UK: Update On Oppositions And Opposition Appeals

Last Updated: 22 October 2018
Article by James Ward, David Lewin, David Brown and Magnus Johnston

"Early Certainty from Opposition"?

In mid-2016 the EPO introduced "Early Certainty from Opposition", announcing that streamlined internal workflows would apply to first-instance opposition proceedings as from 1 July 2016: see notices in the EPO Official Journal, May 2016, A42 and A43. A stated intention was to reduce the time needed for a first-instance decision in "straightforward" cases to 15 months from expiry of the opposition term. Perhaps reasonably enough, no attempt was made to define "straightforward".

Intended or possible effects of EPO-internal "streamlining" on requirements to be made of parties to proceedings were not particularly spelled out in the May 2016 notices. They indicated that the term to be set for the patentee to respond to the notice(s) of opposition would be 4 months, extendible only in exceptional cases, as was previously so (see e.g. Rule 132 EPC). In the November 2016 version of the Guidelines for Examination at the EPO, a passage was amended to emphasize that extensions would be granted "only in exceptional, duly substantiated cases". This was maintained in the November 2017 version of the Guidelines (Part E, Chap. VIII, 1.6 Extension of a time limit).

The notices also indicated that the time between issue of a summons to oral hearing and the hearing date would now normally be at least 6 months (up from 4 months) and that the deadline for final written submissions would now normally be set at 2 months before the hearing (rather than 1 month). These changes were incorporated into the November 2016 Guidelines and maintained in the November 2017 Guidelines (Part E, Chap. III, 6. Summons to oral proceedings; Part D, Chap. VI, 3.2. Summons to oral proceedings).

The schematic above outlines steps in opposition proceedings. It does not indicate all possibilities, but shows steps in the procedure which are more or less common.

If only the notice of opposition and the patentee's response need be considered – i.e. if the Opposition Division finds no reason to issue any communication and no further submissions are required of or made by a party or parties, and an oral hearing is not needed – the case could be ready for decision around 6 to 9 months after the expiry of the opposition term. If an oral hearing is needed then it might just be possible to schedule the hearing within 15 months of expiry of the opposition term. However, it seems unlikely that the 15-month target could be met if additional submissions are made by a party or parties after the patentee's initial response to the opposition, or if before reaching a decision or before issuing a summons to oral hearing, the Opposition Division finds a need to issue a communication and further submissions are required of or made by a party or parties.

It is probably too soon to make a firm determination of whether "Early Certainty from Opposition" has in general expedited first-instance opposition proceedings, even if its effect can eventually be singled out from other factors affecting opposition proceedings. However, an EPO "Quality Report" ( http://www.epo.org/about-us/services-and-activities/quality/quality-indicators.html, indicated as updated on 28.5.2018) offers this information on the length of opposition proceedings:

EPO Opposition Backlogs - Increasing or Decreasing?

Although "Early Certainty from Opposition" may not have played much of a part so far, according to EPO Annual Reports the number of first-instance decisions on opposition cases has increased significantly in recent years. In 2016 and 2017 almost a thousand more first-instance decisions on opposition cases were made than in 2013 and 2014.

The number of opposition cases awaiting first-instance decisions at the start of 2013 is not known, but it appears that up to the end of 2017 this number had been reduced by 2700, or more than a half-year in terms of the number of first-instance decisions taken per year.

Opposition Appeals

According to EPO Annual Reports, the number of opposition appeals entered in 2016 was around 500 more than appeals entered in 2013, with even more appeals entered in 2017. According to the Annual Reports around 40% to 45% of first-instance decisions in opposition cases are subject to appeal.

The number of opposition appeals settled has increased year by year since 2013, but has not kept pace with opposition appeals newly entered.

The Annual Report of the Boards of Appeal for 2017 gives information on the numbers of opposition appeals pending at year ends (i.e. at 31 December each year) since 2014. The increase in appeals pending amounts to well over a year in terms of opposition appeals settled per year.

Of course, not all cases still to be settled, either in the first-instance or on appeal, can reasonably be said to represent "backlog". The proceedings involved cannot be concluded arbitrarily quickly. Perhaps a "backlog" might be said to be represented by cases still undecided after some minimum possible time within which the relevant proceedings could, at least theoretically, be concluded, or by cases still undecided after some target period.

The Annual Report of the Boards of Appeal for 2017 gives information on numbers of appeals pending before Technical Boards of Appeal (which deal with both opposition and examination appeal) for more than two years. The information relates to opposition and examination appeals.

Annual Report of the Boards of Appeal for 2017 indicates that the average length of proceedings before Technical Boards of Appeal was 38 months overall and 37 months for opposition appeals.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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