In summary

This article examines patent protection at the EPO and the process by which third parties can go through opposition.

Discussion points

  • How do patent oppositions work?
  • Oral proceedings
  • Differences compared to national invalidity proceedings
  • Recent changes to opposition practice
  • Opposition strategy
  • Additional benefits of the opposition procedure

Referenced in this article

  • Revised Rule of the Boards of Appeal

The European Patent Office (EPO) allows applicants to seek patent protection in up to 45 countries via a single, centralised patent application process. As part of this streamlined offering the EPO also operates a centralised procedure by which third parties can seek invalidation of patents granted by the EPO. This process is referred to as ‘opposition’. The ability to attack a granted patent centrally with a view to limiting or revoking it in all designated countries simultaneously is extremely efficient. It is therefore no surprise that the opposition system is well used by businesses wanting to manage risk against third-party patents.

Any person wishing to object to a patent granted by the EPO has a nine-month window, starting from the publication of the grant of the patent, in which to file an opposition. The costs associated with bringing an opposition are typically an order of magnitude lower than performing a patent challenge before a national court of a single country. As such, EPO oppositions are a very cost-effective method of invalidating patents in Europe.

How do they work?

The opposition process at the EPO is predominately paper-based and front-loaded but an oral hearing is available to finally settle the matter. An opponent who wishes to seek revocation or limitation of a patent has a nine-month window from the date of publication of grant of the patent to file an opposition with the EPO, including attending to payment of an opposition fee (currently €880). This deadline is not extendible.

When filing the opposition, as far as possible, an opponent should include all the evidence and arguments that they wish to rely on during the course of the opposition proceedings in their notice of opposition. This includes setting out each of the grounds of opposition on which the opponent seeks revocation of the European patent and the extent to which the opponent desires revocation of the patent.

Although oppositions seek to invalidate (the whole or a portion of) a patent, the proceedings will only consider the following grounds of opposition:

  • the patent comprises added subject matter (the claimed invention was not disclosed in the application as originally filed);
  • the invention is insufficiently disclosed (the invention cannot be reproduced);
  • the invention is not patentable because it is not new, does not involve an inventive step, is not susceptible of industrial application, is not regarded as an invention (ie, falls within one of the exclusions to patentability); or
  • the subject matter falls within one of the exceptions to patentability.

The patentee will be afforded the opportunity to respond to any oppositions filed in respect of the patent, including filing limitations to the claims (as required) during a four-month window set by the EPO. This deadline is generally only extendible on request in exceptional and duly substantiated cases. In view of the front-loaded nature of EPO opposition proceedings, the patentee should provide all the evidence, amendments and arguments that they wish to rely on in their reply to the notice of opposition.

The EPO will generally issue a summons to oral proceedings setting out a proposed date for the oral proceedings and a final deadline for written submissions by both parties. This summons is generally accompanied by a preliminary opinion setting out the opposition division’s view as to the merits of each party’s case and their non-binding opinion as to the state of the patent and any auxiliary requests (generally in the form of claim limitations) in view of the objections raised by the opponents. The written submissions deadline is usually two months before an oral hearing is scheduled to decide the matter. This deadline is the final opportunity for both parties (the patentee and the opponents) to file arguments and amendments to their case. Submissions after this date will only be admitted into the proceedings at the discretion of the opposition division based on prima facie allowability criteria.

The oral proceedings held by the EPO for oppositions are typically held by video conference and last only one day (on rare occasions, two days) and a verbal decision is handed down at the end of the day (and formalised in writing with reasoning, generally one to three months after the date of the oral proceedings).

All opposition proceedings are open to the public.

Generally, the EPO seeks to issue its first instance decision, within 15 to 24 months from expiry of the opposition period. If corresponding proceedings have been instigated in the national courts, then it is also possible to request acceleration of opposition proceedings. Further fast-tracking will occur automatically by the EPO when it is informed by the Unified Patent Court (UPC) or a national court that an action relating to the European patent (or a unitary patent validated therefrom) has been brought before it (further details provided below).

Decisions reached at first-instance opposition hearings can be appealed to the EPO Boards of Appeal. The appeal process is not as streamlined as the opposition procedure, but the Boards are working hard to clear the current backlog of cases with a view that by 2025 no more than 10 per cent of pending appeal cases should be older than 24 months. Referring to the EPO Boards of Appeal annual report 2023, only 13.4 per cent of appeal cases are older than 30 months.

Oral proceedings

As with the patent examination process before the examining division (also referred to as ‘patent prosecution’), cases at opposition are generally heard by a trio of members who make up an opposition division. The opposition division is comprised of:

  • a first member, who will take the lead on reviewing each of the parties’ submissions during the written procedure;
  • a second member, who will be charged with taking the minutes at the oral proceedings; and
  • a chair, who will be responsible for running the oral proceedings and safeguarding parties’ rights to be heard.

The three members are experienced individuals, with at least two being skilled in the technical area to which the patent relates.

Although the language of the procedure is generally the language of the patent under challenge, submissions at hearings may be made in any EPO language (English, French or German) and interpreters are provided by the EPO on request. Oppositions and appeals require a range of skills, including meticulous case analysis, drafting (of submissions and amendments) and oral advocacy. The key is to present the story that will underpin a winning case. This must be framed sensitively during the written procedure, using the best technical evidence available.

Ultimately, the opposition division will decide whether the patent is to be maintained (ie, as granted or in an amended form) or revoked in its entirety.

