Opposition guidelines - CH1 and 22

Question 1

1. The meaning of opposition

Answer 1

The public may oppose a granted European patent on the basis of one or more of the grounds mentioned in Art. 100. The grounds on which the opposition is based may arise for example from circumstances of which the EPO was not aware when the patent was granted (e.g. prior use or a publication which was not contained or not found among the material available to the EPO). Opposition is therefore a means by which any person (but see D‑I, 4) may obtain the limitation or revocation of a wrongly granted patent.

Question 2

2. Opposition after surrender or lapse

Answer 2

An opposition may be filed even if the European patent has been surrendered or has lapsed for all designated states. This is relevant in that in such cases the rights acquired with the patent remain in existence during the period up to surrender or lapse and claims arising from such rights may subsist after that date.

Question 3

3. Territorial effect of the opposition

Answer 3

The opposition applies to the European patent in all the contracting states in which that patent has effect. Thus, the opposition has, in principle, to be in respect of all the designated states. If an opposition is filed in respect of only some of the designated states it will be treated as if it were in respect of all the designated states.

Art. 99(2)

Nevertheless, the effect of an opposition may differ as between contracting states. This may arise where the patent contains different claims for different contracting states in accordance with Rule 18(2) (see C‑IX, 2.4), or where the claims must take account of different art under the provisions of Art. 54(3) and of Art. 54(4) EPC 1973 (see D‑VII, 8). Amendments may also be occasioned by national rights of earlier date within the meaning of Art. 139(2) and Art. 140 (see H‑II, 3.3 and H‑III, 4.4). Thus, the patent may be differently amended in respect of different contracting states and may be revoked in respect of one or more contracting states and not in respect of others.

Question 4

4. Entitlement to oppose

Answer 4

“Any person” may give notice of opposition without specifying any particular interest. “Any person” is to be construed in line with Art. 58 as meaning any natural person (private individual, self-employed persons, etc.), any legal person or any body assimilated to a legal person under the law governing it. “Any person” does not include the patent proprietor (see G 9/93, reversing G 1/84).

Notice of opposition may also be filed jointly by more than one of the persons mentioned above. In order to safeguard the rights of the patent proprietor and in the interests of procedural efficiency, it has to be clear throughout the procedure who belongs to the group of common opponents. If a common opponent (including the common representative) intends to withdraw from the proceedings, the EPO must be notified accordingly by the common representative or by a new common representative determined under Rule 151(1) in order for the withdrawal to take effect (see also G 3/99).

Oppositions are not assignable but may be inherited or succeeded to as part of an overall succession in law, e.g. in the event of the merger of legal persons (see G 4/88). Acquiring companies may also take over oppositions filed by acquired companies. However, a legal person who was a subsidiary of the opponent when the opposition was filed and who carries on the business to which the opposed patent relates cannot acquire the status of opponent if all its shares are assigned to another company (see G 2/04).

The European Patent Office has to examine, ex officio, the validity of any purported transfer of opponent status to a new party at all stages of the proceedings (see T 1178/04).

Question 5

5. Intervention of the assumed infringer

Answer 5

Under certain conditions (see D‑VII, 6) third parties who prove that proceedings for infringement of the opposed patent have been instituted against them or that the patent proprietor has requested them to cease alleged infringement of the patent and that they have instituted proceedings for a court ruling that they are not infringing the patent may, after the opposition period has expired, intervene in the opposition proceedings. If the notice of intervention is filed in good time and in due form, the intervention is to be treated as an opposition (see D‑IV, 5.6). For accelerated processing of oppositions on request, see E‑VIII, 5.

Question 6

6. Parties to opposition proceedings

Answer 6

The patent proprietor, the opponent(s) and, where applicable, the intervener(s) will be parties to the opposition proceedings. However, an opponent who has withdrawn their opposition or whose opposition has been rejected as inadmissible will remain a party to the proceedings only until the date of such withdrawal or the date on which the decision on rejection has become final. The same will apply in the case of interveners. Third parties who have presented observations concerning the patentability of the invention in respect of which an application has been filed are not parties to opposition proceedings (see E‑VI, 3).

Art. 99(3)
Art. 105(2)
Art. 115

Where the patent proprietors are not the same in respect of different designated contracting states, they are to be regarded as joint patent proprietors for the purposes of opposition proceedings (see D‑VII, 3.1 concerning the unity of the European patent).

