IP Cases & Articles

EPO speeds up opposition proceedings from 01 July 2016 

​The European Patent Office (EPO) is introducing a "streamlined" opposition procedure that it says will simplify opposition proceedings and deliver decisions faster, while giving parties more time to react and prepare for oral proceedings.

Under the streamlined procedure, which comes into effect on 01 July 2016, the EPO expects to cut the overall duration of straightforward opposition cases from anywhere between 19 and 27 months to just 15 months. The reduction in timeframe is said to be achieved through improved EPO internal handling procedures together with new deadlines for the parties.

The full EPO Notice can be found here: http://www.epo.org/law-practice/legal-texts/official-journal/2016/05/a42.html

And a useful video can be found here: https://e-courses.epo.org/course/view.php?id=274#section-4

The main changes are:

  • The patentee will be invited to file its observations and any amendments to the patent within four months. Extensions to six months will only be granted in exceptional circumstances. Under the current procedure extensions to six months are granted automatically and extensions to eight months are granted in exceptional circumstances.
  • The patentee's reply to the opposition will be forwarded to the opponent for information, but no deadline for filing a response will be set. Any response by the opponent will, however, will included in the file. Currently when the patentee's reply contains amendments it is forwarded to the opponent with a four month deadline for filing any response.  
  • At the same as the patentee's reply is forwarded to the opponent, the opposition division will prepare the next action. This is most likely to be a summons to oral proceedings with the preliminary, non-binding opinion of the opposition division, but it could be a request for further information from the parties. The preliminary, non-biding opinion of the opposition division therefore may now be of lower quality, if it needs to process the opposition more quickly. Further, if the opponent files comments in response to the patentee's reply, these may not yet have reached the opposition division by the time it prepares its preliminary, non-binding opinion.
  • Parties will now get at least six months advance notice of oral proceedings and the final deadline for making submissions and/or amendments in advance of the oral proceedings is now more likely to be two months rather than one month before the oral proceedings.

The EPO notice does not specifically address whether the new procedure applies to existing cases, but it would be wise to take a safety first approach. The new procedure does not apply to appeal proceedings.

For more information

For more information and advice please contact your usual D Young & Co patent advisor.

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