Friday, June 24, 2016

EPO makes changes to speed up Opposition procedure

From 1 July 2016, the EPO is introducing changes to speed up their Opposition procedure. Opposition may be filed up to 9 months after the grant of the patent by anyone who is aware of facts that render the patent invalid. It is a valuable alternative for filing national invalidity lawsuits in different EPC contracting states because the decision is taken centrally before a single body and affects the scope of protection in all EPC states.
However, opposition can currently take 2-3 years to get a final decision (and even longer if one of the parties appeals). By introducing changes, the EPO hopes to reduce a typical opposition to less than 18 months. In general, they are reducing the number of formal requests for parties to respond to each others comments, being more strict on extending time limits, and making oral proceedings the focus of the procedure:

  1. After oppositions are filed, the grounds, facts, evidence and argumentation are forwarded to the proprietor who has a few months to file a response. Previously, the EPO gave 4 months and extensions of the time to reply to 6 months were granted routinely, However, with the new procedure, any extensions to 6 months will only be granted in exceptional circumstances.
  2. After the response of the proprietor has been received, it was normal practice to forward the comments to all opponents, giving them 4 months to file their responses. In the new procedure, they comments will still be forwarded, but no formal time limit will be set to respond. The opponents may still respond of their own initiative, and their comments will still be entered into the proceedings.
  3. The opposition division will then invite all parties to oral proceedings - this is already the case in most opposition cases, so there is no change in practice. However, the summons will always now give at least 6 months notice, and all parties must supply additional comments and facts at least 2 months before the hearing (previously this was 1 month).
  4. The text of the patent at the end of oral proceeding will be considered the final text.
  5. Additionally there have been improvements made in the handling times at the EPO to further reduce delays.   
An overview of the new procedure is found here.
Clipart: (c) CanStockPhoto - www.canstockphoto.com 

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