Opposition guidelines CH 7 and 8

Question 1

1. Sequence of proceedings

Question 2

1.1 Basic principle

Answer 2

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.

Question 3

1.2 Exceptions

Answer 3

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.

Question 4

2. Request for documents

Answer 4

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).

Question 5

3. Unity of the European patent

Question 6

3.1 Basic principle

Answer 6

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).

Question 7

3.2 Factors affecting the unity of the European patent

Answer 7

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.

Question 8

4. Procedure where the patent proprietor is not entitled

Question 9

4.1 Stay of proceedings

Answer 9

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.

Question 10

4.1.1 Date of the stay of proceedings

Answer 10

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).

Question 11

4.1.2 Legal character and effect of the stay of proceedings

Answer 11

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.

Question 12

4.2 Continuation of proceedings

Answer 12

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.

Question 13

4.2.1 Continuation after a final decision

Answer 13

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.

Question 14

4.2.2 Continuation regardless of the stage reached in national proceedings

Answer 14

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.

Question 15

4.3 Interruption of time limits

Answer 15

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.

Question 16

4.4 Department responsible

Answer 16

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).

Question 17

5. Continuation of the opposition proceedings in the cases covered by Rule 84

Question 18

5.1 Continuation in the case of surrender or lapse of the patent

Answer 18

If the European patent has been surrendered or has lapsed for all the designated states, the opposition proceedings must be continued at the request of the opponent filed within two months after the date on which the opposition division informed the opponent of the surrender or lapse. Evidence of the lapse must generally be provided by submitting extracts from the Patent Registers of the designated contracting states.

Surrender or lapse has immediate nonretroactive effect (i.e. patent protection ceases on the date of surrender or lapse), whereas a revoked patent is deemed to have had no effect from the outset (Art. 68). So the opponent may still have an interest in the revocation of a lapsed or surrendered patent.

If, in the case of a request for continuation of the proceedings, the patent proprietor has renounced before the competent authorities in the designated states all rights conferred by the patent with ab initio and universal effect, or if no request for continuation has been received within the time limit, the opposition proceedings will be closed. The decision to close the proceedings will be communicated to the parties.

A statement by the patent proprietors making it unambiguously clear that they no longer wish their patent to be maintained is considered to be a request for its revocation, irrespective of the wording used (T 237/86). For details of the procedure to be followed, see D‑VIII, 1.2.5.

Question 19

5.2 Continuation on the death or legal incapacity of the opponent

Answer 19

In the event of the death or legal incapacity of an opponent, the opposition proceedings may be continued by the opposition division of its own motion, even without the participation of the heirs or legal representatives, for example if the legal proceedings in connection with the will or the appointment of a new legal representative would inordinately prolong the opposition proceedings. This provision will apply not only where only one opposition has been filed: it will also apply in cases where not all those who have filed opposition are deceased or legally incapacitated.

The opposition division will continue the proceedings if, for instance, the patent proprietor has submitted amendments to the patent in response to the notice of opposition (see T 560/90). The opposition division will also continue the proceedings if it considers that the stage reached in the opposition proceedings is such that they are likely to result in a limitation or revocation of the European patent without further assistance from the opponent(s) concerned and without the opposition division itself having to undertake extensive investigations (see T 197/88).

The patent proprietor and any other parties are to be informed that the proceedings will be continued. Otherwise the proceedings are closed and the decision to close the proceedings is communicated to the parties.

Question 20

5.3 Continuation after the opposition has been withdrawn

Answer 20

The opposition proceedings can be continued even if every opposition has been withdrawn. The principles set forth in D‑VII, 5.2 apply mutatis mutandis in deciding whether the proceedings are to be continued or closed.

Question 21

6. Intervention of the assumed infringer

Answer 21

Assumed infringers of a patent (see D‑I, 5) may file notice of intervention in the opposition proceedings within three months of the date on which infringement proceedings were instituted against them or on which they instituted proceedings for a court ruling that they are not infringing the patent. Notice of intervention must be filed in a written reasoned statement. It is not deemed to have been filed until the opposition fee has been paid in the amount prescribed in the Rules relating to Fees under the EPC.

Intervention is permissible as long as opposition or appeal proceedings are pending. A third party can become a party to the proceedings during the period for filing an appeal only if a party to the proceedings in which the decision was given files an appeal pursuant to Art. 107; otherwise the decision of the opposition division will become final on expiry of the appeal period (see G 4/91 and G 1/94).

A properly filed and admissible intervention is treated as an opposition, which may be based on any ground for opposition under Art. 100 (see G 1/94). This means that, when intervening at any stage of first-instance proceedings, the intervener enjoys essentially the same rights as any other party to the proceedings. If the intervener introduces new facts and evidence which appear to be crucial, the proceedings may need to be prolonged to enable them to be adequately considered. In all other cases the opposition division must ensure that the intervention does not delay the proceedings.

Art. 105
Rule 89

If the notice of intervention is filed at a late stage of the proceedings, for example when oral proceedings have already been scheduled, the opposition division may dispense with issuing communications under Rule 79(1) to Rule 79(3). The introduction of a new ground for opposition at such a late stage may lead to a postponement of the date set for oral proceedings.

