Opposition guidelines CH 3 and 4

Question 1

1. Time allowed for filing notice of opposition

Answer 1

Within nine months from the publication of the mention of the grant of the European patent, notice of opposition has to be given to the EPO in Munich, The Hague or Berlin.

For expiry of the time limit see E‑VIII, 1.4. Re-establishment of rights in respect of unobserved time limits for opposition is not possible in the case of an opponent (see, however, E‑VIII, 3.1.2).

Question 2

2. Opposition fee

Answer 2

The amount of the opposition fee specified in the Rules relating to Fees under the EPC must be paid before expiry of the time limit for opposition.

An opposition filed in common by two or more persons, which otherwise meets the requirements of Art. 99 and Rules 3 and 76, is admissible on payment of only one opposition fee (see G 3/99).

As regards the legal consequences and the procedure where the fee is not paid in good time, see D‑IV, 1.2.1(i) and 1.4.1.

Question 3

3. Submission in writing

Question 4

3.1 Form of the opposition

Answer 4

The notice of opposition must be filed in writing and must be typewritten or printed, with a margin of about 2.5 cm on the left-hand side of each page. It would be appropriate if the notice of opposition also satisfied the requirements laid down in Rule 49(2) in conjunction with the decision of the President of the EPO dated 25 November 2022 (OJ EPO 2022, A113).

Question 5

3.2 Notices of opposition filed electronically

Answer 5

Notice of opposition may, without prejudice to other means of filing, be filed in electronic form using EPO Online Filing (OLF) or Online Filing 2.0 . However, it may not be filed using the EPO webform filing service (OJ EPO 2021, A42).

Question 6

3.3 Notices of opposition filed by fax

Answer 6

Notice of opposition may also be filed by fax (see the decision of the President of the EPO dated 20 February 2019, OJ EPO 2019, A18). At the invitation of the EPO, written confirmation reproducing the contents of the fax and complying with the requirements of the Implementing Regulations – in particular properly signed – must be supplied. If the opponent fails to comply with this invitation in due time, the fax is deemed not to have been received (see A‑VIII, 2.5). The opposition fee must in any case be paid within the opposition period.

Question 7

3.4 Signature of the notice of opposition

Answer 7

The notice of opposition must be signed by the person responsible, i.e. by the opponent or, where appropriate, by the representative (see also D‑IV, 1.2.1(ii), and A‑VIII, 1).

Initials or other abbreviated forms will not be accepted as a signature.

Where the notice of opposition is filed in electronic form, the signature may take the form of a facsimile signature or a text string signature. Where EPO Online Filing is used, the signature may also take the form of an enhanced electronic signature (see OJ EPO 2021, A42).

Where the notice of opposition is filed by fax, the reproduction on the facsimile of the signature of the person filing the notice of opposition will be considered sufficient.

If the signature is omitted, the formalities officer must request the party, or where appropriate the representative, to affix their signature within a time limit to be laid down by the formalities officer. If signed in due time, the document retains its original date of receipt; otherwise, it is deemed not to have been received (see D‑IV, 1.2.1(ii) and 1.4.1).

Question 8

4. Derogations from language requirements

Answer 8

Derogations from language requirements for written opposition proceedings are dealt with in A‑VII, 3 (for documents filed as evidence, see A‑VII, 3.4) and for oral opposition proceedings in E‑V.

Question 9

5. Grounds for opposition

Answer 9

A written reasoned statement of the grounds for opposition must be filed within the opposition period.

Art. 99(1)
Rule 76(1)

Opposition may only be filed on the grounds that:

Art. 100

(i)
the subject-matter of the European patent is not patentable under Art. 52 to 57, because it

–
is not new (Art. 52(1), 54, 55),

–
does not involve an inventive step (Art. 52(1), 56),

–
is not susceptible of industrial application (Art. 52(1), 57),

–
is not regarded as an invention under Art. 52(1) to (3), or

–
is not patentable under Art. 53;

Art. 100(a)

(ii)
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 (see Art. 83);

Art. 100(b)

(iii)
the subject-matter of the European patent extends beyond the content of the application as filed (see Art. 123(2)) or, if the patent was granted on a divisional application or on a new application filed under Art. 61 (new application in respect of the invention by the person adjudged in a final decision to be entitled to the grant of a European patent), beyond the content of the earlier application as filed (see Art. 76(1)).

