Opposition guidelines CH 5 and 6

Question 1

1. Beginning of the examination of the opposition

Answer 1

Once the preparations for the examination of the opposition have been completed pursuant to Rule 79, the opposition division examines whether the grounds for opposition (see D‑III, 5) laid down in Art. 100 prejudice the maintenance of the European patent. The examination may also begin if a single admissible opposition has been withdrawn in the interim (see D‑VII, 5.3). If the opponent has died or is legally incapacitated, the examination may begin even without the participation of the heirs or legal representatives (see D‑VII, 5.2).

Question 2

2. Extent of the examination

Question 3

2.1 Extent to which the patent is opposed

Answer 3

In the unusual case where an opposition is limited to only a certain part of the patent, the opposition division has to limit its examination to the part opposed. However, if the opposition is directed only to an independent claim, the dependent claims are considered to be implicitly covered by the extent of the opposition and may be examined by the opposition division, provided their validity is prima facie in doubt on the basis of the information already available (see G 9/91). Similarly, if only a process claim is opposed, a product-by-process claim making reference to the same process is considered to be implicitly covered by the extent of opposition and may be examined under the same conditions as above (see T 525/96).

Question 4

2.2 Examination of the grounds for opposition

Answer 4

Opposition proceedings are not a continuation of examination proceedings. Hence as a general rule the opposition division will confine its examination to those grounds for opposition brought forward by the opponent. If, for example, the opposition is filed only on the grounds that the subject-matter of the European patent is not sufficiently disclosed or that it extends beyond the content of the patent application as filed, the opposition division will examine the patentability of the subject-matter of the European patent pursuant to Art. 52 to 57 only if facts have come to its notice which, prima facie, wholly or partially prejudice the maintenance of the patent (see G 10/91).

A document indicated in the patent specification as the closest or important prior art for the purposes of elucidating the technical problem set out in the description forms part of the opposition proceedings even if not expressly cited within the opposition period. The same applies to any relevant documents cited in the patent specification which do not constitute the closest prior art but whose contents are nevertheless important for understanding the problem underlying the invention within the meaning of Rule 42(1)(c) EPC (T 536/88, in particular point 2.1).

Once proceedings for examining the opposition(s) have been initiated because an admissible opposition has been filed (although it may have been withdrawn in the interim), there may be reason to believe that other grounds exist which, prima facie, in whole or in part prejudice the maintenance of the European patent. If that is the case, these grounds will generally be examined by the opposition division of its own motion pursuant to Rule 81(1). Such other grounds may result from facts emerging from the search report or the examination procedure, the examiner’s personal knowledge or observations presented by third parties pursuant to Art. 115 (see also E‑VI, 3). Such grounds may also have been put forward in another opposition which has been rejected as inadmissible, or in another opposition deemed not to have been filed. They may also be any grounds submitted belatedly (see E‑VI, 1.1 and E‑VI, 2). Under Art. 114(1), such prejudicial grounds put forward in an opposition which has been withdrawn will also generally be examined by the opposition division of its own motion. In carrying out such examination the opposition division will, however, take the interests of procedural expediency into account (see E‑VI, 1.2). If the decision is to be based on grounds to be taken into account pursuant to Art. 114(1) or Rule 81(1), the parties must be given the opportunity to comment (see E‑X, 1).

If during examination of the opposition an allegation about a relevant fact seems plausible, it may be taken into account without further evidence if it is not challenged by the other party.

If a fact is contested or not plausible, the party making the allegation must prove it. If the parties to opposition proceedings make contrary assertions which they cannot substantiate and the opposition division is unable to establish the facts of its own motion, the patent proprietor is given the benefit of the doubt (see T 219/83, Headnote I).

For example, if the opponent raises an objection under Art. 100(b) and provides experimental evidence that e.g. the claimed process cannot be realised, and the patent proprietor replies that the process can be carried out without undue burden by the skilled person taking common general knowledge also into consideration (T 281/86, OJ EPO 1989, 202; reasons 6), the patent proprietor has to provide proof of what was common general knowledge at the filing date (or the date of the earliest priority if priority has been claimed).

