The "Opposition" procedure is a widely used and
cost-effective way to challenge a patent granted by the European
Patent Office (EPO). Within nine months of the grant of a
European Patent, third parties can lodge oppositions against the
patent. A significant proportion of European Patents are opposed
– some survive the opposition process unscathed while others
are revoked or are maintained but with narrower scope.
The most common criticism of the opposition process, however, is
that it is slow, with lengthy gaps between the various stages of
the procedure. Most oppositions take 3-4 years or more to progress
to a decision, and because many decisions are appealed it may be
another 2-3 years or more after that before a final outcome is
The EPO has now announced measures to address that problem. As
from 1 July 2016, the EPO will aim to issue first instance
decisions within 15 months of the end of the opposition period, at
least in straightforward cases, ie within about two years from the
date of grant of the patent.
This will be achieved through a number of measures:
Whereas in the past, a patent
proprietor could routinely extend the time taken to respond to an
opposition from an initial period of four months to six months,
without any special reasons being required, in future extensions of
time will be allowed only in exceptional circumstances.
Previously, in many cases, the
parties were invited to make further submissions. However, that
will now be done only in cases in which the EPO considers it
necessary. Normally, as soon as the patent proprietor has replied
to the opposition, the EPO will prepare its next action.
That next action will normally be the
setting of the date for a hearing ("oral proceedings" in
EPO terminology). At least six months' notice of the date of
the hearing will be given, but it is to be anticipated that the EPO
will generally try to stick to that timescale. Any further
submissions will have to be submitted no later than two months
before the hearing.
The likely timescale for opposition in future may therefore be
something like this (counting from the date of grant of the
EPO invites proprietor
EPO sets date of
Patentees and their representatives will need to be aware of
this likely accelerated timescale, and will need to move cases
forward more quickly than they have been able to do in the
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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1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
The UK government has not yet invoked Article 50 of the Treaty on European Union (this is likely to happen by the end of March), and the UK's actual exit from the European Union is at least two years away.
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