6b) The law relating to opposition, re-examination and/or revocation of granted European patents

Question 1

What are the policy grounds for introduction re central limitation?

Answer 1

o Central review of EPs previously available only in opposition
o “Self-opposition” by patent proprietor not allowed.
o National limitation proceedings differ / not available in all Contracting States.

Question 2

What is the Purpose of Limitation (and Revocation) proceedings?

Answer 2

o Avoid disputes over validity of EP; Restore validity of patent where prior art emerges
o Enhance legal certainty
o Provide procedures which are simple, rapid and efficient
o May be requested for any EP regardless of date of filing or grant, i.e. even if already
granted at date of entry into force of EPC 2000

Question 3

What are the requirements re central limitation?

Answer 3

o Requester must be EP proprietor
o Request filed at EPO any time after grant
▪ Even after EP has lapsed
▪ No requirement to show legitimate interest
o No pending opposition

Question 4

Discuss relationships re central limiation.

Answer 4

• Precedence of pending opposition when request for limitation filed
o Request for limitation deemed not to have been filed
o Limitation fee refunded
• Limitation Proceedings pending when opposition filed
o Limitation Proceedings terminated
o Limitation fee, and if paid, printing fee refunded
• No precedence over national proceedings
o Suspension of national proceedings depends on national law
o To the extent that central Limitation Proceedings narrows EP further than national
decision, Limitation Proceedings prevail.
o To the extent that national decision defines narrower protection, Limitation Proceedings
version of EP overridden for that State

Question 5

Discuss filing a request for revocation or limitation

Answer 5

• Request in writing indicating whether revocation or limitation is sought.
o Particulars of Requester and where >1 proprietor, evidence that requestor is entitled
to act on behalf of others
o EP Number
o List of Contracting States in which EP has taken effect (even if lapsed)
o Complete version of amended claims (+ description + drawings if also amended)
o Particulars of representative if appointed
o Limitation fee paid: 1155 €. Fee reduction if filed in admissible non-EPO language

Question 6

Discuss examination of request for limitation

Answer 6

• If there are deficiencies in the request: a formalities officer invites Requester to correct
deficiencies within specified period.
o If deficiencies not remedied in due time a reasoned decision rejecting request as
inadmissible is notified to requester. Re-establishment of rights is available or a new
request may be filed.
• Application is examined with respect to:
o whether the amendment is a limitation
o whether the amended claims comply with Articles 84 and 123(2) and (3) EPC
o Requester may state why request allowable or explain purpose of amendment; not
required but may be helpful.
o No examination of Articles 52-57
• If deficiencies, Examiner must give ONE opportunity to correct. The time limit is usually 2
months and is extendable under exceptional circumstances. Any request for oral
proceedings must be granted if request for limitation not allowable.

Question 7

Discuss decision of limitation proceedings

Answer 7

• If request is allowable, decision to limit EP is communicated to the requester.
• Within 3 months, requester must pay prescribed printing fee and file translation of
amended claims into 2 other official languages.
• If failure to comply in due time: 2-month grace period with payment of 120 € surcharge.
• If failure to file translations or pay fee(s) the request is rejected.

Question 8

Discuss the effect of limitation

Answer 8

• General principle: one amended version of patent applying to all Contracting States for
which granted.
• EP is deemed to have conferred the scope of protection as limited ab initio.
• Limitation of EP takes effect upon publication of mention of decision on limitation in
European Patent Bulletin.

Question 9

Discuss revocation.

Answer 9

• Requirements of request
o same requirements as for request for limitation. Deemed not to be filed until revocation fee
paid (520 €).
• Contents of request
o same requirements as for request for limitation
• Procedure
o confined to determination of admissibility of request.
• Procedure
o If request admissible, EP revoked by Examining Division. The Decision is notified to
Requester and entered into Register. The Decision takes effect on date published in EP
Bulletin.
• Effect of decision
o The EP is revoked for all Contracting States in which granted. The effect is ab initio.
Precedence over opposition procedure filed later: if EP revoked, opposition terminated

Question 10

Discuss ‘if opposition pending’

Answer 10

• If patentee wishes to obtain limitation, the patentee should defend the limited patent as
main request (the amendment must be occasioned by a ground for opposition).
• To obtain revocation, the patentee should declare that it no longer approves the text as
granted; the patent will be revoked.