Pursuant to Art. 100, the absence of unity of invention is not a ground for opposition (see D‑III, 5).

Rule 81(1)
Art. 114

Since unity of invention under Art. 82 is only required for the European patent application, the unity of the subject-matter of the European patent may not be examined by the opposition division, even of its own motion. In particular, where the facts, evidence and arguments which come to light in the opposition proceedings lead to the maintenance of the European patent in amended form, there will be no further examination as to whether the remaining subject-matter of the patent contains a single invention or more than one. Any lack of unity must be accepted (see G 1/91).

The grounds for opposition laid down in Art. 100 are examined in greater detail below.

Question 5

3. Non-patentability pursuant to Art. 52 to 57

Answer 5

The same substantive requirements apply in the opposition procedure regarding patentability pursuant to Art. 52 to 57 as in the examination procedure. G‑I to VII will therefore also be applied in opposition proceedings. However, it will be more common in opposition proceedings than in examination procedure for the examination as to patentability to be based on the state of the art as made available to the public not by written description but “by means of an oral description, by use, or in any other way” (see Art. 54(2) and G‑IV, 7).

Question 6

4. Insufficient disclosure of the invention

Answer 6

Determination of whether the disclosure of an invention in a European patent application is sufficient is dealt with in F‑III, 1 to 3.

The principles set out there will also apply mutatis mutandis to the opposition procedure. The overriding consideration in this context is the disclosed content of the European patent specification, that is to say what a person skilled in the art is able to derive directly and unambiguously from the explicit and implicit disclosure in the patent claims, description and drawings, if any, without using inventiveness. Pursuant to Art. 100(b), the patent has to disclose the invention in a manner sufficiently clear and complete for it to be carried out by persons skilled in the art. If the patent specification does not disclose the invention sufficiently clearly to enable it to be carried out over the full scope of the claim in accordance with Art. 100(b), this may be remedied, provided the original documents contained a sufficient disclosure, but subject to the condition that, as required under Art. 123(2), the subject-matter of the European patent does not extend beyond the content of the application as filed and, as required under Art. 123(3), the protection conferred is not extended.

The skilled person wishing to implement the claimed invention reads the claims in a technically sensible manner. An objection of insufficient disclosure of the invention is therefore not to be based on embodiments that are meaningless and not consistent with the teaching of the application as a whole (see T 521/12).

There is normally no deficiency under Art. 100(b) if a feature which is essential for performance of the invention is missing from the claim but is disclosed in the description and/or drawings. However, unduly broad claims may be objected to under Art. 56 (see T 939/92).

Question 7

5. Clarity of claims

Answer 7

Clarity is not a ground for opposition. Opposition proceedings are not designed as a procedure for generally amending (or revoking) patents that contain any kind of defect, and therefore opposition proceedings are not to be regarded as a continuation of examination proceedings. As a general rule this means that a granted claim has to be lived with even if new facts (e.g. new prior art) demonstrate that the claim is unclear (G 3/14).

Art. 100

In considering whether, for the purpose of Art. 101(3), a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Art. 84 only when, and then only to the extent that, an amendment introduces non-compliance with Art. 84 (G 3/14, confirming the jurisprudence as exemplified by T 301/87). A lack of compliance with Art. 84 cannot be seen as having been introduced by an amendment if a clarity problem already present in the claims as granted is only brought into notice, highlighted or made visible by the amendment.

According to G 3/14, the amendment of one claim or part of a patent cannot lead to a re-examination of other parts of the patent which have not been amended. Thus, the deletion of an independent claim with its dependent claims or the deletion of a dependent claim leaving the independent claims and other dependent claims intact does not permit examination of the remaining claims for compliance with Art. 84.

A claim amended during opposition proceedings is not subject to examination for compliance with Art. 84 if it results from

(i)
inserting a complete dependent claim as granted into an independent claim;

(ii)
combining one of several alternative embodiments of the dependent claim as granted with the independent claim as granted;

(iii)
deleting wording from a granted claim (whether independent or dependent), whereby its scope is narrowed but a pre-existing lack of compliance with Art. 84 is left intact (as exemplified by T 301/87); or

(iv)
deleting optional features from a granted claim (whether independent or dependent).

