Opposition proceeding before the European Patent Office
Within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the European Patent Office of opposition to that patent. Notice of opposition must be substantiated and opposition fee must be paid. The opposition fee is 880,- EUR (as of 23.7.2023). Compared to the revocation action before UPC (Unified Patent Court) 20 000,- EUR, it is a cheap procedure.
The opposition shall apply to the European patent in all the Contracting States in which that patent has effect. Opponents shall be parties to the opposition proceedings as well as the proprietor of the patent. Where a person provides evidence that in a Contracting State, following a final decision, he has been entered in the patent register of such State instead of the previous proprietor, such person shall, at his request, replace the previous proprietor in respect of such State.
Any third party may intervene in opposition proceedings after the opposition period has expired, if the third party proves that proceedings for infringement of the same patent have been instituted against him, or following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for a ruling that he is not infringing the patent. An admissible intervention shall be treated as an opposition.
Notice of opposition shall be filed in a written reasoned statement. The notice of opposition shall contain: particulars of the opponent as provided; the number of the European patent against which opposition is filed, the name of the proprietor of the patent and the title of the invention; a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based, as well as an indication of the facts and evidence presented in support of these grounds; and if the opponent has appointed a representative.
If the Opposition Division notes that the notice of opposition does not comply with the regulations, or does not sufficiently identify the patent against which opposition has been filed, it shall reject the opposition as inadmissible, unless these deficiencies have been remedied before expiry of the opposition period, which is 9 months after the date of patent publication in the official Bulletin. If the Opposition Division notes that the notice of opposition does not comply with provisions, it shall communicate this to the opponent and shall invite him to remedy the deficiencies noted within a period to be specified. If the deficiencies are not remedied in due time, the Opposition Division shall reject the opposition as inadmissible.
If a third party provides evidence, during opposition proceedings or during the opposition period, that he has instituted proceedings against the proprietor of the European patent, seeking a decision for entitlement to patent rights, opposition proceedings shall be stayed unless the third party communicates to the European Patent Office in writing his consent to the continuation of such proceedings. Such consent shall be irrevocable. However, proceedings shall not be stayed until the Opposition Division has deemed the opposition admissible.
Grounds for opposition
Opposition may only be filed on the grounds that:
(a) the subject-matter of the European patent is not patentable under Articles 52 to 57;
(b) the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
(c) the subject-matter of the European patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application or on a new application filed under Article 61, beyond the content of the earlier application as filed.
Clarity (Art. 84 EPC) is not a ground of opposition.
Amendment of the European patent
The description, claims and drawings may be amended, provided that the amendments are occasioned by a ground for opposition, even if that ground has not been invoked by the opponent.
In considering whether, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.
Examination of the opposition
If the opposition is admissible, the Opposition Division shall examine, whether at least one ground for opposition prejudices the maintenance of the European patent. During this examination, the Opposition Division shall invite the parties, as often as necessary, to file observations on communications from another party or issued by itself. If the Opposition Division is of the opinion that at least one ground for opposition prejudices the maintenance of the European patent, it shall revoke the patent. Otherwise, it shall reject the opposition. If the Opposition Division is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during the opposition proceedings, the patent and the invention to which it relates
a) meet the requirements of this Convention, it shall decide to maintain the patent as amended, provided that the conditions laid down in the Implementing Regulations are fulfilled;
b) do not meet the requirements of this Convention, it shall revoke the patent.
Where oral proceedings are held before the European Patent Office, the decision may be given orally. The decision shall subsequently be put in writing and notified to the parties. Decisions of the European Patent Office are open to appeal.
Unity of invention (Article 82 EPC) does not come under the requirements which a European patent and the invention to which it relates must meet under Article 102(3) EPC when the patent is maintained in amended form. It is consequently irrelevant in opposition proceedings that the European patent as granted or amended does not meet the requirement of unity.
The power of an Opposition Division or a Board of Appeal to examine and decide on the maintenance of a European patent extent to which the patent is opposed in the notice of opposition. However, subject- matters of claims depending on an independent claim, which falls in opposition or appeal proceedings, may be examined as to their patentability even if they have not been explicitly opposed, provided their validity is prima facie in doubt on the basis of already available information.
An Opposition Division or a Board of Appeal is not obliged to consider all the grounds for opposition referred to in Article 100 EPC, going beyond the grounds covered by the statement. Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee.
In principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected. However, an exception to this principle may be made in order to meet an objection put forward by the opponent/appellant or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the Opposition Division in its interlocutory decision.
Publication of a new specification of the European patent
If the European patent is maintained as amended, the European Patent Office shall publish a new specification of the European patent as soon as possible after the mention of the opposition decision has been published in the European Patent Bulletin.
The new specification of the European patent shall include the description, claims and drawings as amended.
Costs
Each party to the opposition proceedings shall bear the costs it has incurred, unless the Opposition Division, for reasons of equity, orders, in accordance with the Implementing Regulations, a different apportionment of costs. Any final decision of the European Patent Office fixing the amount of costs shall be dealt with, for the purpose of enforcement in the Contracting States, in the same way as a final decision given by a civil court of the State in which enforcement is to take place. Verification of such decision shall be limited to its authenticity. The apportionment of costs of opposition proceedings cannot be the sole subject of an appeal. A decision fixing the amount of costs of opposition proceedings cannot be appealed unless the amount exceeds that of the fee for appeal.
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