EPO Practice: Early Certainty From Oppositions

The European Patent Office (EPO) recently announced a new, streamlined procedure for oppositions under its ‘Early Certainty for Oppositions’ initiative. In particular, from 1 July 2016, straightforward opposition cases should now be decided at first instance within 15 months from the end of the nine-month opposition-filing window. This not only represents a shortening of the opposition procedure by around a year compared with current average timescales, but also benefits third parties by helping to provide legal certainty in a more timely manner. It, however, places additional pressure on patent proprietors who may need to prepare their defenses more quickly.

What opposition are applicable?

The new procedure will apply to ‘straightforward’ oppositions, but not to oppositions of a more complex nature, e.g., those with more than one opponent or those where evidence of public prior use is submitted in attacking the patentability of the claims. Since the majority of oppositions are by a single opponent and arguments over public prior use are rare, most cases will be processed under the streamlined procedure.

Are extensions available?

For exceptional cases only. At present, after the nine-month window for filing an opposition has closed, the EPO invites the proprietor to respond to the opposition within a four-month term, but this term may be freely extended by two months, and in some cases even further. Under the new procedure, extensions to the initial four-month term will be allowed in exceptional cases only. This will have a significant impact on the handling of oppositions as it will shorten the typical time available for preparing responses by up to a half, or even more.

When will summons be issued?

Within three months. Following the reply by the proprietor, opposition divisions have been known to sit on oppositions for between six months and two years before issuing summonses to oral proceedings. Under the new procedure, a summons should be issued within three months. This again represents a significant shortening of the EPO’s evaluation process and will lead to oral proceedings – and therefore decisions – reached much faster than at present.

As a rule, the summons will be issued at least six months before the date of the oral proceedings and the deadline for filing final written submissions will normally be set at two months before the oral proceedings. Providing at least six months’ notice of the oral proceedings date should ensure that there is sufficient time for the parties to react to the summons and prepare further arguments and/or amendments ahead of the oral proceedings.

What is the effect on the EPO Boards of Appeal?

The decision announced at the oral proceedings is a first-instance decision and this is subject to appeal to the EPO’s Boards of Appeal. The Boards of Appeal are independent and not bound by the new streamlining initiative, so arguably this could simply lead to cases reaching the appeal stage sooner and merely increasing the already sizeable backlog at the Boards of Appeal; it is not uncommon for an appeal at the EPO to take three or more years to reach a final decision. However, not all cases are appealed and the new streamlining initiative will be beneficial for cases where the first-instance decision is the final decision.

What are some recommendations?

• Opponents should aim to present their full case promptly from the outset, and
• Proprietors should aim to reply to an opposition within the initial, four-month term set by the EPO with a full and complete response, including amendments to the patent where appropriate.

More information on the streamlined opposition procedure can be found on the EPO’s website, here and here, and in this EPO video on oppositions.