European Patent Office introduce Streamlined Opposition Proceedings

13 June 2016

The European Patent Office (EPO) has announced that, from 1 July 2016, it will streamline its internal procedure when examining oppositions to granted European patents, so that in straightforward cases the total time needed for a decision on the opposition will be reduced to 15 months calculated from the latest date that an opposition can be filed (9 months after the date on which the European patent was granted). Since most oppositions are filed shortly before this latest date, this offers for the first time the possibility that an opponent, by keeping the opposition simple, may obtain a decision within about a year, comparable with the expected timescale of an action in the Unified Patent Court when that Court opens for business, expected to be in 2017.

According to the 2015 Annual Report of the EPO, the average duration of oppositions was 26.1 months. Therefore, the reduction to a maximum of 15 months represents a substantial improvement.

Oppositions are special proceedings which any person can start after a European patent has been granted, seeking to have the patent cancelled (“revoked”). According to published data, overall about 5-6% of granted European patents are opposed, although this is higher for patents on chemistry and biotech inventions. Therefore, the EPO opposition procedure is a potentially important control, preventing invalid patents from hindering scientific progress. 

Most oppositions are decided at a Hearing in the EPO offices in Munich or The Hague. Under the new streamlined procedure, at least 6 months prior notice will be given of the date of the Hearing. More typically, we would expect that about 6 to 8 months prior notice will be given. This means that, if the case follows the streamlined procedure, the EPO Opposition Division will aim to call the parties to the Hearing within about 7 months after the opposition is filed. 

It appears that the choice of whether to try to reach the decision within 15 months is a matter of the EPO’s discretion. Nevertheless, there seems to be nothing to stop an opponent or a patentee from requesting streamlined handling if it considers that the case is appropriate for that.

It remains to be seen whether this very accelerated timetable is achievable by the EPO, and how readily an opposition will be moved off the fast track if complexities arise or there is a risk of one side or both suffering an injustice from the highly constrained timescale.

It has been predicted that demand for the EPO opposition procedure may diminish when the Unified Patent Court opens for business. That Court will have a similar power to revoke European patents, unless the patent owner opts it out of the Court’s jurisdiction. Moreover, the revocation action will be able to be brought before the Court at any time during the life of the patent, not only in the first 9 months. The introduction of the streamlined EPO opposition procedure may be a sign of new competition developing between the tribunals that decide patent disputes in Europe.

Our Expert
David Brown
David Brown
Location: Bristol (UK)

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