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12 October 2016
As of 1 July 2016, the European Patent Office (EPO) is aiming to increase the speed with which opposition proceedings are brought to a conclusion and thereby improve legal certainty for all parties concerned.
The opposition procedure allows any person to centrally challenge the validity of a European patent within nine months of its grant without having to attack the patent in multiple national courts. However, the opposition procedure has previously been drawn out, it being possible to take several years for a decision to be reached.
The EPO is now aiming to reach a verbal decision on the validity of the patent from the Opposition Division within 15 months from the expiry of the opposition period.
Several worthy practice notes result. First, and possibly most noteworthy, is that extensions for Proprietors to respond to a Notice of Opposition, previously granted with few questions asked, will now only be granted in exceptional circumstances. The need to generate experimental data might constitute such an exceptional case, but the existence of multiple opponents and many cited documents may not. Furthermore, the Opposition Division will aim to set a date for Oral Proceedings and issue a provisional opinion on the validity of the patent within a couple of months from receipt of the Proprietor’s response. When issuing the summons to Oral Proceedings, the Opposition Division will also set a final date for written submissions. Under previous practice this was commonly one month prior to the oral proceedings but under the new streamlined proceedings it is expressly stated that it will be two months prior to the oral proceedings.
As such, with a limitation now effectively in place on written proceedings, the Opponent’s Notice of Opposition and the Proprietor’s response should be as detailed as possible. It is possible that we will now see an increase in the late submission of documents, in particular further argumentation, amendments or technical data, after issuance of the summons to Oral Proceedings.
Further information on the streamlined position is available from the EPO here.
Once in force, the Unified Patent Court (UPC) is expected to have jurisdiction over patent validity and infringement of European patents in most, if not all 28, EU member states (being a significant subset of the 38 EPO member states). Unlike the EPO’s limited 9 month opposition period revocation can be sought at any time after grant and the UPC may therefore offer third parties another opportunity, in addition to the EPO opposition route, to revoke a European patent centrally for many European territories.
However, the UPC will be independent of the EPO and whilst the Court will be influenced by the well-established case law of the EPO Boards of Appeal, the UPC will not be bound it. As such, it will not become clear for some time whether the new UPC court system will offer a reliable means for revoking European patents. Not least since, the UK referendum decision to leave the EU has resulted in increased uncertainty over the coming into force of the UPC.
The EPO opposition procedure remains, therefore, an important way for third parties to address the validity of granted European patents and the new streamlined procedure offered by the EPO will offer greater legal certainty to all parties involved.
Kirsty Simpson and Karl Barnfather
If you require further information on anything covered in this briefing, please contact Kirsty Simpson (email@example.com; +44 207 940 3600) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP, October 2016