Question 11

Discuss timing in relation to opposition and who can file

Answer 11

• Opposition must be filed within nine months following the mention of grant of the patent in
the European Patent Bulletin.
• Must be filed at the EPO
• 9 months is not extensible & cannot use further processing or re-establishment.
• Notice of opposition is not deemed to have been filed until the opposition fee has been
paid.
Timing
• An opposition can be filed by any person except the patentee (legal or natural), including
(according to a decision of the Enlarged Board of Appeal) a nominal opponent (“a straw
man”), thus allowing the true identity of an opponent to be concealed.
• However, such a procedure must not be such as to conceal opposition by the patentee
himself (self-opposition is not allowed), or improper representation before the EPO.
• Enlarged Board decision limited ability of opponents to transfer opponent status to different
entities.
Who

Question 12

Who can file opposition?

Answer 12

• An opposition can be filed by any person except the patentee (legal or natural), including
(according to a decision of the Enlarged Board of Appeal) a nominal opponent (“a straw
man”), thus allowing the true identity of an opponent to be concealed.
• However, such a procedure must not be such as to conceal opposition by the patentee
himself (self-opposition is not allowed), or improper representation before the EPO.
• Enlarged Board decision limited ability of opponents to transfer opponent status to different
entities.

Question 13

Discuss filing re opposition.

Answer 13

• In addition to providing details of the opponent and patent to be opposed, the Notice of
Opposition must state [R.76]:
• The extent of opposition (which claims are to be opposed) and the grounds of opposition,
and must indicate the evidence (e.g., prior art), facts and arguments upon which the
opposition is based.
• Otherwise the notice of opposition is rejected as inadmissible.
• The opposition should be in EN, FR or DE, or in another European language if a translation
is subsequently filed.

Question 14

What are the grounds that opposition can be filed?

Answer 14

• Opposition can only be filed on the grounds that:
1. the subject-matter of the patent is not patentable within the terms of Article 52 to 57;
(prohibited subject matter; novelty and inventive step; industrial applicability)
2. the European patent does not disclose the invention in a manner sufficiently clear and
complete for it to be carried out by a person skilled in the art.
3. the subject-matter of the European patent extends beyond the content of the application
as filed.
• i.e. patentability, sufficiency, and added subject matter (not unity).

Question 15

Discuss whether clarity is a grounds for opposition.

Answer 15

• G3/14 – issued 24 March 2015
• Article 84 is not a ground of Opposition – i.e: ‘the claims shall define the matter for which
protection is sought. They shall be clear and concise and be supported by the description’.
• However, G3/14 has confirmed that any amendments filed by the patentee during the
opposition proceedings may be examined for compliance with Article 84 only when, and
then only to the extent that, the amendment introduces non-compliance with Article 84.

Question 16

Discuss the procedure for opposition.

Answer 16

• As of 1 July 2016, the EPO has introduced streamlined opposition procedures with the aim
of speeding up decisions. The new procedures has been flagged in red text and see the
May Official Journal for a detailed summary of the procedure:
http://www.epo.org/law-practice/legal-texts/official-journal/2016/05.html
• As soon as the EPO receives the notice of opposition it is communicated to the proprietor
of the patent and the opposition is examined for admissibility.
• If defects are found the Opponent is invited to correct them (where correctable). Major
defects if not corrected within the Opposition period will lead to rejection of the opposition
as inadmissible.
• Where there are multiple oppositions, proceedings are consolidated.

• The proprietor of the patent is invited to file his observations and to file amendments,
where appropriate, within a period of 4 months. The deadline may be extended by a further
2 months by exception only (previously the deadline was fixed by the EPO at 4 months but
one or more extensions in 2 month chunks were generally acceptable).
• The deadline is not fatal as not filing any observations does not automatically result in
revocation of the patent. (The EPO will, in any event, examine the opposition of their own
motion and come to a decision on the basis of whatever the opponent and the patentee
themselves submit from the filing of the opposition onwards).
• The patentee’s observations are then communicated to the opponent. The opponent is not
given a formal opportunity to file further comments but the opponent is allowed to respond
on its own initiative.

Question 17

Discuss oral proceedings re opposition.