(See also D‑V, 3, 4 and 6 and C‑IV).

Note that each single condition mentioned above forms an individual legal basis for objection to the maintenance of the patent. Consequently, each such condition is to be regarded as a separate ground for opposition (see G 1/95 and G 7/95).

The following allegations, for example, do not constitute grounds for opposition: that national rights of earlier date exist which put the patentability of the invention in question (see, however, H‑III, 4.4), that the patent proprietor is not entitled to the European patent, that the subject-matter of the patent lacks unity, that the claims are not supported by the description (unless it is also argued that the claims are so broadly worded that the description in the specification does not sufficiently disclose the subject-matter within the meaning of Art. 100(b)), that the form and content of the description or drawings of the patent do not comply with the provisions as to formal requirements as set forth in Rules 42 and 49(2) in conjunction with the decision of the President of the EPO dated 25 November 2022 (OJ EPO 2022, A113), or that the designation of the inventor is incorrect. Nor does the simple allegation that priority has been wrongly claimed constitute a ground for opposition. However, the matter of priority must be subjected to a substantial examination in the course of opposition proceedings if prior art is invoked in connection with a ground for opposition under Art. 100(a) in relation to which the priority date is of decisive importance (see G‑IV, 3 and F‑VI, 2).

Question 10

6. Content of the notice of opposition

Answer 10

The notice of opposition, filed in a written reasoned statement, must contain:

(i)
the name, address and nationality of the opponent and the state in which the opponent’s residence or principal place of business is located. Names of natural persons must be indicated by the person’s family name and given name(s), the family name being indicated before the given name(s). Names of legal entities, as well as companies considered to be legal entities by reason of the legislation to which they are subject, must be indicated by their official designations. Addresses must be indicated in such a way as to satisfy the customary requirements for prompt postal delivery at the indicated address. They must comprise all the relevant administrative units, including the house number, if any. Opponents (whether natural or legal persons) whose residence or principal place of business is in an EPC contracting state and who act without a professional representative can use an address for correspondence other than their residence. The address for correspondence must be the opponent’s own address. Post cannot be sent to a different (natural or legal) person, since that requires a valid form of representation under Art. 133 and 134. It is recommended that the telephone and fax numbers be indicated (see D‑IV, 1.2.2.2(i) and 1.4.2);

Rule 76(2)(a)
Rule 41(2)(c)

(ii)
the number of the European patent against which opposition is filed, the name of the patent proprietor and the title of the invention (see D‑IV, 1.2.2.2(ii) and 1.4.2);

Rule 76(2)(b)

(iii)
a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based as well as an indication of the facts and evidence presented in support of these grounds (see D‑IV, 1.2.2.1(iii) to 1.2.2.1(v) and 1.4.2). The requirement under Rule 76(1) that notice of opposition must be filed in a written reasoned statement also implies presenting arguments. However, in order to streamline opposition procedure, it is recommended that a single copy of any written evidence be submitted as soon as possible and ideally with the notice of opposition (see D‑IV, 1.2.2.1(v), last two paragraphs);

Rule 76(1)
Rule 76(2)(c)

(iv)
if the opponent has appointed a representative, the representative’s name and address of place of business in accordance with the provisions of subparagraph (i) as set out above (see D‑IV, 1.2.2.2(iii) and 1.4.2).

D‑IV, 1 sets out further details and explains how to deal with the opposition if one of these requirements is not fulfilled.

Question 11

1. Examination for deficiencies in the notice of opposition and communications from the formalities officer arising from this examination

Question 12

1.1 Forwarding of the notice of opposition to the formalities officer

Answer 12

The notice of opposition must be forwarded directly to the formalities officer, who then places it in the electronic file of the European patent concerned in accordance with the relevant administrative instructions and communicates it without delay to the patent proprietor for information. If a notice of opposition is received prior to the publication of the mention of the grant of the European patent, the formalities officer informs the senders that their document cannot be treated as an opposition. This document becomes part of the file and, as such, is also available for inspection under Art. 128(4), and is brought to the attention of the applicant or the patent proprietor as an observation by a third party in accordance with Art. 115 (for details, see E‑VI, 3). If an opposition fee has been paid, it will in this case be refunded.

