EPO Oppositions and Appeals

A notice of opposition must be filed within a non-extendable period of nine months from the date of grant of the patent. The notice of opposition must be accompanied by a reasoned statement setting out the grounds on which the opposition is based. An official fee must also be paid within the same period.

The possible grounds of opposition are unpatentable subject-matter, lack of novelty, lack of inventive step, insufficiency of disclosure (lack of enablement) and added subject-matter (lack of basis for an amendment in the application as filed). A lack of clarity of the granted claims is not a ground for opposition.

Once the notice of opposition has been filed, the patent proprietor is invited by the European Patent Office (EPO) to respond to the notice of opposition by setting out the reasons why the patent should be maintained, either as granted or in amended form, and the opposition rejected.
A period of four months is generally set for this response, and extensions of time are granted only in exceptional circumstances.

Once it has been filed, the proprietor’s response is communicated to the opponent(s).
The grounds of opposition and the proprietor’s observations are reviewed by an Examiner at the EPO. The opponent and/or the proprietor may be invited to submit further written submissions after this initial stage, but it is more usual for a summons to oral proceedings (a hearing) to issue.

With the summons to oral proceedings, the EPO normally provides a preliminary opinion on the issues raised and the main points to be discussed at the oral proceedings.
About six months’ notice of the hearing date is given and the dates may only be changed in exceptional circumstances.

The deadline for filing further written submissions by either party in advance of the oral proceedings is usually around two months before the date of the oral proceedings.

It is common in opposition proceedings for the proprietor to file one or more auxiliary requests to maintain the patent in an amended version, should the main request for maintenance of the patent be rejected by the EPO.

Each auxiliary request is essentially a new set of claims which are narrower in scope than the preceding request. They are typically filed in order to provide a stronger position in relation to the cited prior art, but could also address other grounds of opposition such as sufficiency of disclosure.

Any amendments must be occasioned by a ground of opposition, and it is not allowable to extend the protection of the European patent to subject matter not covered by the granted claims (e.g. broaden the scope of protection).

Oral proceedings before the department of first instance normally take place virtually.

Each party is given the opportunity to present their requests and arguments orally to an Opposition Division made up of the Examiner, a Chairman and a Minute Writer.

The proceedings tend to be less formal than a court hearing and the exact procedure will depend on the issues in the particular case. The proceedings usually last less than a day, although in exceptional circumstances they may be held over two days.

At the end of the oral proceedings, in almost all cases, the Opposition Division will issue a verbal decision either to maintain the patent as granted, to maintain it in amended form, or to revoke the patent in its entirety.

No detailed explanation of the decision is given at the oral proceedings, but a written decision issues later explaining the basis for the decision.

Appeal proceedings are subject to more stringent rules and requirements than those at first instance. If you need any advice, or are concerned about your case then please get in touch as soon as possible. Dehns includes some of the most experienced attorneys before the Boards of appeal, and our experience really does make the difference.

The first instance decision can be appealed by any party that is adversely affected. So, if the opposition was rejected at first instance then the opponent can appeal, and if the patent was revoked the proprietor can appeal. If the patent was maintained in amended form then either party can appeal.

The deadlines for filing an appeal are very strict. An appellant must file notice of appeal within two months of notification of the written decision, and the appeal fee paid. They must then file a detailed, reasoned statement setting out the grounds of appeal within four months of notification of the written decision.

Please note that appeal proceedings are heavily front-loaded, meaning that your appeal case must be presented in full at the outset of the appeal (i.e., when filing your grounds if you are appellant, or when filing your reply to the appeal if you are respondent).

All the parties to the opposition are automatically party to the appeal and the appeal procedure. For example, a proprietor will automatically become respondent if the opponent appealed a decision to reject the opposition. Note that a party may be both appellant and respondent, and their appeal case in each scenario will be different. This is where appeals can get highly complex, and why we recommend using an experienced appeal attorney, especially for complex or high profile cases.

Oral Proceedings before the Appeal Board can take place by videoconference, or at the EPO in Munich.

The Appeal Board is made up of different members, who can decide to affirm or overturn the first instance decision. In some instances the case may be remitted to the opposition division, although the Boards try to avoid this if possible.

There is no further right to appeal a decision of the Board, except in very exceptional circumstances. If the Appeal Board maintains the patent as granted or in amended form, validity may still be challenged in each designated state separately via the local courts.

Opposition proceedings at the EPO normally take about 2 years, with any subsequent appeal taking a further 2-3 years.

It is possible to accelerate proceedings, for example in the event of co-pending litigation.  For example, EPO opposition proceedings will be accelerated if the EPO is informed by the UPC or a national court or competent authority of a contracting state that an infringement or revocation action relating to the opposed patent has been instituted before it.