However, an amended claim is to be examined for compliance with Art. 84:

(v)
if features are taken from the description and inserted into a granted claim by way of amendment; or

(vi)
if a feature from a dependent claim as granted is introduced into an independent claim as granted and this feature was previously connected with other features of that dependent claim and an alleged lack of compliance with Art. 84 is introduced by the amendment.

Question 8

6. Subject-matter of the European patent extending beyond the original disclosure

Question 9

6.1 Basis of this ground for oppositio

Answer 9

This ground for opposition under Art. 100(c) refers back to Art. 123(2) and stipulates that the subject-matter of a European patent may not extend beyond the content of the application as filed. In the case of a patent granted on the basis of a European divisional application (Art. 76(1)), two criteria apply: the subject-matter must not extend beyond the content of the earlier application as filed (Art. 76(1)), and it must not extend beyond the content of the divisional application as filed (Art. 123(2)) (see T 873/94). Similar considerations apply to applications filed under Art. 61. In the case of a patent granted on an application filed in a language other than an official language of the EPO either in accordance with Art. 14(2) or in accordance with Rule 40 (see Rule 40(3)), the original text will, as provided for in Art. 70(2), constitute the basis for determining whether the subject-matter of the European patent extends beyond the content of the application as filed. However, unless, for example, the opponent adduces proof to the contrary the opposition division may, under Rule 7, assume that the translation referred to in Art. 14(2) or Rule 40(3) is in conformity with the original text of the application.

Question 10

6.2 Distinction between allowable and unallowable amendments

Answer 10

The distinction between allowable amendments to the content of a European patent application and amendments which are at variance with Art. 123(2) or Art. 76(1) is set forth in H‑IV, 2, and C‑IX, 1.4. These guidelines will be applied mutatis mutandis in the course of opposition proceedings to determine whether the subject-matter of the European patent as granted or as amended during the opposition proceedings extends beyond the content of the application as filed.

Question 11

Chapter VI – Procedure for the examination of the opposition

Question 12

1. General remarks

Answer 12

The opposition division will first of all endeavour to reach a decision in written proceedings. Taking account of the investigations usually conducted beforehand by the primary examiner (see D‑II, 5 and 6), the opposition division will base its decision on the written submissions of the parties and, where appropriate, on other written evidence obtained, in particular, through the production of documents, requests for information and sworn statements in writing.

The parties in inter partes cases are subject to a particular duty to facilitate due and swift conduct of the proceedings, in particular by submitting all relevant facts, evidence, arguments and requests as early and completely as possible (see D‑IV, 1.2.2.1 and E‑IV, 1.2). Furthermore, any ground, fact and evidence filed by the opponent(s) after the expiry of the opposition period are considered as late-filed unless they are due to a change in the subject of the proceedings; see E‑VI, 2 and subsections for more details. Admissibility of amendments by the proprietor is treated in detail in H‑II, 3 to H‑II, 3.5, E‑VI, 2.2.2 and E‑VI, 2.2.3.

Art. 114(2)
Rule 76(2)(c)
Rule 80

If the opposition division considers it expedient, or if any party requests oral proceedings, oral proceedings in accordance with Art. 116(1) will be held before the opposition division after suitable preparation (see D‑VI, 3.2). In the oral proceedings, the parties may state their cases and make submissions in order to clarify outstanding questions. Members of the opposition division may put questions to the parties.

Art. 116

In special, less common cases it will occasionally prove necessary in opposition proceedings for oral evidence to be taken by the opposition division as part of oral proceedings or for the conservation of evidence, or by the primary examiner outside the oral proceedings. The opposition division is not obliged to take oral evidence if it does not consider it necessary, even if a party has so requested. Oral evidence may be taken, where appropriate under oath, before the competent court in the country of residence of the person to be heard. A member of the opposition division may, at the request of the opposition division, attend such court hearings (see E‑IV, 1.3).

The principal means of taking oral evidence will be the hearing of witnesses and parties (see E‑IV, 1.6).