Examinations, observations, communications and, where appropriate, invitations to the parties will be the responsibility of the formalities officer who has been entrusted with this task of the opposition division (see D‑II, 7).

Question 13

1.2 Examination for deficiencies in the notice of opposition

Answer 13

After notice of opposition has been given, the formalities officer examines whether any deficiencies exist.

Question 14

1.2.1 Deficiencies which, if not remedied, lead to the opposition being deemed not to have been filed

Answer 14

The following deficiencies fall into this category:

(i)
the opposition fee or a sufficient amount of the fee has not been paid within the opposition period (Art. 99(1); see also G 1/18). However, if the opposition fee, apart from a small amount (e.g. deducted as bank charges), has been paid within the opposition period, the formalities officer examines whether the amount lacking can be overlooked where this is justified. If the formalities officer concludes that the amount lacking can be overlooked, the opposition fee is deemed to have been paid and there is no deficiency in the present sense;

(ii)
the document giving notice of opposition is not signed and this is not rectified within the period set by the formalities officer, which is fixed at two months as a rule (see E‑VIII, 1.2) (Rule 50(3)).

It is noted that for cases covered by Art. 133(2) (see also D‑IV, 1.2.2.2(iv)) a professional representative first has to be appointed within the prescribed time limit. The above applies if the appointed representative then fails to remedy such deficiency either by signing the notice or by approving it in writing;

(iii)
where a notice of opposition is filed by fax and written confirmation reproducing the contents of the fax, if requested by the formalities officer, is not supplied in due time (Rule 2(1) and decision of the President of the EPO dated 20 February 2019, OJ EPO 2019, A18);

(iv)
where a notice of opposition is filed by the representative or employee of an opponent, and the authorisation, if any is required (see A‑VIII, 1.5 and the decision of the President of the EPO dated 12 July 2007, Special edition No. 3, OJ EPO 2007, L.1), is not supplied in due time (Rule 152(1) to (3) and (6)); and

(v)
the opposition is submitted within the opposition period but not in an official language of the EPO, as specified in Rule 3(1), or if Art. 14(4) applies to the opponent, the translation of the elements referred to in Rule 76(2)(c) is not submitted within the opposition period (see also A‑VII, 2, G 6/91 and T 193/87). This period is extended where the one-month period as required under Rule 6(2) expires later. This deficiency is present if the opposition is not filed in English, French or German or if, for example, an opponent from Belgium files an opposition in time in Dutch but fails to file the translation of the essential elements into English, French or German within the abovementioned time limits.

For oppositions which, upon submission, are deemed not to have been filed because of deficiencies as described above, see the further procedure as described in D‑IV, 1.3.1, 1.3.3 and 1.4.1.

Question 15

1.2.2 Deficiencies which, if not remedied, lead to the opposition being rejected as inadmissible

Answer 15

Only such oppositions as are deemed to have been filed will be examined for deficiencies under Rule 77(1) and (2).

If the formalities officers are not sure whether the opposition in question contains a deficiency under Rule 76(2)(c), they will submit the file to the opposition division for checking. They will do this in particular if the opposition alleges non-patentability under Art. 52, 54 or 56 and the relevant prior art has been made available to the public by means other than by written description, or if taking of evidence has been requested in accordance with Rule 117.

In this connection the opposition division will also examine the extent to which it is necessary for the formalities officer to request the opponent to submit evidence (see D‑IV, 1.2.2.1(v)).

Question 16

1.2.2.1 Deficiencies under Rule 77(1)

Answer 16

The following deficiencies fall into this category:

(i)
the notice of opposition is not filed in writing with the EPO in Munich or its branch at The Hague or its suboffice in Berlin within the nine-month opposition period, calculated from the date of publication of the mention of the grant of the European patent in the European Patent Bulletin (Art. 99(1));

Accordingly, the opposition is deficient if, for example, notice of opposition is submitted to the EPO belatedly, i.e. after expiry of the nine-month period, or where the opposition is notified within the opposition period but only verbally in a telephone call officially noted in the files. This category of deficiency also includes oppositions which, notwithstanding Art. 99(1), are filed with the central industrial property office of a contracting state or an authority thereunder and not forwarded by these offices either at all or in time for them to be received by the EPO before the expiry of the opposition period. There is no legal obligation upon these offices or authorities to forward oppositions to the EPO.