Art. 118

Where evidence has been provided that in a contracting state, following a final decision, a person has been entered in the patent register of that state instead of the previous patent proprietor, this person is entitled on request to replace the previous patent proprietor in respect of that state. In this event, by derogation from Art. 118, the previous patent proprietor and the person making the request are not deemed to be joint patent proprietors unless both so request. The aim of this provision is to afford new patent proprietors the opportunity of defending themselves against the opposition as they see fit (see D‑VII, 3.2 as regards the conduct of the opposition proceedings in such cases).

Art. 99(4)
Art. 61(1)(a)

The Legal Division is responsible for decisions in respect of entries in the Register of European Patents (see the decision of the President of the EPO dated 21 November 2013, OJ EPO 2013, 600).

It is to be noted that a person who files two different notices of opposition to the same granted patent acquires party status as opponent only once (T 9/00). Two filings by the same opponent within the opposition period that individually are not admissible but taken together comply with Art. 99(1) and Rule 76 are considered as one admissible opposition (T 774/05; for a joint opposition, see D‑I, 4).

Multiple oppositions are dealt with in a single set of proceedings (see E‑III, 6). When there are multiple opponents and/or proprietors as parties to a single opposition proceedings, it is normally appropriate to deal with all relevant issues (including e.g. admissibility of one of the oppositions, see D‑IV, 5.5) when taking the final decision, e.g. during one oral proceedings (also see E‑III, 6). The legal framework is defined by the sum of the statements of the extent to which the patent is opposed and by the grounds for opposition submitted and substantiated in the notices of opposition provided by each opponent. If one of the oppositions is admissible, but is later withdrawn, prejudicial grounds put forward in said opposition are generally examined by the opposition division of its own motion. If one of the oppositions is inadmissible, and provided at least one admissible opposition has been filed, the opposition division will consider of its own motion any prima facie relevant art cited in the inadmissible opposition (see D‑V, 2.2).

Question 7

7. Representation

Answer 7

As regards the requirements relating to representation of opponents and patent proprietors, reference is made to A‑VIII, 1. Deficiencies in the representation of an opponent when filing the opposition and their remedy are dealt with in D‑IV, 1.2.1(ii) and 1.2.2.2(iv).

Question 8

8. Information to the public

Answer 8

As soon as an opposition has been received, the date of filing of the opposition is entered in the Register of European Patents and published in the European Patent Bulletin. The same applies to the date on which opposition proceedings are concluded and to the outcome of the proceedings (see also A‑XI, 4).

Question 9

1. Administrative structure

Answer 9

Each opposition division is assigned to an EPO directorate dedicated to conducting opposition proceedings.

Question 10

2. Composition

Question 11

2.1 Technically qualified examiners

Answer 11

An opposition division consists of three technically qualified examiners, at least two of whom must not have taken part in the proceedings for grant of the patent to which the opposition relates.

Question 12

2.2 Legally qualified examiners

Answer 12

If the opposition division considers that the nature of the decision so requires, it is enlarged by the addition of a legally qualified examiner who has not taken part in the proceedings for grant.

The principles established for inclusion of a legally qualified member and for consultation of the Directorate Patent Law, the department responsible for providing legally qualified members for examining and opposition divisions, by the examining division apply mutatis mutandis to the opposition division (see C‑VIII, 7). Difficult legal questions may also arise during the examination as to whether an opposition is to be rejected as inadmissible. In addition, consultation of a legally qualified member is to be envisaged in cases where it is questionable whether or not a disclosure by means other than a document was made available to the public.

Question 13

2.3 Chair

Answer 13

The chair must be a technically qualified examiner who has not taken part in the grant proceedings.

Question 14

3. Allocation of duties and appointment of members of the opposition division

Answer 14

C‑II, 2 applies mutatis mutandis.

Question 15

4. Tasks of the opposition divisions

Question 16

4.1 Examination of oppositions

Answer 16

The opposition divisions are responsible for the examination of oppositions against European patents.

The examination of newly submitted documents for compliance with physical requirements will essentially be the task of the competent formalities officers (see D‑II, 7, A‑I, 2, A‑III, 3.2 and C‑VIII, 1).

Question 17

4.2 Decision concerning the awarding of costs by the opposition division

Answer 17

The opposition division will decide on requests to have the costs fixed by the formalities officer reviewed (see D‑II, 7 and D‑IX, 2.1).