Only in exceptional cases will evidence be obtained at the initiative of the opposition division by means of oral and/or written reports by experts (see E‑IV, 1.8.1) or by carrying out an inspection (see E‑IV, 1.2, last paragraph). In view of the specialised knowledge of the members of the opposition division – and of the costs involved – such means will be used only as a last resort.

Question 13

2. Adherence to the text of the European patent submitted or approved by the patent proprietor

Question 14

2.1 Basis for the examination

Answer 14

If the patent proprietors submit amendments to the description, claims or drawings after the notice of opposition has been communicated to them (see H‑II, 3), the opposition division must take as a basis for its examination the text of the European patent submitted by the patent proprietors. This principle, that the opposition division must concern itself solely with the text most recently “submitted or agreed by the patent proprietor”, also applies to the rest of the opposition procedure. (As regards the possibility of amending texts, see H‑IV, 3.1, second paragraph).

Question 15

2.2 Revocation of the patent

Answer 15

Where it is stated that the patent proprietor no longer approves the text in which the patent was granted and no amended text is submitted, the patent must be revoked. This also applies when the patent proprietor requests that the patent be revoked.

Question 16

3. Invitation to file observations

Question 17

3.1 Opposition division’s communications

Answer 17

In examining the opposition, the opposition division will invite the parties, as often as is necessary, to clarify the substance of the case, to file observations on communications from another party or issued by itself (see E‑II, 1) and, where appropriate, to adduce evidence in respect of matters under dispute. Rule 81(2) does not require the opposition division to set a period for replying to this invitation. Such a period will, however, be set whenever the opposition division considers this expedient. As regards the length of the period see E‑VIII, 1.2, as regards the extension of a period see E‑VIII, 1.6, and as regards late submission of observations see E‑VIII, 1.7 and E‑VIII, 1.8, as well as Art. 114(2).

Art. 101(1)
Rule 81(2)

Communications from the opposition division and all replies thereto must be communicated to all parties.

Question 18

3.2 Summons to oral proceedings

Answer 18

If oral proceedings have to be arranged, the parties must be summoned to them as quickly as possible at reasonable notice (see E‑III, 6). If the first action of the opposition division is to summon the parties, the first substantive communication of the opposition division under Art. 101(1) is annexed to the summons to oral proceedings. For the form of oral proceedings, see E‑III, 5 and E‑III, 1.3.

Art. 116(1)
Rule 115(1)

Together with the summons, the opposition division will draw attention to and in the annexed communication explain the points which in its opinion need to be discussed for the purposes of the decision to be taken; where this has already been done sufficiently in a prior communication, it is appropriate to refer to that communication. Normally, the annexed communication will also contain the provisional and nonbinding opinion of the opposition division on the positions adopted by the parties and in particular on amendments filed by the patent proprietor. At the same time, a date will be fixed up to which written submissions may be made or amendments may be filed. Normally this date will be two months before the date of the oral proceedings. As this date is not a time limit, Rule 132 does not apply and the parties cannot request to postpone it.

The summons to oral proceedings and the annexed communication do not constitute decisions within the meaning of Art. 106(1) and can thus only be appealed together with the final decision (see T 1954/14) unless either of them allows a separate appeal to be filed (see E‑X, 3).

Question 19

4. Communications from the opposition division to the patent proprietor

Question 20

4.1 Communications from the opposition division; reasoned statement

Answer 20

Where necessary, any communication to the patent proprietor must contain a reasoned statement. This also applies to any communication to other parties which is communicated to the proprietor of the patent for information only. A reasoned statement will usually not be required if the communication concerns only matters relating to form or if it contains no more than self-explanatory proposals. Where appropriate, all the grounds against the maintenance of the European patent are to be given in the communication.

Question 21

4.2 Invitation to file amended documents

Answer 21

If the opposition division considers that the European patent cannot be maintained in an unamended form, it must inform the patent proprietors accordingly, stating the grounds, and give them the opportunity to amend, in appropriate cases, the description, claims and drawings. As regards the time limit here, see E‑VIII, 1.2. Where necessary, the description adjusted in line with the new claims will also deal with the state of the art as set out in the opposition proceedings, the technical purpose and the advantages of the invention as it will then stand. However, if the patent proprietor has neither requested oral proceedings nor filed amendments (including any auxiliary requests), the patent can be revoked directly on the basis of the grounds, evidence and arguments on file (see also E‑X, 1.1).

