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