EPO introduces streamlined opposition proceedings
The EPO has published its intention to speed up the opposition process.
The total time needed for a decision in straightforward cases will be reduced to 15 months (currently 19-27 months), calculated as from expiry of the opposition period. This will mainly be achieved by a significant shortening of the written proceedings phase of opposition practice. The new procedure will take effect from 1 July 2016.
The note entitled “Information from the EPO on streamlined opposition proceedings” highlights the intention of the EPO to “bring opposition proceedings to a speedy conclusion and thereby establish legal certainty for all parties to opposition proceedings and the public”. The EPO aims to achieve this by optimising and streamlining its internal workflows leading to "Early Certainty from Opposition", while respecting the general principles governing procedure before the EPO, in particular the right to be heard (Article 113(1) EPC).
We set out some of the key points from the “Notice from the EPO concerning the opposition procedure as from 1 July 2016” below:
Reduction in the amount of time that an opposition is in “written procedure”:
- Point 3 states that “the patent proprietor is invited to file its observations and any amendments to the patent within four months” and “If the opposition division considers it necessary, it will dispatch a communication and invite the parties to reply within a specified time limit. In most cases however the opposition division will issue summons to oral proceedings.”
- Point 5 states that “In order for the proceedings to progress expeditiously, parties should submit all facts, evidence and requests at the beginning of the procedure”.
- Point 8 states that, as a rule, the date of the oral proceedings “will not be earlier than six months after dispatch of the summons”.
- The drive to issue the summons to oral proceedings shortly after the proprietor files its response to the opposition, and at least six months before the oral proceedings, will significantly reduce the amount of time that an opposition is in “written procedure”. This will introduce a new time pressure for the opposition divisions, who will now be expected to issue a summons and preliminary opinion within five months of the patent proprietor’s response (currently opposition divisions take at least 11 months to do this). It remains to be seen if the reduction in time will result in a decrease in the quality of preliminary opinions of opposition divisions.
- Additional time pressure will also be placed the patent proprietor who will be expected to reply to the notice(s) of opposition within a four month period (contrast this with the nine months available to an opponent to prepare its notice of opposition) and will also be expected to set out “all facts, evidence and requests” in its response.
Extensions of time less likely:
- Point 4 states that “The normal period for replying to communications from the opposition division is four months for communications raising matters of substance and two months for other communications (Guidelines E-VII, 1.2). Extensions of time limits are granted only in exceptional cases with duly substantiated requests.”
- Previously, patent proprietors were routinely allowed to extend the period set for response to the notice(s) of opposition from four months to six months. However, it appears that the streamlined process will make it harder to obtain extensions. Our experience is that further extension for the time limit for response in an opposition are already becoming harder to obtain, so “exception cases” will be more difficult to argue.
Mandatory provisional and non-binding opinions of the opposition division:
- Point 8 states “With the summons to oral proceedings, the parties also receive a communication setting out the issues which in the opposition division’s view must be discussed at the oral proceedings. The annexed communication will also contain the opposition division’s provisional and non-binding opinion…"
- Previously, although routinely issued by opposition divisions, this opinion was optional. It will now be provided as standard with the summons. It is of course, preliminary and non-binding, so we will be interested to see how frequently opposition division decisions will deviate from the opinion in future.
Having some certainty of timescale in opposition procedure at the EPO will of course be welcomed, but for more complex cases, this shortening of time scale may not be advantageous.
The new procedure only applies to oppositions and therefore does not affect appeal proceedings. Due to backlogs before some Board of Appeal, it can take at least three years for an appeal case to be heard. Thus, even with the streamlined opposition procedure, it will still take a number of years for cases to be finally resolved before the EPO.
This update was prepared by Mark Ness, Patent Director in our London Office. If you would like further advice on this or any other matter please contact Mark or your usual HGF representative or visit our Contact page to get in touch with your nearest HGF office.