Oppositions, Appeals andOral Proceedings at the EPO

Michael Williams

Overview of EPO procedure

FILE APPLICATION

SEARCH ANDEXAMINATION

ORAL PROCEEDINGS

APPEAL PROCEDURE

ORAL PROCEEDINGS

REFUSALPATENT GRANTED

N

Y

Y N

GRANT?

APPEAL ALLOWED?

Overview of opposition procedure

PATENTGRANTED

ORAL PROCEEDINGS

NATIONAL LAW

OPPOSITIONPROCEDURE

N

Y

APPEALPROCEDURE

PATENT MAINTAINED

PATENT REVOKED

ORAL PROCEEDINGS

OPPOSITIONFILED?

LIMITATIONPROCEDURE

OPPOSITION

• Procedure by which validity of patent can be challenged

• Opposition can be filed by anyone• “Strawman” oppositions allowed• Exception – patent proprietor cannot

oppose his own patent• New central limitation procedure allows

patent proprietor to limit claims

Why file an opposition?

• Challenge takes place centrally at EPO• Cheaper and easier than revocation at

national offices• Can be filed in English• Opponent party to the proceedings• Procedure can be used tactically• (eg create uncertainty, delay final decision,

add cost, systematic oppositions)

Nature of opposition proceedings

• Contentious proceedings between opponent and patent proprietor

• Heard by opposition division consisting of EPO examiners

• Some scope for opposition division to examine of its own motion

• President of the EPO can issue instructions to the opposition division

Grounds for Opposition

• Lack of novelty• Lack of inventive step• Not industrially applicable• Not an “invention” (Article 52)• Excluded from patentability (Article 53)• Invention insufficiently disclosed• Added subject matter

Opposition procedure

• Notice of opposition must be filed within nine months of date of grant

• Notice of opposition sets out the grounds on which the opposition is based

• Patent proprietor given four months to respond (extendable to six months)

• Usually one or more further rounds of submissions

• Oral proceedings usually appointed• Decision usually taken at oral proceedings

APPEAL

• Procedure by which someone adversely affected by a decision of the EPO may challenge that decision

• Heard by a Board of Appeal• Apply principles of court proceedings• Independent of the President of the EPO

Appeal procedure

• File notice of appeal and pay appeal fee within two months of “notification” of decision

• File statement of grounds of appeal within four months

• Procedure then dictated by Board of Appeal

• Board may appoint oral proceedings

ORAL PROCEEDINGS

• Article 116 EPC states:“Oral proceedings shall take place … at the request of any party to the proceedings”

• Thus, if oral proceedings are requested, an adverse decision cannot be taken until oral proceedings have been held.

• Oral proceedings are not interviews

Overview of procedure

• Date for hearing set by division/board• Any written submissions/amendments

must be filed one month before the hearing

• Case presented orally• Decision usually announced at end of

hearing

Oral proceedings during examination

• Case heard by three–member Examining Division

• Not in public• Can be fairly informal• Applicant presents his case, issues are

discussed, and Examining Division then takes decision

Oral proceedings during opposition

• Heard by three-member Opposition Division

• Adversarial in nature• Held in public• More formal – need to treat each side

equally

Oral proceedings during appeal procedure

• Heard by Board of Appeal• Fairly formal, in keeping with more judicial

nature of appeal procedure• Nature of proceedings depends on whether

appeal is from examining division or opposition division

• (e.g. applicant only, proprietor and opponent)• Case may be remitted to first instance• Or final decision may be taken