Answer 17

• The opposition division is not obliged to consider all the grounds for opposition.
• The EPO then issues a preliminary and non-binding opinion.
• If oral proceedings have been requested by either or both parties (which happens in the
vast majority of cases), or on the EPOs own motion, the EPO will set a date for oral
proceedings giving at least 6 months notice.
• Final submissions (and filing amendments) will be due 2 months before the hearing. New
documents or amendments are only admitted with extreme reluctance after this date.
• The oral proceedings will be in the language of prosecution of the patent but free,
simultaneous interpretation between this and the other two official languages will be
provided if requested by one of the parties beforehand.
• A decision will almost always be reached and given at the hearing, with the official written
decision issuing (usually from one to six months) afterwards.
• The decision will either revoke the patent, uphold the patent, or uphold the patent in
amended form (note that although amendments can be made during the opposition
proceedings, the scope of the claims cannot be broadened after grant).
• If a decision is made to maintain the patent in amended form, the EPO informs the parties
of the text it intends to maintain and invites them to file comments within two months if they
disapprove of that text [Rule 82(1)].
• From 1 May 2016 rule 82(2) has been amended so that the authentic text of the patent as
amended will be the text filed during oral proceedings even if the proprietor is unable to
provide formally correct documents at that moment. As such, the EPO can rely on
handwritten amendments made during Oral Proceedings as the authentic text.
• In this circumstance, the formally compliant amended text can be supplied at the same
time as the other formal 82(2) requirements.

Question 18

Discuss decision re opposition.

Answer 18

• Any party adversely affected by the decision of the Opposition Division may file a notice
and ground of appeal, due within an inextensible period of two months and four months
respectively from the date of the written decision.
• The appeal follows a similar procedure to the opposition.
• Any party which doesn’t appeal is automatically party to the appeal.

• The appeal is terminated by a decision, which can be to: (a) remit to the Opposition
Division (who are bound by the Appeal Board Decision as far it goes); (b) revoke the
patent; (c) uphold the patent; (d) uphold the patent in amended form.
• No further appeal is possible, but a sideways reference on an important and contentious
point of law to the Enlarged Board of Appeal can be ordered by the Board (but not by the
parties) and in exceptional circumstances it may be possible to petition for a review of the
decision by the Enlarged Board of Appeal (see later).

Question 19

Where can appeal be made from?

Answer 19

• Can appeal from decisions of the Receiving Section, Examining Divisions, Opposition
Divisions and the Legal Division.
• Cannot appeal from decisions of the Search Division.

Question 20

What are the effects of appeal?

Answer 20

• Appeals have suspensive effect. This means that decisions may not yet become final and
their effects are suspended.

Question 21

When and how must appeal be filed?

Answer 21

• Notice of appeal must be filed in writing within two months after the date of notification of
the decision appealed from. It is not deemed to have been filed until after the fee for
appeal has been paid.
• Within four months after the date of notification of the decision, a written statement setting
out the grounds of appeal must be filed. These 2 and 4-month time limits may not be
extended.

Question 22

What are the two levels of appeal fee?

Answer 22

• From 1 April 2018, there will be two levels of appeal fee:
• For appellants that are either (a) a natural person, or (b) a small- or medium-sized
enterprise, a non-profit organisation, a university or a public research organisation, the
appeal fee will remain at 1,880 EUR.
• For all other entities, the appeal fee will increase to 2,255 EUR.

Question 23

What must the notice of appeal contain?

Answer 23

• The notice of appeal must contain (a) the name and address of the appellant; (b) a
statement identifying the decision which is impugned and the extent to which amendment
or cancellation of the decision is requested.

• The statement of grounds should be a succinct but full statement of an appellant’s
arguments in the appeal. Since in practice the appeal procedure is primarily a written
procedure, arguments should always be fully developed in writing and not be reserved for a
possible oral hearing.

Question 24

Where is the appeal referred to?

Answer 24

• The appeal is referred to the department whose decision is contested and, if that
department considers it to be admissible and well founded, it must rectify its decision after
receipt of the statement of grounds of appeal. If the said department does not allow the
appeal, it is remitted to the Board of Appeal without delay.

Question 25

How can the appeal fee be reimbursed and by how much?

Answer 25

• Since 1 April 2014, 50% of the appeal fee will be reimbursed if the appeal is withdrawn
before specified actions have taken place [R.103(2)]

Question 26

Describe the Technical Boards of Appeal?