(ii)
the notice of opposition does not provide sufficient identification of the European patent against which opposition is filed;

Such a deficiency exists if the EPO is unable to identify the relevant patent on the basis of the particulars in the notice of opposition; for example, if only the proprietor of the contested patent and perhaps the title of the invention for which the patent was granted are mentioned in the notice of opposition. Such particulars alone are not an adequate description of the contested European patent, unless the patent proprietor who alone is named possesses only one patent or possesses several patents, the subject-matter of only one of which fits the title of the invention given in the notice of opposition, being clearly distinct from the subject-matter of the other patents which this proprietor holds. A mere indication of the number of the contested European patent in the notice of opposition constitutes sufficient identification of the patent concerned, provided that no conflicting information is given, e.g. an inconsistent name for the patent proprietor, and the conflict cannot be resolved from the information given.

(iii)
the notice of opposition contains no statement of the extent to which the European patent is opposed;

Such a deficiency is present if it is not clear from the requisite statement whether the opposition is directed against the entire subject-matter of the patent or only a part of it, i.e. whether it is directed against all the claims or only against one or a part of one claim, such as an alternative or embodiment;

Rule 76(2)(c)

(iv)
the notice of opposition contains no statement of the grounds on which the opposition is based;

A notice of opposition contains such a deficiency if it does not mention at least one of the grounds for opposition referred to in Art. 100 (see D‑III, 5). If non-patentability is given as a ground for opposition, the statement of grounds must at least implicitly indicate which conditions for patentability (Art. 52 to 57) are considered not to have been fulfilled.

Rule 76(2)(c)

(v)
the notice of opposition is not adequately substantiated;

According to Rule 76(2)(c), a notice of opposition has to contain a statement of the extent to which the European patent is opposed, the grounds on which the opposition is based, as well as an indication of the facts and evidence presented in support of these grounds for opposition.

The wording of Rule 76(2)(c) clearly indicates that there is a difference between the grounds for opposition, i.e. the legal basis for revocation of the patent (e.g. Art. 100(a)), and the facts and evidence presented in support of these grounds. Where the facts and evidence are entirely absent or so vague as not to allow a proper understanding of the case, the opposition is considered to contain only a mere allegation, which is not sufficient to render the opposition admissible.

Therefore, the opponent has to substantiate the grounds for opposition by adducing facts, evidence and arguments for at least one of those grounds. The opponent has to establish the legal and factual framework on which the opposition rests to pave the way for a substantive assessment. As a consequence, the division and the patent proprietor need to be able to understand, without further investigation of their own, the issues that need to be decided. It is not necessary for the admissibility of the opposition that a final decision can be taken without further investigation. In other words, it is not a question of admissibility but of substantive examination whether the facts on which the opponent relies in comprehensibly explaining a ground for opposition are or can be proven. Where the grounds comprise an allegation of a prior use or an oral disclosure prior to the date of filing or the priority date, the opposition division must be supplied with an indication of the facts, evidence and arguments necessary to determine

(a)
the date on which the alleged use occurred (“when”),

(b)
what was used (“what”),

(c)
and the circumstances relating to the use (“where, how, by whom”) (G‑IV, 7.2 and 7.3).

Where there are multiple grounds for opposition, if the facts, evidence and arguments for one ground are sufficiently indicated, the opposition is admissible even if the facts, evidence and arguments in support of the other grounds are submitted belatedly. Such belated facts, evidence and arguments are in that event dealt with in accordance with E‑VI, 2. Owing to the length of the opposition period (nine months), however, in order to expedite the opposition proceedings, it is recommended that a single copy of any written evidence indicated in the notice of opposition be submitted as soon as possible and ideally with the notice of opposition.

Art. 99(1)
Rule 76(2)(c)

Otherwise, if the opposition is admissible, the opponent will be invited to supply such evidence as soon as possible and as a rule within two months. If the documents thus requested are neither enclosed nor filed within the time limit set, the opposition division may decide not to take into account any arguments based on them. (As regards facts or evidence not submitted in due time and arguments presented at a late stage see E‑VI, 2).