For accelerated processing of oppositions and accelerated processing before the boards of appeal on request, see E‑VIII, 5 and E‑VIII, 6.

Rule 79(4)

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

Rule 89(2)

(i)
a statement of the grounds for intervention and corresponding evidence. The proceedings providing the grounds for intervention must be directed towards establishing an infringement (or its absence) as a final legal result. Proceedings directed at the preservation of evidence to enable a party to initiate separate infringement proceedings are not sufficient in this regard (see T 439/17).

Art. 105(1)

(ii)
the name, address and nationality of the assumed infringer and the state in which the assumed infringer’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. Assumed infringers (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 assumed infringer’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 number be indicated (see D‑IV, 1.2.2.2(i) and 1.4.2);

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

(iii)
the number of the European patent at issue in the opposition proceedings in which intervention is made, 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)

(iv)
a statement of the extent to which the European patent at issue is opposed by way of intervention and of the grounds on which the opposition by way of intervention is based, as well as an indication of the facts and evidence presented in support of these grounds, together with a statement of reasons, i.e. arguments (see D‑IV, 1.2.2.1(iii) to 1.2.2.1(v) and 1.4.2);

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

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

Rule 76(2)(d)

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

Question 22

7. Publication of a new specification of the patent

Answer 22

If a European patent is maintained in an amended form, the EPO must, as soon as possible after it publishes the mention of the opposition decision, publish a new specification of the European patent containing the description, the claims and any drawings, in the amended form.

Art. 103

Rule 74 applies mutatis mutandis to the new specification of the European patent.

Question 23

8. Transitional provisions for Art. 54(4) EPC 1973 and Art. 54(5)

Answer 23

Art. 54(4) EPC 1973 and Rule 23a EPC 1973 continue to apply to patents granted in respect of patent applications filed before 13 December 2007. Consequently, in such cases, the designated countries need to be taken into consideration when assessing the novelty of documents according to Art. 54(3) (see H‑III, 4.2).

Art. 54(5) applies only to patents for which the date of the decision to grant the patent under consideration was taken on or after 13 December 2007 (Special edition No. 1, OJ EPO 2007, 197). If the decision to grant was taken before that date (the date of entry into force of EPC 2000), only “Swiss type” claims are allowed for any second or further medical use (provided these claims meet with all the other requirements of the Convention).

Where the subject-matter of a claim is rendered novel only by a new therapeutic use of a medicament, that claim may no longer take the form of Swiss-type claim for European or international patent applications having a filing date or earliest priority date of 29 January 2011 or later (see G 2/08, OJ EPO 2010, 514 and G‑VI, 7.1).

Examples:

Date of entry into force of EPC 2000: 13.12.2007.

The decision to grant for patent EP1 mentions the date of 13.12.2007 in the top box and the date of 07.12.2007 in the bottom line.

EP1 has three claims.

Claim 1: Product X.

Claim 2: Product X for use in medicine.

Claim 3: Product X for use in the treatment of asthma.

Notice of opposition is duly filed in 2008 citing prior-art document D1 under Art. 54(2) EPC which reveals product X and its therapeutic use in the treatment of pain and more specifically headache.

The situation is as follows:

According to G 12/91 and J 7/96, published in OJ EPO 1999, 443, the date when the decision to grant the patent was taken is the date the decision to grant was handed over to the EPO postal service, that is 07.12.2007.

This means that, as regards medical use-related claims, EP1 is treated under the system applicable before EPC 2000’s entry into force on 13.12.2007. Thus, Art. 54(5) EPC does not apply to EP1.

Therefore, in the opposition proceedings for EP1, claims 1-3 are no longer acceptable. Claims 1 and 2 are not novel and claim 3 is not in the required “Swiss-type” format for a second medical use (G 5/83). The proprietor of patent EP1 would then need to abandon claims 1 and 2 and reformulate claim 3 as: “Use of product X for the manufacture of a medicament for the treatment of asthma”.

It is to be noted that if the date of handing the decision to grant over to the EPO postal service had been 13.12.2007 or later, then Art. 54(5) EPC would have been applicable and in the current example claim 3 of EP1 could have been maintained as granted.

Example of conflicting prior art:

The mention of grant for a patent EP1 filed on 10.12.2007, designating FR, DE, GB, IT and ES and claiming no priority, is published in the Bulletin in May 2012 and nine months later notice of opposition is filed. One of the novelty objections is raised under Art. 54(3) EPC with regard to a European patent application EP2 published on 18.12.2007, having a valid priority date of 16.06.2006 and validly designating FR, DE and GB. Oral proceedings in this case are held during 2013.

The situation is as follows:

EP1 was granted in respect of a patent application filed before the date of EPC 2000’s entry into force (i.e. 10.12.2007). Consequently, as regards Art. 54(3) EPC, the provisions in force before that date apply. So in this case, Art. 54(4) and Rule 23a EPC 1973 still apply (in 2013). Therefore, EP2 is relevant for novelty only for the designations FR, DE and GB but not for the designations IT and ES.

