The European Patent Office has announced some changes to its Opposition procedure (the means by which third parties can seek revocation of a granted European patent). These changes will take effect from 1 July 2016.
Full details are available in the EPO’s Official Journal, but, in brief, the changes appear to be aimed at shortening the period between the initial filing of an opposition and the issuance of a decision. At present this can often take several years; the changes aim to shorten this to 15 months in “straightforward cases”.
To this end, the period of four months allotted to a patentee for response to a Notice of Opposition will now only be extended in “exceptional cases” whereas at present extensions are routinely granted. The new procedure also seems to be designed to encourage the Opposition Division to take an active role at an early stage in written proceedings, possibly issuing a Summons to Oral Proceedings or other substantive communication after the first round of correspondence between parties. This is in contrast to the current procedure, in which numerous rounds of submissions and counter-submissions between the parties can often take place, leading to a proliferation of issues and documents for consideration at the eventual hearing.
It is interesting to note that the EPO’s target timescale of 15 months matches the timescale of 12-15 months envisaged for revocation proceedings at the Unified Patent Court (UPC). Although the UPC will be significantly more expensive (with an official fee of €20 000 for UPC revocation actions compared to a mere €785 for an EPO Opposition), the allure of a speedy decision may be a strong factor for particularly important cases where the alternative could be for a case to spend years in limbo at the EPO. The nature and timing of these changes to the EPO Opposition proceedings may therefore be designed as a pre-emptive measure to minimise the risk of revocation actions being filed at the UPC in preference to the EPO during the nine-month post-grant window where both options are available.