Opposition guidelines CH 7 and 8 Flashcards
- Sequence of proceedings
1.1 Basic principle
Examination of the admissibility of the opposition and preparation of the examination of the opposition will be commenced immediately after the notice of opposition has been received by the formalities officer or the opposition division (see D‑IV, 1 and 3 and D‑V, 1 and 2).
If during the rest of the proceedings the opposition division, on account of the amount of work in hand, is unable to process immediately all the oppositions submitted, the reference date for the sequence of tasks will, in principle, be the date on which the last observations in respect of which a time limit had been laid down were submitted by any of the parties, but may not be later than the date on which the time limit expired. Documents received unsolicited or not subject to a previously stipulated official time limit, in connection with official communications setting a time limit, will not affect the sequence of tasks unless they require a further early notification setting a time limit.
1.2 Exceptions
Notwithstanding D‑VII, 1.1 above, oppositions are to be given priority:
(i)
if the earlier examination proceedings were of considerably longer duration than usual;
(ii)
if the opposition proceedings have already extended over a considerably longer period than usual;
(iii)
if a party to the proceedings has submitted a reasoned request for accelerated processing in a case where an infringement action in respect of the European patent is pending before a national court of a contracting state, or if the EPO is informed by a national court or competent authority of a contracting state that infringement actions are pending (see the notice from the EPO dated 17 March 2008, OJ EPO 2008, 221);
(iv)
if other matters to be dealt with, e.g. divisional applications, hinge upon the final decision concerning the opposition; or
(v)
if the next procedural step can be dealt with relatively quickly.
- Request for documents
Documents referred to by a party to opposition proceedings must be filed together with the notice of opposition or the written submissions. A single copy of these documents is sufficient. If such documents are neither enclosed nor filed in due time upon invitation by the formalities officer, the opposition division may decide not to take any arguments based on them into account.
In implementing this provision, the desired aim of speeding up the procedure will be borne in mind as much as the common interest in taking obviously relevant submissions into account.
Rule 83
If during the opposition proceedings it becomes apparent that the previous application from which the opposed patent claims priority is not in an official language of the European Patent Office and the validity of the priority claim is relevant to the determination of the patentability of the subject-matter of the patent concerned, the opposition division will invite the patent proprietor to file a translation of that application into one of the official languages within a period to be specified. Alternatively, a declaration may be submitted that the European patent application on the basis of which the opposed patent was granted is a complete translation of the previous application. For the procedure for inviting the patent proprietor to file such a translation or declaration see A‑III, 6.8, and F‑VI, 3.4. Such an invitation is not to be issued if the translation of the previous application or the declaration was available to the European Patent Office and is to be included in the file of the European patent application under Rule 53(2).
Failure by the patent proprietor to supply a required translation or declaration in due time will lead to the priority right being lost. This will have the effect that the intermediate document(s) will become prior art under Art. 54(2) or Art. 54(3), as applicable, and therefore relevant for the assessment of patentability (see A‑III, 6.8.3). The patent proprietor will be notified of this loss of rights (see A‑III, 6.11). As a means of redress, the patent proprietor may request either re-establishment of rights under Art. 122 and Rule 136 (see E‑VIII, 3) or a decision under Rule 112(2) (see E‑VIII, 1.9.3).
- Unity of the European patent
3.1 Basic principle
If the patent proprietors are not the same for different designated contracting states, the unity of the European patent in opposition proceedings will not be affected, since such persons are to be regarded as joint proprietors (see D‑I, 6, second and third paragraphs).
In particular, the text of the European patent will be uniform for all designated contracting states unless otherwise provided for in the EPC (see D‑VII, 3.2 and H‑III, 4).
3.2 Factors affecting the unity of the European patent
The unity of the European patent in opposition proceedings will be affected if the previous patent proprietor and the person replacing them pursuant to Art. 99(4) in respect of a particular contracting state are not deemed to be joint patent proprietors (see D‑I, 6). In this event, the opposition proceedings involving the different patent proprietors must be conducted separately. Since different requests may be submitted by the two patent proprietors (e.g. as regards amendments to the claims), the two sets of opposition proceedings may lead to different conclusions, e.g. as regards the text of the European patent or the scope of protection.
- Procedure where the patent proprietor is not entitled
4.1 Stay of proceedings
If third parties provide proof, e.g. a certificate from the court concerned, to the EPO during opposition proceedings or during the opposition period that they have opened proceedings against the patent proprietor for the purpose of obtaining a decision within the meaning of Art. 61(1), opposition proceedings are stayed by the Legal Division in accordance with Rule 14(1) EPC unless the third parties consent to their continuation. Such consent must be communicated in writing to the EPO and is irrevocable. However, the proceedings will be stayed only if the opposition division has deemed the opposition admissible.