Question 18

4.3 Ancillary proceedings

Answer 18

It will be incumbent upon the opposition division to conduct ancillary proceedings arising in the course of opposition proceedings. Such ancillary proceedings may for example concern a request for re-establishment of rights in respect of a time limit which was not observed vis-à-vis the EPO during the opposition proceedings, a request for a decision concerning a finding arrived at by the formalities officer that a right has been lost or a request for exclusion from file inspection. Additional tasks may be entrusted to the opposition divisions by the President of the EPO in accordance with Rule 11(2).

Art. 122(2)
Rule 136(4)
Rule 112(2)

As regards exclusion from file inspection pursuant to Rule 144 in conjunction with the decision of the President of the EPO dated 12 July 2007, Special edition No. 3, OJ EPO 2007, J.3, reference is made to A‑XI, 2.1. Documents having a substantive and/or procedural bearing on opposition proceedings can only exceptionally be excluded from file inspection (T 1691/15). Communications dealing with a request for exclusion from file inspection are excluded from file inspection and are issued separately from communications dealing with other issues. Depending on its content, a document (provisionally) excluded from file inspection and any communication concerning a request for its exclusion from file inspection may be forwarded to the other party or parties (Rule 81(2)). As the public must be informed of the grounds prejudicing or supporting the maintenance of an opposed patent, only documents, or parts thereof, not (provisionally) excluded from file inspection can be used as evidence to prove or to refute a ground for opposition.

If a party requests that the EPO excludes an otherwise public nonpatent literature document from file inspection for reasons of copyright, the opposition division will interpret this as a request not to make the document available to third parties in the public part of the file. This request, in the above interpretation, is normally granted if the copyright of the document in question is not owned by a party to the proceedings and the document in question is relatively easily retrievable including against payment. For example, a scientific article is usually easily retrievable, and its copyright is assigned to the editor. In contrast, a third-party company brochure is not easily retrievable. If the copyright of such company brochure is owned by a party to the proceedings, the request is refused by the opposition division and the document is made available via file inspection.

Where the request not to make a document available via file inspection for reasons of copyright is acceded to by the opposition division, the page(s) carrying the bibliographic details of the non-patent literature document (normally the cover page) will nonetheless be made available via file inspection in order to ensure that members of the public are in a position to retrieve the entire document. The nonpatent literature document is not considered as being excluded from file inspection within the meaning of Rule 144 and can be used as evidence in the opposition proceedings.

Question 19

5. Allocation of tasks to members

Answer 19

An opposition division will normally entrust one of its members with the examination of the opposition, but not with the conduct of oral proceedings, up to the time of the final decision on the opposition (see also D‑IV, 2). If need be, the same member may also be entrusted with the examination of the evidence adduced (see E‑IV, 1.3). This member will be referred to as the primary examiner.

Question 20

6. Duties and powers of members

Answer 20

The primary examiner will conduct the examination of the opposition. If oral proceedings have been requested, they are normally arranged as first action, possibly in conjunction with the taking of evidence (see E‑III, 1 to E‑III, 4 and E‑IV, 1.6.1). The primary examiner will prepare the communication accompanying the summons to oral proceedings and submit it to the other members. If the primary examiner considers that communications to the parties preceding the summons for oral proceedings are necessary, these communications will be submitted to the opposition division before despatch.

If there are differences of opinion within the opposition division, the primary examiner will confer with the other members to discuss the points at issue. The chair will preside at the meeting and, following a discussion, will take a vote on the decision or the further course of the procedure.

Voting will be on the basis of a simple majority. In the event of parity of votes, the vote of the chair of the division is decisive.

Any further measures necessary will as a rule be entrusted to the primary examiner. If no further measures are necessary, the primary examiner will draft a decision on the opposition and will distribute the draft to the other members of the opposition division for examination and signature. If any changes are proposed by a member and there are differences of opinion on such changes, the chair must arrange a meeting.

Where reference is made hereinafter to the opposition division, this is to be taken to mean the primary examiner where such a member has been appointed and in so far as the EPC entitles an opposition division member to act alone.

Question 21

7. Allocation of individual duties

Answer 21

The President of the EPO may entrust to employees who are not technically or legally qualified examiners the execution of individual duties falling to the examining divisions or to the opposition divisions and involving no technical or legal difficulties. In so far as such duties affect the public, their allocation will be notified in the Official Journal of the EPO (see decisions of the President of the EPO dated 12 December 2013, OJ EPO 2014, A6, and 23 November 2015, OJ EPO 2015, A104).

The formalities officers entrusted with these duties are also in charge of fixing the amount of the costs (see D‑IX, 2.1).