As far as the admissibility of an opposition is concerned, it is immaterial whether and to what extent the facts, evidence and arguments submitted in due time actually warrant revocation of the contested European patent or its maintenance in amended form. On the one hand, an unconvincing ground for opposition may have been substantiated (making the opposition admissible), whereas on the other hand a deficient submission may have been rejected as inadmissible even though, if properly drafted, it could have succeeded (see also T 222/85).

The substantiation of the grounds for opposition thus has to be clearly distinguished from the actual assessment of the evidence, which is part of the process of ascertaining whether the opposition is well-founded in substance, i.e. proven. Subject to the admissibility of the opposition, this has to be established by the opposition division in the light of the applicable standard of proof (G‑IV, 7.5.2).

Rule 76(2)(c)
Rule 83

(vi)
the opposition does not indicate beyond any doubt the identity of the person filing the opposition (Art. 99(1) and Rule 76(2)(a)).

Question 17

1.2.2.2 Deficiencies under Rule 77(2)

Answer 17

The following deficiencies fall within this category:

(i)
the notice of opposition does not specify the name, address and nationality of the opponent and the state in which the opponent’s residence or principal place of business is located in the prescribed manner (see D‑III, 6(i));

Rule 76(2)(a)

(ii)
the number of the European patent against which the opposition is filed or the name of the patent proprietor or the title of the invention is not indicated;

Each of the particulars listed in (ii) above must be supplied within the time limit set by the formalities officer (see D‑IV, 1.3.2), even if the contested European patent may be identified by means of one of these or other particulars within the opposition period (see D‑IV, 1.2.2.1(ii)). If the name of the patent proprietor as indicated by the opponent is not the same as that recorded in the Register, the formalities officer will inform the opponent of the patent proprietor’s correct name.

Rule 76(2)(b)

(iii)
where the opponent has appointed a representative, the name or the address of the place of business of such representative is not indicated in the notice of opposition in the prescribed manner (see D‑III, 6(iv));

(iv)
the opponent has neither residence nor principal place of business in one of the contracting states (Art. 133(2)) and has not communicated the appointment of a professional representative (Art. 134). In the communication requesting remedy of such deficiency the opponent must also be asked to arrange for the signature or approval of the notice of opposition by the representative to be appointed; and

Rule 76(2)(d)

(v)
the notice of opposition fails to satisfy further formal requirements other than those mentioned in Rule 77(1). For instance, it may fail to comply with the provisions of Rule 50(2) without due justification.

Question 18

1.3 Issue of communications by the formalities officer as a result of examination for deficiencies

Answer 18

If, in the course of the examination as described in D‑IV, 1.2, formalities officers note deficiencies which may still be remedied, and if there are no deficiencies which may no longer be remedied (in the case of deficiencies which may no longer be remedied see D‑IV, 1.4), they will issue the communications described in D‑IV, 1.3.1 and/or 1.3.2 to the opponent, if possible in a single communication.

Question 19

1.3.1 Communication in the event of deficiencies as described in D‑IV, 1.2.1 which, if not remedied, will lead to the opposition being deemed not to have been filed

Answer 19

The communication will indicate the deficiencies noted in accordance with D‑IV, 1.2.1 and will state that the opposition will be deemed not to have been filed unless the deficiency or deficiencies are remedied within the time limits indicated in D‑IV, 1.2.1.

Question 20

1.3.2 Communication in the event of deficiencies as described in D‑IV, 1.2.2 which, if not remedied, will lead to rejection of the opposition as inadmissible

Answer 20

The communication will indicate the deficiencies noted in accordance with D‑IV, 1.2.2.1 or 1.2.2.2 and will state that the opposition will be rejected as inadmissible unless the deficiencies as described in D‑IV, 1.2.2.1 are remedied within the opposition period and unless the deficiencies as described in D‑IV, 1.2.2.2 are remedied within the period stipulated by the formalities officer.

Question 21

1.3.3 Extent of the formalities officer’s obligation to issue the above communications

Answer 21

Although formalities officers are not obliged to do so, they may notify the opponent of deficiencies as described in D‑IV, 1.2.1(i) and D‑IV, 1.2.2.1 in good time before the expiry of the time limits within which it is still possible to remedy the deficiencies. However, the opponent can seek no legal remedy against failure to issue these communications, which is to be regarded merely as a service afforded the opponent by the EPO so as largely to obviate any adverse legal consequences. Deficiencies as described in D‑IV, 1.2.1(ii) and 1.2.2.2 must in any event be officially notified to the opponent, since this is a statutory requirement. Should this communication inadvertently be omitted notwithstanding deficiencies of this type in the notice of opposition, opponents may submit the missing particulars on their own initiative at any time, even after the expiry of the opposition period without suffering adverse legal consequences.