Note that if EP1 had in this case been filed on 13.12.2007, Art. 54(4) and Rule 23a EPC 1973 would no longer be applicable when assessing novelty under Art. 54(3) EPC. Consequently, EP2 would be prior art against the novelty of EP1 as a whole, regardless of any common designations.

Question 24

Chapter VIII – Decisions of the opposition division

Question 25

1. Final decisions on an admissible opposition

Question 26

1.1 General remarks

Answer 26

The opposition division has to take a final decision on the opposition, by revoking the European patent or rejecting the opposition or ruling that the European patent is to be maintained as amended. If the only admissible opposition or all the admissible oppositions are withdrawn and the opposition division takes the view that as the case stands there is no reason for the Office to continue the proceedings of its own motion, the proceedings are closed by means of a formal decision (Rule 84(2), second sentence).

Question 27

1.2 Revocation of the European patent

Question 28

1.2.1 Revocation on substantive grounds

Answer 28

If the opposition division is of the opinion that at least one ground for opposition as set out in Art. 100 prejudices the maintenance of the European patent, it will revoke the patent under Art. 101(2), first sentence. Analogously, if the opposition division is of the opinion that the patent as amended during the course of the opposition proceedings does not meet the requirements of the Convention, it will revoke the patent under Art. 101(3)(b).

For revocation because the patent proprietor has not agreed to the text, see D‑VI, 2.2 and D‑VIII, 1.2.5.

Question 29

1.2.2 Revocation for failure to pay the prescribed fee for publishing, to file a translation or to file a formally compliant version of amended text passages

Answer 29

Under Rule 82(2) in conjunction with (3), if the patent proprietor fails in due time to:

(i)
pay the prescribed fee for the printing of a new specification of the European patent,

(ii)
file a translation of the amended claims in the two official languages of the EPO other than the language of the proceedings (see D‑VI, 7.2.3), or

(iii)
file a formally compliant verbatim version of the amended text passages (see E‑III, 8.7.3),

the European patent will be revoked.

Question 30

1.2.3 Revocation for failure to notify the appointment of a new representative

Answer 30

If opposition proceedings are interrupted according to Rule 142(1)(c) and the patent proprietor, who is not resident in one of the contracting states, does not forward a notification of the appointment of a new representative within the two-month period laid down in Rule 142(3)(a) (see E‑VII, 1.4(i)), the European patent will be revoked.

Question 31

1.2.4 Revocation in the event of requirements not being met until after expiry of time limits

Answer 31

In the cases referred to in D‑VIII, 1.2.2 and 1.2.3, the European patent will be revoked even if the omitted acts have been completed during the period between expiry of the time limit and the taking of a final decision, unless a request for re-establishment of rights has been filed, in which case a decision must first be given on the request.

Question 32

1.2.5 Revocation of the patent in the event that the patent proprietor no longer wishes the patent to be maintained as granted

Answer 32

If patent proprietors state that they no longer approve the text in which the patent was granted and do not submit an amended text, the patent must be revoked pursuant to Art. 101 (see T 203/14 and T 2405/12). This also applies when the patent proprietor requests the patent to be revoked.

If patent proprietors unambiguously declare to the EPO the surrender (or abandonment or renunciation) of the patent, this is interpreted as equivalent to a request that the patent be revoked (see T 237/86). If the request of the patent proprietors is not unambiguous, they are given the opportunity to request that the patent be revoked or to declare that they no longer approve of the patent being maintained as granted. This results in the patent being revoked.

Question 33

1.3 Rejection of the opposition

Answer 33

If the opposition division is of the opinion that the grounds for opposition mentioned in Art. 100 do not prejudice the maintenance of the European patent unamended, it will reject the opposition.

Question 34

1.4 Maintenance of the European patent as amended

Question 35

1.4.1 Taking of a final decision

Answer 35

If the opposition division is of the opinion that, taking into consideration the amendments made by the patent proprietor during the opposition proceedings, the patent and the invention to which it relates meet the requirements of the EPC, it will issue an interlocutory decision to maintain the European patent as amended.

The procedure specified in D‑VI, 7.2.1 to 7.2.3 will precede the final decision.

Question 36

1.4.2 Statement in the decision of the amended form of the European patent

Answer 36

The decision must state which text of the European patent forms the basis for maintaining it.

Question 37

2. Other decisions

Question 38

2.1 Decision on the inadmissibility of an opposition or intervention

Answer 38

See D‑IV, 3 and 5.5 with reference to the notice of opposition and D‑IV, 5.6 and D‑VII, 6 for the intervention of an assumed infringer.

Question 39

2.2 Decisions which do not terminate proceedings

Answer 39

Such decisions are dealt with in E‑X, 3.

See D‑VI, 7.2.2 with reference to the maintenance of a patent with amended documents.

Question 40

2.3 Decision on a notified loss of rights at the request of the person concerned

Answer 40

This decision is dealt with in E‑VIII, 1.9.3.

Question 41

2.4 Decision on re-establishment of rights

Answer 41

This decision is dealt with in E‑VIII, 3.3.

Question 42

2.5 Decision on closure of the opposition proceedings

Answer 42

This decision is dealt with in D‑VII, 5 and D‑VIII, 1.1.