INFORMATION FROM THE EPO
Opposition procedure in the EPO
The following is a revised version of the notice on the opposition procedure before the EPO published in OJ EPO 1989, 417 ff. It reflects the further developments in opposition procedure that have come about in the light of case law and practice.
1. General principles
The EPO's aim is to establish as rapidly as possible, in the interest of both the public and the parties to opposition proceedings, whether, and to what extent, a patent may be maintained on the basis of an opponent's submissions. In particular the EPO seeks to achieve this by means of an efficient and streamlined procedure. At the same time, the general principles governing the procedure before the EPO and in particular the principle of the right to be heard (Article 113(1) EPC) must be respected.
2. Summary of the procedure
2.1 Procedural steps taken before or after expiry of the opposition period, depending upon the facts of the case:
2.1.1 Communication of a notice of opposition to the patent proprietor, immediately after its filing at the EPO.
2.1.2 Examination of an opposition for admissibility.
2.1.3 Invitation to the opponent to furnish within two months the cited documents or evidence, if not already submitted with the notice of opposition (see point 4.2 below).
2.2 Procedural steps taken after expiry of the opposition period:
2.2.1 After examination for admissibility or after expiry of the time limit set by the opposition division in a communication under Rule 56(2) EPC or of the time limit set in the invitation referred to in point 2.1.3 above (whichever is the later), the patent proprietor is invited to file within a specified period (usually four months) his observations (in particular on the facts, evidence and arguments submitted) and any amendments to the patent (Rule 57(1) EPC).
2.2.2 The observations and any amendments filed by the patent proprietor are immediately communicated to the opponent (Rule 57(3) EPC).
If the patent proprietor responds to the notice of opposition by filing amended patent documents, the communication to the opponent also invites him to comment within a specified period (normally four months; see Guidelines for Examination in the European Patent Office, D-IV, 5.4, first paragraph). If the proprietor does not file amended documents, his observations are forwarded for information to the opponent.
If both the patent proprietor and the opponent request oral proceedings, the proprietor's observations - even if amendments have been made or requested - are sent to the opponent purely for information. The dossier is forwarded immediately to the opposition division, which will decide how the procedure is to continue (eg fixing a date for the oral proceedings or inviting the parties to file further observations).
2.3 Subsequent procedure
2.3.1 If, during the course of the procedure, the opposition division considers it necessary to seek further clarification of the facts or to hear one party's observations on the submissions of another party, the party concerned will be invited to comment on the submissions within a specified period (normally four months) (see Guidelines D-VI, 3.1).
2.3.2 If oral proceedings are requested by one of the parties or considered expedient by the opposition division itself, a date for oral proceedings is fixed (for further information on oral proceedings, see point 9 below).
2.3.3 If no oral proceedings are to be held and if no further clarification of the facts is necessary (ie the decision can be based on grounds on which the parties have had an opportunity to comment (Article 113(1) EPC)), the opposition will be decided on immediately.
2.4 Closure of proceedings
The proceedings will be concluded in every case with a decision (Article 102 EPC).
If the patent proprietor no longer wishes to maintain the patent, he can request that the patent be revoked. The patent is then revoked because no text approved by the proprietor is available (Article 113(2) EPC). The same applies if the proprietor informs the EPO that he surrenders (or abandons or renounces) the patent in respect of all the designated contracting states.
If the opposition is withdrawn, the opposition division can terminate the proceedings by means of a decision (see point 8.2 below).
3. Multiple opponents
If several oppositions to a European patent are filed, they will be considered jointly. The notices of opposition and all further submissions made by individual parties will be sent or notified to all other parties.
Some important aspects of the procedure are considered in more detail below.
4. The notice of opposition and reply of the proprietor
4.1 Opponents are recommended to use Form 2300 (also available at http://www.european-patent-office.org). The notice of opposition may also be filed by fax.