Proposals for amendment filed at a late stage in the proceedings may be disregarded (see T 406/86).

For amended documents, see H‑III, 2.

Question 22

5. Additional search

Answer 22

In exceptional cases, the opposition division, like the examining division, may on its own initiative cite new material relating to the state of the art and take it into account in its subsequent decision (see C‑IV, 7.4). In the normal course of events, however, since the grant of the patent will have been preceded by a search into the subject-matter of the application by the search division, by the examining division and generally by the opponent(s), no additional search will be made. Only in exceptional cases will an additional search by the opposition division be set in train. Such a case might arise, for example, if in the opposition the main subject covered by the patent shifts to elements of a dependent claim which were originally of subsidiary importance, to elements which were previously not set out in the claims, but only in the description, to individual features of a combination, or to sub-combinations, and there are grounds for believing that the original search did not extend to such elements or features and if no relevant document can be found quickly in the circumstances set out in C‑IV, 7.4.

Question 23

6. Examination of the opposition during oral proceedings

Answer 23

For details regarding the examination shortly before and during oral proceedings and the conduct thereof, see E‑III, 8.

Question 24

7. Preparation of the decision

Question 25

7.1 General remarks

Answer 25

If the opposition division does not consider it expedient to arrange for oral proceedings of its own motion (see E‑III, 4 and below) or for the taking of evidence even where the latter is requested (see E‑IV), and if no admissible request for oral proceedings has been received from a party (see E‑III, 2), the decision must be reached on the basis of written proceedings. In this case there is no obligation to arrange for oral proceedings before a decision is reached.

If the case is decided on the basis of written proceedings, submissions filed after the decision has been handed over to the EPO internal postal service for remittal to the parties can no longer be considered, as from that moment the division cannot amend the decision (see G 12/91), except to the limited extent provided for in Rule 140 (see H‑VI, 3.1).

The decision, whether or not preceded by oral proceedings or the taking of evidence, may be to revoke the patent (see D‑VIII, 1.2), to reject the opposition (see D‑VIII, 1.3) or to maintain the patent as amended (see D‑VIII, 1.4).

Question 26

7.2 Preparation of a decision to maintain a European patent in amended form

Question 27

7.2.1 Procedural requirements

Answer 27

A decision to maintain the patent in amended form may be delivered only when the patent proprietor has approved the new text on the basis of which the opposition division intends to maintain the patent and the opponent has had sufficient opportunity to comment on the proposed new text.

Both prerequisites can be fulfilled during oral proceedings at which the opposition division establishes the text including the amended description and, if necessary, the amended figures. In written proceedings, the necessary opportunity to comment on the new text on the basis of which the opposition division intends to maintain the patent is given to the opponent when a communication is issued to the parties. Once these requirements have been met, a separate communication under Rule 82(1) is neither necessary nor appropriate (see G 1/88).

If the patent can be maintained in the amended form, the opposition division tries to obtain the patent proprietor’s approval of the text in which the patent can be maintained and gives the opponent an opportunity to comment on it. An interlocutory decision can then be delivered.

If these requirements have still not been met and no oral proceedings are being held, a communication under Art. 101(1) must be issued. This also applies when it has been established in principle that the patent can be maintained in a particular form but a complete text expressly approved by the patent proprietor is not yet available.

The patent proprietor’s approval of an amended version of the patent need not be given in a separate, express declaration; it may also be apparent from the circumstances, in particular from the fact that an amended version was filed or requested. This applies equally to versions which have been filed as an auxiliary request. (For the wording of documents in oral proceedings, see E‑III, 8.11 and E‑III, 8.11.1).

Art. 113

The patent proprietor’s approval can also be obtained through a communication under Rule 82(1) in which the opposition division informs the parties that it “intends to maintain the patent as amended” and invites them to “state their observations within a period of two months if they disapprove of the text in which it is intended to maintain the patent”. If no objections are filed to the text thus notified, the patent proprietor is considered to approve of it.

