer to file earlier, even if it appears the request will not be needed). With the tightening of rules on new requests at the appeal stage it is now even more important to submit all possible requests either in reply to the opposition or at this stage. 

Any new prior art filed at this stage is only admitted at the discretion of the opposition division because that should have been filed during the 9 month opposition period.  New prior art will only be admitted if is in response to a significant change in the case such as a new auxiliary request or a point of construction that has changed the claim meaning significantly.  A simple change of mind, or further research, by the opponent is very unlikely to be a reason for admitting more prior art. 

The final written submissions after the preliminary opinion lay the foundations for arguments to be made at the oral proceedings.  The submission should therefore clearly set out the points where a party disagrees with the preliminary opinion and explain why it is wrong. 

The preliminary opinion is to form the basis for discussion at the oral proceedings and is not a final decision.  It is absolutely the case that skilled advocacy at the oral proceedings can reverse a preliminary opinion.  Opposition divisions approach the oral proceedings with an open mind and take on board the final verbal arguments of the parties when arriving at a decision. 

The preliminary opinion is a very useful stage in the opposition process, enabling the parties to understand the opposition division's view of the case and to respond appropriately in writing.  This avoids the parties being surprised at the oral proceedings, and helps them focus their verbal arguments on important issues rather than having to re-present their entire case.   

Next week we will look at the oral proceedings as the last stage in the opposition process. 

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