Opponents should also file, with the notice of opposition, all relevant papers including copies of new documents cited (even those available in the EPO documentation), translations of any documents not in an EPO official language, and, wherever possible, a copy of any further evidence indicated in the notice.
Rule 56(1) EPC stipulates the requirements that must be satisfied within the opposition period.
4.2 Under Rule 55(c) EPC, the notice of opposition must contain an "indication" of the facts, evidence and arguments in support of the grounds of opposition. The opponent must therefore give at least one ground for opposition under Article 100 EPC and indicate the facts, evidence and arguments adduced in support of the ground(s). If he fails to satisfy this requirement, the opposition is rejected as inadmissible.
The evidence and arguments indicated may also be submitted subsequently, and the opponent is allowed a short period (two months) in which to do so (see point 2.1.3 above and Guidelines D-IV, 1.2.2.1(v)).
4.3 The patent proprietor should submit a full response to the opposition(s) within the time limit set (see point 2.2.1 above), ie all the facts, evidence and arguments in support of his case. If necessary, he should submit amended documents to meet the grounds of opposition adduced.
If the opponent submits facts that are undisputed and are neither self-contradictory nor contested by the patent proprietor, these will normally be deemed to be true, even without supporting evidence, and be taken as a basis for the decision without further examination (Guidelines E-IV, 1.2).
5. Documents which must be communicated to other parties
Such documents are to be filed in a sufficient number of copies (see Rule 36(4) EPC). If documents are filed by telegram, telex or fax (see notice in OJ EPO 1992, 306), the requisite number of copies must be supplied without delay.
6. Time limits
Time limits fixed by the EPO in opposition proceedings will be extended on request up to a total of six months. Requests for a longer extension will only be allowed in exceptional circumstances (see notice in OJ EPO 1989, 180). For information on extensions in cases where a request has been made for accelerated processing, see point 14 below.
7. Facts and evidence not submitted in due time
7.1 The opposition division may disregard facts or evidence which are not submitted in due time by the parties concerned (Article 114(2) EPC), unless they are of prima facie relevance, ie they would affect the outcome of the decision to be taken.
7.2 In order that the proceedings progress expeditiously, parties should, in principle, submit all facts, evidence and requests at the beginning of the procedure. Where this is not possible, the facts, evidence or requests must be submitted at the earliest opportunity. If relevant facts or evidence are submitted by a party only at a late stage of the proceedings without very good reason and if, as a consequence, the costs of oral proceedings or taking of evidence are incurred by another party, this may be taken into account in the apportionment of costs (see point 12 below).
8. Examination by the EPO of its own motion
8.1 As a general rule, examination is confined to the parts of the patent contested by the opponent and the grounds put forward by him. If the patent proprietor submits amended documents, the amended parts must be checked for compliance with all the requirements of the Convention. A more extensive examination will only be undertaken by the opposition division (Article 114(1) EPC) if facts come to its attention which clearly wholly or partially prejudice the maintenance of the patent (see Guidelines D-V, 2). The opposition is not however an opportunity for the EPO of its own motion to undertake a complete re-examination of the patent.
8.2 If a sole opposition or all oppositions are withdrawn, the opposition proceedings may be continued by the EPO of its own motion. This is always the case when the examination necessary for the decision has already been concluded, or can be concluded without the participation of the opponent(s) (see Guidelines D-VII, 6.3) and if it appears that the patent cannot be maintained unamended. It is also the case if the proprietor has himself submitted amendments (see Article 113(2) EPC).
9. Oral proceedings
9.1 In many instances the opposition division is already in possession at the written procedure stage of all the facts, evidence and arguments needed to arrive at a decision. Parties should therefore refrain from requesting oral proceedings as a matter of course.
9.2 The date on which the oral proceedings are to take place is specified in the summons. Requests to alter this date may only be considered in exceptional, duly substantiated cases (see notice in OJ EPO 2000, 456).