A communication under Rule 82(1) can also be sent if the opposition division considers that the complete document expressly approved by the patent proprietor, on which the opponent has been able to comment, still requires amendments. However, these must not go beyond such editorial changes to the wording as appear absolutely necessary by comparison with the text most recently submitted or approved by the patent proprietor. The opposition division will draw attention to such amendments and state why they are required if they are not self-explanatory.

If within the period specified in the communication, or in a communication under Rule 82(1), the patent proprietor objects to the text in which the patent is to be maintained, the proceedings are continued. The European patent can be revoked in the subsequent proceedings if the patent proprietor objects to the text and fails to submit new, properly amended documents despite having been requested to do so.

If any opponent objects to the text communicated to them in which it is intended to maintain the patent, the opposition division will continue examining the opposition if it considers that the EPC prejudices the maintenance of the patent in the text initially envisaged.

Question 28

7.2.2 Decision on the documents on the basis of which the patent is to be maintained

Answer 28

If the opposition division considers that the patent can be maintained on the basis of the text submitted or approved by the patent proprietor, and the opponent has had sufficient opportunity to comment on this text – either in writing or during oral proceedings – as well as on the reasons decisive to the patent’s maintenance, the opposition division will issue an interlocutory decision to the effect that the patent and the invention to which it relates meet the requirements of the EPC following the amendments made by the patent proprietor during the opposition proceedings.

If the patent can only be maintained on the basis of an auxiliary request, the decision has to contain a reasoned statement why the version of the main request (and any higher-ranking auxiliary request) does not meet the requirements of the EPC (see T 234/86).

A separate appeal under Art. 106(2) is allowed against this decision, which must be reasoned having regard to the grounds for opposition maintained by the opponent or taken up by the opposition division. The decision is delivered in all cases where a European patent is maintained in amended form, even if the opponent has approved of the text communicated by the opposition division or has not commented on it. In the former case, the decision is fairly brief, merely noting that in the light of the amended text the opponent no longer maintains the original grounds for opposition. If this decision is not contested, the ruling enshrined in it becomes final and as a result the documents can no longer be amended.

This interlocutory decision is intended to save the patent proprietor unnecessary translation costs arising from an amendment to the text in appeal proceedings. It nevertheless qualifies as a grant decision in the sense of G 1/10 and corrections can only be requested in the narrow ambit provided for in Rule 140 (see H‑VI, 3.1).

Question 29

7.2.3 Request for publishing fee, translations and a formally compliant version of amended text passages

Answer 29

Once the interlocutory decision becomes final or the amended text in which the patent is to be maintained has been drawn up in opposition appeal proceedings, the formalities officer requests the patent proprietor

–
to pay, within three months, the fee for publishing a new specification of the European patent;

–
to file translations of any amended claims in the two official languages of the EPO other than the language of the proceedings; and

–
to file a formally compliant verbatim version of amended text passages if in oral opposition proceedings the interlocutory decision of the opposition division under Art. 101(3)(a) and 106(2) or the board of appeal decision under Art. 111(2) has been based on documents not complying with Rule 50(1) (see E‑III, 8.7).

If the European patent in the amended form contains different claims for different contracting states, a translation of all sets of claims – in the text communicated to the patent proprietor – into all official languages other than the language of the proceedings must be filed.

Rule 82(2)

If the request under the first paragraph above is not complied with “in due time”, the acts may still be validly performed within two months of notification of a communication pointing out the failure to observe the time limit, provided that within this two-month period the prescribed surcharge is paid. If any of the acts is not performed within the period of grace, the formalities officer will issue a decision for revocation of the patent in accordance with Rule 82(3).

Question 30

8. Request to adjourn opposition proceedings

Answer 30

If a party requests adjournment of opposition proceedings for the sole reason of pending appeal or opposition proceedings of a patent family member (e.g. a parent application), the request will not be granted. The party will receive a communication from the opposition division indicating the reasons for its intention not to grant the request. This communication does not constitute an appealable decision under Art. 106(1) or Art. 106(2).

If oral proceedings take place and the request is maintained, the opposition division will address it at oral proceedings, giving the parties an opportunity to comment. After the oral discussion on adjournment, the opposition division will take a decision on the request.