Question 22

1.4 Subsequent procedure in the event of deficiencies which may no longer be remedied

Question 23

1.4.1 Deficiencies which may no longer be remedied, as a result of which the opposition is deemed not to have been filed

Answer 23

If formalities officers establish that the deficiencies referred to in D‑IV, 1.2.1 have not been remedied within the time limits laid down in the EPC or by the EPO, they will inform the opponent in accordance with Art. 119 that the notice of opposition is deemed not to have been filed and that a decision may be applied for under Rule 112(2) (see E‑VIII, 1.9.3). If no such application is made within the prescribed period of two months after notification of this communication, and if there is no other valid opposition pending, the proceedings are closed and the parties informed accordingly. Any opposition fees which have been paid are refunded.

Documents submitted with a notice of opposition which is deemed not to have been filed will form part of the file and will thus be available for inspection in accordance with Art. 128(4). They will be regarded as observations by third parties under Art. 115 (see in this connection D‑V, 2.2 and E‑VI, 3). If a further admissible opposition is pending, the proceedings are continued in respect of it.

Question 24

1.4.2 Deficiencies which may no longer be remedied in accordance with Rule 77(1) and (2), resulting in the opposition being rejected as inadmissible

Answer 24

If there are no deficiencies of the type referred to in D‑IV, 1.4.1 but a notice of opposition which is deemed to have been filed reveals deficiencies under Rule 77(1) (see D‑IV, 1.2.2.1) which may no longer be remedied and which have not been communicated to the opponent(s) in accordance with D‑IV, 1.3.2 (because the opposition period has already expired), the formalities officer must, by virtue of Art. 113(1), notify the opponent(s) of these deficiencies, allowing them time in which to submit comments (normally two months), and point out to them that the notice of opposition is likely to be rejected as inadmissible.

If the opponent does not refute the opinion expressed by the formalities officer on the existence of deficiencies which may no longer be corrected or have failed to remedy in good time deficiencies which may be corrected (Rule 77(2)) and which were communicated to them pursuant to D‑IV, 1.3.2, the formalities officer will reject the notice of opposition as inadmissible, except in the case mentioned in D‑IV, 1.2.2.1(v) (for which the opposition division is competent to decide, see the decisions of the President of the EPO dated 12 December 2013 and 23 November 2015 concerning the entrustment to non-examining staff of certain duties incumbent on the examining or opposition divisions, OJ EPO 2014, A6, and OJ EPO 2015, A104). As regards the form of the decision, see E‑X, 2.3 and E‑X, 2.6.

In all other cases the formalities officer will submit the opposition documents to the directorate responsible for the European patent in suit (for designation of an opposition division, see D‑IV, 2).

The decision declaring the opposition inadmissible under Rule 77(1) or (2) can be taken without the participation of the patent proprietor in accordance with Rule 77(3). However, for reasons of procedural economy, the substantive examination is in fact initiated if at least one further admissible opposition is pending. The patent proprietor may also comment on the admissibility of the former opposition in the course of that examination.

When the decision declaring the opposition inadmissible has become final the opponent concerned is no longer a party to the proceedings.

Question 25

1.5 Notifications to and observations by the patent proprietor

Answer 25

Communications and decisions in the course of the examination as to whether the opposition is deemed to have been filed and is admissible are also notified to the patent proprietors for information. They may file observations on their own initiative concerning such a communication.

Question 26

1.6 Subsequent procedure

Answer 26

For the subsequent procedure in the event of one or more oppositions with no deficiencies see D‑IV, 5.2.

Question 27

2. Activity of the opposition division

Answer 27

Formalities officers submit the file to the opposition division in question on despatch of the invitation to the proprietor to submit comments in the cases referred to in D‑IV, 5.2; in all other cases (see D‑IV, 1.4.2) they submit it immediately.