9.3 With the summons to oral proceedings, the parties also receive a communication setting out, and if need be explaining, the issues which in the opposition division's view must be discussed at the oral proceedings (see Guidelines D-VI, 3.2, and E-III, 5), where applicable making suitable reference to certain parts of the file. The summons will also fix a final date for submitting observations and amendments (Rule 71(a) EPC).
9.4 The subject of the oral proceedings are the crucial issues listed in the communication referred to in point 9.3 above, but the parties are not confined to those issues alone, provided that their additional submissions are relevant.
9.5 In oral proceedings, the opponent generally speaks first and the proprietor second. Each party is usually given two opportunities to speak, the first to state his case and the second to reply to the other party. The opposition division questions the parties to clarify the facts and the legal position. At the end of the oral proceedings, usually after a brief adjournment for deliberation, the chairman normally pronounces the decision of the opposition division. A brief statement of grounds may also be given. This decision is notified to the parties in writing without delay (Rule 68(1), second sentence, EPC).
9.6 Oral proceedings are generally concluded by a decision based on the parties' final submissions and requests voiced during the oral proceedings. To this end, the representatives of the parties should, in principle, come to the oral proceedings prepared to consider possible fall-back positions and armed with the authority to take a stand on behalf of their clients on any developments which may occur in the course of the proceedings.
9.7 If new facts or evidence (eg a new document) are submitted for the first time at the oral proceedings, they are to be regarded as late-filed (Rule 71a EPC) and will only be considered if they are of such prima facie relevance that the opposition division, in the exercise of its discretion, admits them under Article 114(2) EPC. In such cases, the proceedings may be briefly interrupted to enable the other parties to study the new submission. If it is unreasonable to expect the other parties to be able to formulate an adequate response, the proceedings must be continued in writing.
10. Minutes of oral proceedings
The minutes of the oral proceedings, where appropriate together with the decision, are sent to all the parties as soon as possible.
11. Hearing of witnesses
The evidence of a witness will be heard, if it is offered and if the division considers it necessary (Rule 72 EPC). The opposition division will normally always allow (and may itself require) oral evidence to be given where a contentious issue is to be supported by the evidence of witnesses, as for example in the case of prior use. The testimony of a witness, like any other form of evidence, is subject to the unfettered consideration of the opposition division (see Guidelines E-IV, 1.2 and 4, and "Case Law of the Boards of Appeal of the European Patent Office", VI-J, 4 and 5).
12. Costs
12.1 Each party generally bears its own costs. Under Article 104(1) EPC the costs may be otherwise apportioned "for reasons of equity". This however is limited to "costs incurred during taking of evidence or in oral proceedings", which means for example that the patent proprietor has to bear the costs involved in replying to a notice of opposition even if the opposition subsequently proves to be wholly unfounded.
12.2 If a party has exercised delaying tactics or conducted itself unreasonably, the EPO may decide on a different apportionment of costs. Examples of the apportionment of costs in special cases are given in the Guidelines D-IX, 1.4.
13. Intervention of the assumed infringer
13.1 A third party may intervene in opposition proceedings, under the conditions stipulated in Article 105 EPC, as long as they have not been concluded (see Guidelines D-VII, 7). If the intervention is properly filed, it is treated as an opposition. This means that regardless of the stage at which he becomes a party to the proceedings the intervener enjoys essentially the same rights as any other party.
13.2 If the intervener introduces into the proceedings new facts and evidence which appear to be crucial, these must be taken into consideration.
14. Accelerated processing of oppositions
In cases where an infringement action in respect of a European patent is pending before a national court of a contracting state, a party to the opposition proceedings may, at any time, request accelerated processing (see notice in OJ EPO 1998, 361).
The proceedings can only effectively be accelerated, however, if the parties make their submissions promptly and in full and strictly adhere to the time limits and dates set by the EPO. In such cases, requests to extend time limits over and above the normal four-month period can only be granted in exceptional, duly substantiated cases.