Answer 26

• The Technical Boards of Appeal are responsible for appeals from decisions concerning the
refusal of a European patent application or the grant of a European patent and from
decisions of an Opposition Division.
• This is the final as of right appeal for a European patent (although see EBA and petition for
review discussed below).
• An appeal decision to revoke a European patent overrides any national decisions to uphold
and the patent is revoked ab initio.

Question 27

Discuss the Enlarged Board of Appeal

Answer 27

• The Enlarged Board of Appeal is referred to in its capacity as the body responsible for
ensuring uniform application of the law or if an important point of law arises.
• A Board of Appeal may refer any question to the Enlarged Board of Appeal if it considers
that a decision is required for the above purposes. This may be on its own volition or
following a request from a party to the appeal.
• The President of the European Patent Office may also refer a point of law to the Enlarged
Board of Appeal where two Boards of Appeal have given different decisions on that
question.
• The decision of the Enlarged Board of Appeal is binding on the Board of Appeal in respect
of the appeal in question.

Question 28

What can a party do if it is adversely affected by a decision where a fundamental
procedural defect occurred in the appeal proceedings?

Answer 28

• What can a party do if it is adversely affected by a decision where a fundamental
procedural defect occurred in the appeal proceedings?
o Enlarged Board of Appeal on the grounds as specified in Art. 112a(2).
• Not a review regarding how substantive law has been applied by the Boards of Appeal.
• Aim: provide a remedy in individual cases, not to ensure a uniform application of the law.
• No suspensive effect. The decision of the Board has legal effect until the decision of the
EBA sets it aside. Differs from effect of decisions of the Boards of Appeal on decisions of
the departments of first instance. Aims at providing speedy procedure.

Question 29

What are the grounds re petition for review?

Answer 29

• Wrong composition of the Board.
• Member took part in case who had:
o personal interest
o previously acted as professional representative/party
o participated in the decision under appeal
• Member took part despite having been excluded.
• Member took part who had not been appointed as a member of the Boards of Appeal.
• Fundamental violation of Art. 113 EPC which relates to a right to be heard.
• Any other fundamental procedural defect defined in the Implementing Regulations.
• Board failed to arrange oral proceedings despite a request by petitioner or Board decided
on appeal without deciding on a request relevant to that decision.
• If a criminal act may have had an impact on the decision.

Question 30

What is the procedure re petition for review?

Answer 30

Obligation to raise objection
• Objection must have been raised during appeal proceedings and have been dismissed
by the Board.
• Not relevant where ground is a criminal act or where objection could not have been raised.
Time limit for filing
• General rule: two months from notification of Board’s decision
• Exception: where criminal act occurred, petition must be filed within two months of date on
which criminal act was established AND no later than five years from notification of Board’s
decision.
• Time limit excluded from further processing (Art. 121(4)), only re-establishment of rights
available.

Question 31

Describe the two-stage procedure before the EBA.

Answer 31

• Stage 1: filters out cases which are clearly inadmissible or unallowable
o Decision made on basis of petition only by two legally qualified members and one
technically qualified member
o Excluded is chairman of Board against whose decision petition is filed and members
who participated in the attacked decision
o Decision requires unanimity
• Stage 2: deciding on petition for review
o Decision made by four legally qualified members and one technically qualified
member
o Three member board for first stage is supplemented by a further two legal members.
Rapporteur in first stage usually also rapporteur in second stage
o Oral proceedings have to be held where requested or regarded as necessary
o Decision by majority

Question 32

What are the consequences if successful re petition for review?

Answer 32

• If successful:
o EBA sets board’s decision aside and re-opens proceedings before Board
o Fee for petition will be reimbursed
o EBA may order replacement of members of Board who participated in the decision set
aside

Question 33

What are the consequences if the EBA re-opens proceedings before Board?

Answer 33

• If EBA re-opens proceedings before Board:
o Any renewal fee which would have fallen due between Board’s decision and
notification of EBA decision re-opening proceedings shall be due on the latter date
and is payable within four months without an additional fee.
o Any renewal fee which was due on date of Board’s decision, but six months period
under R. 51(2) had not yet expired, may still be paid within six months from date of
notification of EBA decision re-opening proceedings provided additional fee is also
paid.