The director responsible will then designate the three technical members of the competent opposition division. The opposition division will decide whether one of its members – and if so, which – is to be entrusted with the examination of the opposition up to the taking of a decision (see D‑II, 5). The technical members of the division will not be designated if the opposition is rejected as inadmissible by the formalities officer and no further admissible opposition has been filed (see D‑IV, 1.4.2).

Question 28

3. Rejection of the opposition as inadmissible by the opposition division, the patent proprietor not being a party

Answer 28

(For rejection of the opposition as inadmissible at a later stage, the patent proprietor being a party, see D‑IV, 5.1 and 5.5).

In cases of insufficient substantiation, where the formalities officer is not competent to decide on the inadmissibility (see D‑IV, 1.2.2.1(v)), the opposition division will either:

(i)
issue the decision rejecting the opposition as inadmissible (when the formalities officer has already informed the opponent of this deficiency pursuant to D‑IV, 1.3.2); or

(ii)
consider the opposition admissible and continue with examination of the opposition (see D‑V); or

(iii)
communicate its findings to the opponent(s) in question and at the same time request them to submit observations.

If the opponent does not refute the opinion expressed by the opposition division on the existence of these deficiencies which may no longer be corrected, the opposition division will reject the notice of opposition as inadmissible, possibly after having held oral proceedings. As regards the form of the decision, see E‑X, 2.3 and E‑X, 2.6.

The decision will be communicated to the other parties. An inadmissible opposition or documents produced in support of an inadmissible opposition will be placed in the file and will therefore be available for inspection in accordance with Art. 128(4). As regards the possibility of taking them into consideration as observations by third parties, see D‑V, 2.2 and E‑VI, 3. If there are further admissible oppositions, for reasons of procedural economy this decision to reject the opposition as inadmissible will normally be taken at the end of the procedure together with the decision on the admissible oppositions.

For the possibility of appeal by the opponent and other possible means of redress, see E‑XII, 1 and E‑XII, 7.

Question 29

4. Termination of opposition proceedings in the event of inadmissible opposition

Answer 29

Under Art. 101(1) and Rule 79(1), the examination as to whether the European patent can be maintained can only be performed if at least one admissible opposition has been filed. This means that the opposition division has to refrain from commenting on the substantive merits of the opposition when expressing an opinion on its inadmissibility if there is no further admissible opposition (see T 925/91). Opposition proceedings are terminated if all notices of opposition filed against a European patent have been rejected as inadmissible and the last decision in this respect has become final. This will be communicated to the parties.

Question 30

5. Preparation of substantive examination

Question 31

5.1 Inadmissibility at a later stage

Answer 31

Since the admissibility of an opposition is always open to question by the patent proprietor, no separate communication that the opposition is admissible will be sent to the opponent or the patent proprietor. Where deficiencies on the basis of which the notice of opposition is likely to be regarded as inadmissible, but of which the opponent has not been informed by the formalities officer, come to the attention of the opposition division in the opposition documents submitted to it or because the patent proprietor has raised the issue during the proceedings, it will inform the parties about its reservations in a communication and at the same time request the opponent in question to submit observations. If deficiencies within the meaning of Rule 77(2) are involved, it is sufficient to specify a period for the opponent to remedy such deficiencies.

If the opponent does not refute the opinion expressed by the opposition division on the existence of these deficiencies which may no longer be corrected or fails to remedy in good time deficiencies which may be corrected, the opposition division will reject the notice of opposition as inadmissible, possibly after having held oral proceedings. As regards the form of the decision, see E‑X, 2.3 and E‑X, 2.6. For subsequent procedure, see the last two paragraphs of D‑IV, 3.

Question 32

5.2 Invitation to the patent proprietor to submit comments and communication of opposition to the other parties concerned by the formalities officer

Answer 32

If formalities officers consider that no further ex-officio objection to the admissibility of each or the only opposition remains, they will invite the patent proprietor, immediately after expiry of the opposition period or the period laid down by the formalities officer for the remedying of the deficiencies in accordance with Rule 77(2) (see D‑IV, 1.2.2.2), or for the presentation of evidence (see D‑IV, 1.2.2.1(v)), to file observations concerning the oppositions communicated earlier and to file amendments, where appropriate, to the description, claims and drawings within a four-month period. Extension of the time limit will only be granted in exceptional cases on the basis of a duly substantiated request (see E‑VIII, 1.6, and the notice from the EPO dated 31 May 2016, OJ EPO 2016, A42). The above procedure also applies to oppositions where a decision to the effect that they are deemed not to have been filed or are inadmissible has not yet been taken or has not yet become final.

