The EPO has published its intention to speed up the opposition
The total time needed for a decision in straightforward cases
will be reduced to 15 months (currently 19-27 months), calculated
as from expiry of the opposition period. This will mainly be
achieved by a significant shortening of the written proceedings
phase of opposition practice. The new procedure will take effect
from 1 July 2016.
The note entitled "
Information from the EPO on streamlined opposition
proceedings" highlights the intention of the EPO to
"bring opposition proceedings to a speedy conclusion and
thereby establish legal certainty for all parties to opposition
proceedings and the public". The EPO aims to
achieve this by optimising and streamlining its internal
workflows leading to "Early Certainty from
Opposition", while respecting the general principles governing
procedure before the EPO, in particular the right to be heard (
Article 113(1) EPC).
Thefull Notice on the new practice can be found at
OJ EPO 2016, A42 and an animated video summarising the
streamlined procedure can be found here.
We set out some of the key points from the "Notice from the
EPO concerning the opposition procedure as from 1 July 2016"
Reduction in the amount of time that an opposition is in
Point 3 states that "the patent proprietor is invited
to file its observations and any amendments to the patent within
four months" and "If the opposition division
considers it necessary, it will dispatch a communication and invite
the parties to reply within a specified time limit. In most cases
however the opposition division will issue summons to oral
Point 5 states that "In order for the proceedings to
progress expeditiously, parties should submit all facts, evidence
and requests at the beginning of the procedure".
Point 8 states that, as a rule, the date of the oral
proceedings "will not be earlier than six months after
dispatch of the summons".
The drive to issue the summons to oral proceedings shortly
after the proprietor files its response to the opposition, and at
least six months before the oral proceedings, will significantly
reduce the amount of time that an opposition is in "written
procedure". This will introduce a new time pressure for
the opposition divisions, who will now be expected to issue a
summons and preliminary opinion within five months of the patent
proprietor's response (currently opposition divisions take at
least 11 months to do this). It remains to be seen if the reduction
in time will result in a decrease in the quality of preliminary
opinions of opposition divisions.
Additional time pressure will also be placed the patent
proprietor who will be expected to reply to the notice(s) of
opposition within a four month period (contrast this with the nine
months available to an opponent to prepare its notice of
opposition) and will also be expected to set out "all facts,
evidence and requests" in its response.
Extensions of time less likely:
Point 4 states that "The normal period for replying to
communications from the opposition division is four months for
communications raising matters of substance and two months for
other communications (Guidelines E-VII, 1.2). Extensions of
time limits are granted only in exceptional cases with duly
Previously, patent proprietors were routinely allowed to extend
the period set for response to the notice(s) of opposition from
four months to six months. However, it appears that the streamlined
process will make it harder to obtain extensions. Our
experience is that further extension for the time limit for
response in an opposition are already becoming harder to obtain, so
"exception cases" will be more difficult to argue.
Mandatory provisional and non-binding opinions of the
Point 8 states "With the summons to oral proceedings,
the parties also receive a communication setting out the issues
which in the opposition division's view must be discussed at
the oral proceedings. The annexed communication will also
contain the opposition division's provisional and non-binding
Previously, although routinely issued by opposition divisions,
this opinion was optional. It will now be provided as
standard with the summons. It is of course, preliminary and
non-binding, so we will be interested to see how frequently
opposition division decisions will deviate from the opinion in
Having some certainty of timescale in opposition procedure at
the EPO will of course be welcomed, but for more complex cases,
this shortening of time scale may not be advantageous.
The new procedure only applies to oppositions and therefore does
not affect appeal proceedings. Due to backlogs before some Board of
Appeal, it can take at least three years for an appeal case to be
heard. Thus, even with the streamlined opposition procedure, it
will still take a number of years for cases to be finally resolved
before the EPO.
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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