If proceedings within the meaning of Art. 61(1) are instituted during the opposition period, a stay of proceedings will be possible only if a notice of opposition has been filed. Accordingly, the third party might have to file an opposition itself in order to benefit from a stay of proceedings under Rule 78.
The dates of stay and resumption of proceedings will be entered in the European Patent Register. The parties to the opposition proceedings are to be informed of the order staying the proceedings.
4.1.1 Date of the stay of proceedings
The proceedings are stayed on the date on which the EPO receives evidence that proceedings against the patent proprietor have been instituted. The requirements for valid institution of relevant proceedings are determined by national law (J 7/00).
4.1.2 Legal character and effect of the stay of proceedings
Stay of proceedings is a preliminary procedural measure sui generis which takes immediate effect as a preventive measure to preserve the third party’s possible rights (J 28/94; J 15/06).
The patent proprietor will not be heard but may file a request for an appealable decision on the stay of proceedings.
Stay of proceedings means that the legal status quo existing at the time of ordering is maintained, i.e. neither the EPO nor the parties may validly perform any legal acts (J 38/92).
An automatic debit order ceases to be effective on the day on which a stay of the proceedings takes effect (see Point 11.1(c) AAD, Annex A.1 to the ADA, Supplementary publication 3, OJ EPO 2022, page 35). If the automatic debiting procedure is to be used again after resumption of the proceedings, a new automatic debit order is to be filed.
4.2 Continuation of proceedings
The date of the continuation of the proceedings and the legal basis for their continuation are to be communicated to the parties to the opposition proceedings.
4.2.1 Continuation after a final decision
Proceedings are resumed when evidence is provided that a final decision within the meaning of Art. 61(1) has been taken. If the decision is in favour of the third party, the proceedings may not be resumed earlier than three months after the decision has become final, unless the third-party requests resumption.
4.2.2 Continuation regardless of the stage reached in national proceedings
When giving a decision on the stay of proceedings or thereafter, the Legal Division may set a date on which it intends to continue the proceedings, regardless of the stage reached in the national proceedings.
Unlike the decision on staying the proceedings, it is at the discretion of the Legal Division to decide whether proceedings are to be resumed. In exercising this discretion, the Legal Division has to take into account the impact of a further suspension or the continuation of the proceedings on each of the parties (J 33/03). Some aspects to be taken into account when exercising this discretion are the duration of the stay and the outcome of first instance proceedings before national courts. Likewise, it will be considered whether delaying tactics are being employed by the third party.
4.3 Interruption of time limits
The time limits in force at the date of stay are interrupted by the stay of proceedings. The time which has not yet elapsed begins to run as from the date on which proceedings are resumed; however, the time still to run after the resumption of the proceedings must not be less than two months.
Example:
A communication under Rule 82(2) maintaining the patent in amended form is despatched by the EPO on 24.01.2018. Under Rule 126(2) and Rule 131(2), this communication is deemed delivered on 03.02.2018. The three-month period to pay the publication fee and file the translation of any amended claim starts on the day following delivery of the communication, i.e. on 04.02.2018, and it ends on 03.05.2018. Attention is drawn to amended Rules 126, 127 and 131 entering into force on 1 November 2023 and under which computation of periods will change. Detailed information on the changes in practice will be published in the Official Journal of the EPO well in advance.
If proceedings are stayed under Rule 14(1) by the Legal Division on 23.02.2018, the three-month period has elapsed from 04.02.2018 to 22.02.2018 before the event of the staying of the proceedings, i.e. 19 days have already passed and the period remaining is 9 days and 2 months. Since the remaining period is longer than two months, under Rule 14(4) it will run after the resumption of the proceedings.
Hence, if the proceedings are resumed by the Legal Division on 07.06.2018, the period for paying the publication fee and filing the translation of the claims runs until 16.08.2018 for the following reasons:
(i)
the day of resumption of the proceedings by the Legal Division (07.06.2018) is the first day on which the remaining period starts running again (Rule 131(2) does not apply).
(ii)
The remaining days are added first and then the remaining months: in the example, 9 days from and including 07.06.2018 results in 15.06.2018, and the addition of another 2 months results in the remaining period expiring on 15.08.2018.
(iii)
Since Rule 134(1) applies also to the remaining period and since on the 15.08.2018 no mail is delivered in Munich (public holiday), the time limit is extended until 16.08.2018.
4.4 Department responsible
The Legal Division is responsible for the procedure where the patent proprietor is not entitled (see the decision of the President of the EPO dated 21 November 2013, OJ EPO 2013, 600).