If several notices of opposition have been filed, the formalities officer will communicate them to the other opponent(s) at the same time as the communication provided for in the previous paragraph. This will not be combined with an invitation to file observations or the setting of a time limit.

However, copies of documents supporting the parties’ submissions which are available for inspection in the Register will no longer be transmitted (see A‑XI, 2 and the notice from the EPO dated 28 August 2020, OJ EPO 2020, A106).

Question 33

5.3 Filing of amended documents in reply to the notice of opposition

Answer 33

Amended documents must, provided that it is not irrelevant at the stage reached in the procedure, be as complete as possible and drawn up in such a way as to allow the European patent, where appropriate, to be maintained without further delay in the amended version.

These considerations apply also to auxiliary requests in which the patent proprietor proposes amendments for consideration by the opposition division only if the division is unable to grant the main request, for example that the opposition is to be rejected. In both cases, however, it will be more convenient in certain circumstances to determine first the form of the claims, leaving purely consequential amendments in the description to be dealt with later.

Care must be taken to ensure that any amendments do not offend against Art. 123(2) and (3) (see D‑V, 6, H‑IV, 5.3 and H‑V, 2 and 3). It must also be checked that the patent, by the amendments themselves, does not contravene the requirements of the EPC (with the exception of Art. 82, see D‑V, 2.2). For the form of amended documents, see H‑III, 2.2 to 2.4.

Proprietors’ observations, and any amendments they make, are communicated to the opponent(s) by the formalities officer without delay for information. No time limit for reply is set.

Question 34

5.4 Communication of observations from one of the parties to the other parties

Answer 34

The formalities officer will, at any stage in the procedure, immediately communicate the observations of any of the parties to the other parties for information.

If the opposition division considers that observations are called for in the course of the further procedure, a separate invitation is issued and a period is fixed (normally four months), with or without a communication stating the grounds.

Question 35

5.5 Decision concerning the admissibility of an opposition, the patent proprietor being a party

Answer 35

If the patent proprietor, when replying to the notice of opposition, contends that the opposition is inadmissible pursuant to Rule 77(1) and (2) because of deficiencies specified by the patent proprietor himself, the opponent concerned must be given the opportunity to submit comments within a period fixed by the formalities officer (normally two months).

If the opposition division concludes that the opposition is inadmissible, it must as a rule first take a reasoned decision, possibly after having held oral proceedings. This decision is appealable. If, on the other hand, on the basis of another – admissible – opposition, an immediate decision can be taken on the rejection of the opposition or oppositions or on the revocation of the patent, the decision on admissibility is to be taken together with this final decision.

If, despite the observations of the patent proprietor, the opposition division concludes that the opposition is admissible, the decision on admissibility is normally to be taken together with the final decision, especially where at least one other admissible opposition exists (see D‑I, 6). If the opposition division is of the opinion that all oppositions are inadmissible, a reasoned decision is to be taken, which is appealable.

An opponent whose opposition has been finally rejected as inadmissible is no longer a party to the subsequent proceedings once this decision becomes final.

Question 36

5.6 Examination of the admissibility of an intervention and preparations in the event of an intervention

Answer 36

When examining whether an intervention is admissible, the formalities officer and the opposition division will proceed as for the examination as to admissibility of an opposition (see D‑IV, 1, 3 and 5.5) but on the basis of the requirements for intervention under Art. 105 and Rule 89.

Rule 79(4)

Paragraphs D‑IV, 5.2 and 5.4, may, however, be disregarded in the case of an intervention in opposition proceedings.

Accordingly, particularly in the case of proceedings which are at an advanced stage, the formalities officer will inform third parties who have intervened of the progress of the proceedings and request them to indicate within one month whether they will also require the documents received from the parties in accordance with Rule 79(1) to (3), together with the communications from the opposition division and the observations of the parties under Rule 81(2), for the preceding period. If this is the case, the formalities officer will send them with the relevant communications from the opposition division or the formalities officer to the intervening third party.