European Union: EPO Oppositions: Moving Faster In Future

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 reached.

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 patent):

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 past.

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