Both the legal tests and the protocols governing when and how submissions may be made during opposition are unique to these proceedings. This is especially true regarding appeals following the introduction of the revised Rule of Procedure of the Boards of Appeal. As such, it is vital to engage European patent opposition specialists in such matters.

The EPO has greatly increased its video conferencing capability since the covid-19 pandemic, to enable more hearings to be conducted remotely. This has been valuable for both opponents and patentees – reducing the cost of hearings and enabling more individuals to attend (both from the parties to proceedings and from the wider public).

Differences compared to national invalidity proceedings

Although the opposition division does have the power to issue costs awards against parties in certain circumstances (eg, where an abuse of process occurs), unlike many national invalidity proceedings, both sides typically bear their own costs. This prevents parties from outspending the other side to create the threat of a potentially excessive costs award.

Another important difference between national proceedings and EPO opposition proceedings is that, even if an opponent withdraws from an opposition, the EPO may nevertheless decide to continue with proceedings of its own volition; for example, if it is of the preliminary opinion that any one or more grounds of opposition prejudice the maintenance of the patent. Accordingly, once the process has started, attempting to reach a settlement with the patentee is not necessarily straightforward.

In addition, unlike national proceedings, there is no disclosure requirement before the EPO. As such, this greatly simplifies the procedure and avoids the inadvertent publication of irrelevant, yet commercially sensitive, company information.

It is also worth emphasising that the EPO is solely concerned with the validity of patents, not matters of infringement.

Recent changes to opposition practice

The Rule of Procedure of the Boards of Appeal now make it much more difficult for parties to submit new evidence, or even new arguments, into later proceedings if such things were not included at first instance (ie, before the opposition division). These changes reflect the attitude of the Boards of Appeal that appeal proceedings are not intended to be a ‘second bite at the cherry’ but an opportunity to correct errors in the referred decision, based on the arguments and evidence that were presented in the first instance. Accordingly, parties should ensure that everything that they could conceivably wish to rely on is included in opening opposition submissions, otherwise it may be off limits at appeal.

As mentioned above the EPO have set out that they will accelerate the processing of oppositions if it is informed of parallel infringement or revocation proceedings before the Unified Patent Court or a national court or competent authority of a contracting state. This acceleration endeavours to greatly reduce the timeframe from the expiry of the opposition period to decision. The impact of this acceleration will depend on when the EPO is informed that the proceedings have been instituted. For example, if the EPO is notified of parallel court proceedings during the opposition period (ie, in the nine months after grant of the European patent), the proprietor will be invited to comment on the opposition within three months (instead of the usual four months), and summons will be issued within two months of receipt of the proprietor’s reply, summoning the parties at minimum notice. If the EPO is notified after expiry of the opposition period but before the proprietor’s reply to the opposition, summons to oral proceedings will be issued within two months of receipt of the proprietor’s reply at minimum notice. If the EPO is notified after the proprietor has replied but before summons has been issued (or after summons has been issued), summons to oral proceedings will be issued (or reissued) within two months of receipt of the information on parallel proceedings at minimum notice to the earliest possible date. In each of the above cases, the opposition division will endeavour to issue the decision and the minutes within one month of the oral proceedings.

Opposition strategy

As with so many forms of contentious proceedings, it is important before embarking on an opposition to consider what a commercial success would look like in a given scenario. There is often a range of competing factors that must be balanced. For example, do you need to completely remove a patent from the landscape or is it sufficient to force the patentee to limit its patent in a particular direction? Knowing how far you need to limit a patent so as to avoid infringement ensures that efforts and costs are concentrated where they are most valuable.

From a wider business context, it should be considered how a patentee might react in reply to an opposition to their patent. Do you want them to know that you are the party objecting to their patent, or should the patent be attacked anonymously? Raising your head above the parapet might draw attention to your business and perhaps your own patent portfolio. That said, there might also be advantages to appearing on the patentee’s radar. As opposition proceedings are often more cost-effective in invalidating (or limiting the scope of) a patent, these proceedings can provide an effective measure in ensuring potential threats are de-risked or limited.

It is advisable to be especially careful regarding what arguments are placed on file during opposition proceedings, particularly in sectors where there is a high degree of technical overlap between the products or processes of the parties. Failure to adhere to a consistent story where multiple parallel proceedings are pending can often undermine your own patent position.

Additional benefits of the opposition procedure

Because the EPO operates a high standard of examination, patents that survive the EPO opposition processes are likely to stand up well to scrutiny during national proceedings. Moreover, many jurisdictions look to the EPO on certain matters of case law, where the law may be more comprehensively developed. Examiners at the EPO also have a great deal of experience with patent matters and are generally well-versed in the technology discipline to which they are assigned. Consequently, it is highly unlikely that the complexity of the technology in question will obscure the legal issues involved in a given determination. This can be advantageous because not all courts across Europe are equipped with a large body of technically trained judges.

Another benefit of the EPO opposition process is that parties can effectively file an opposition anonymously (provided they are not opposing their own patent). It is common practice for representatives to be identified as the opponent, masking their client’s involvement. Given that many industrial sectors have complex, interdependent supply chains, it is not unreasonable for interested parties to avoid being labelled on an opposition out of a desire to avoid appearing antagonistic with respect to a particular patentee (who may be both supplier and competitor).

Comment

The EPO opposition process is a useful tool in the arsenal of businesses to help manage risk and problem patents across many jurisdictions in a single, cost-effective procedure. The system is relatively quick, well tested and cases are heard by experienced examiners with good technical knowledge.

* The authors would like to thank Bruce Dean for his previous contributions to the chapter.



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