The European Patent Office (EPO) has recently announced some changes to the current procedure for opposing a European patent. These changes which will take effect from 1 July 2016.
The rationale to the changes is that the EPO wishes to bring opposition proceedings to a speedy conclusion and thereby establish legal certainty for all parties to opposition proceedings and the public. In particular, the EPO is to reduce the total time needed for a decision in 'straightforward cases' from an average of around twenty six months to fifteen months calculated from the expiry of the nine month period for filing a notice of opposition against a European patent after it has been granted.
To streamline the internal opposition process in this way, the patentee will only be granted an extension of time for filing a response to a Notice of Opposition if they can show the case is exceptional and submit a duly substantiated request. The changes also appear to be aimed at encouraging the Opposition Division to become involved in the written proceedings after the first round of correspondence between the parties by issuing a substantive communication, such as a Summons to attend Oral Proceedings, instead of allowing many rounds of submissions and counter-submissions between the parties. Under the new streamlined process, at least six months’ notice will be given of the date of the Hearing held at the EPO in Munich or The Hague meaning that, if a case follows the streamlined opposition process, the EPO will seek to call the parties to the Hearing within around seven months after a notice of opposition is filed.
We note the reduced period of fifteen months corresponds to the planned period for revocation proceedings at the Unified Patent Court (UPC) so the EPO may have made these changes fearing that third parties may possibly choose to file an albeit far more expensive revocation action at the UPC for a speedy decision instead of filing a relatively inexpensive notice of opposition at the EPO which would otherwise take over two years to conclude. It remains to be seen whether the EPO can adhere to the time limits it has now set itself. Furthermore, should a decision of the Opposition Division be appealed, there are often lengthy delays in front of the EPO Boards of Appeal. Therefore, it may still be a number of years until the ultimate fate of a European patent is known.
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