The European Opposition Process and some Procedural Pitfalls to Avoid

This article was included in our Winter 2010 edition of Inside IP magazine.

The option to attack a European patent centrally after grant through opposition before the European Patent Office (EPO)  is usually much more appealing than the alternative of attacking it before the authorities in each of the countries in which it takes effect.  Through years of conducting opposition proceedings, the EPO has established a procedure and associated rules which must be adhered to closely in order to maximise the chances of obtaining the desired outcome.  These rules can be quite complex, and in many instances are hidden in EPO case law.  With this article, we explain the procedure and highlight how to avoid some key pitfalls.

An overview of the opposition process is shown in the flowchart below.

An opposition to a granted European patent is started by an Opponent filing a notice of opposition, within 9 months of grant.  The patent Proprietor then has an opportunity to respond, presenting arguments and, optionally, filing one or more sets of auxiliary requests.  Each auxiliary request contains a claim set intended to act as a fallback position, in case the EPO agrees with the Opponent’s attacks on the granted patent or an earlier request.

Once the Proprietor has responded, the EPO can choose to invite further comments from the Opponent.  However, this rarely happens in practice, and the EPO Opposition Division, charged with handling the case, usually proceeds to issue a summons to attend oral proceedings before the Division, together with a preliminary opinion on the written submissions filed to date.  Following the oral proceedings, the Opposition Division issues a written decision which repeats the decision given orally and provides the reasons for the decision.  The Division can move to immediately issue a final written decision without holding oral proceedings, if the “losing” party has not included a request for oral proceedings in his written submissions.

The Opposition Division’s written decision can be made the subject of an appeal to a Technical Board of Appeal by either of the parties to the opposition proceedings, so long as they were adversely affected by the decision.  The appeal process is started with a notice of appeal, which must be filed within two months of the date when the Opposition Division’s written decision is notified to the parties, and usually culminates with a second set of oral proceedings, this time before a Board of Appeal.

In EPO Board of Appeal case T138/08, the Opponent alleged that he had wanted to respond to the Proprietor’s observations on his initial opposition statement, but that the Opposition Division had issued a written decision before he could do so.  The Division had in fact only waited two months and 21 days from the Opponent receiving the Proprietor’s observations before the decision was taken.  This contrasts with the usual period of four months, which is set when parties are required to respond to substantive matters raised during opposition or examination.  The Board stated that the observations of the Proprietor had been sent to the Opponent merely for information, and that, in these circumstances, if the Opponent felt the need to respond, he should have immediately requested the Opposition Division to allow him the time he required to do so.  In this case, the Opponent’s real mistake was to omit a request for oral proceedings from his initial opposition statement.  Had he included such a request, the Opposition Division could not have issued a decision without firstly holding oral proceedings, and would no doubt have followed the usual procedure of responding to the Proprietor’s observations with a summons to attend oral proceedings and an opinion on the merits of the parties’ cases.  Needless to say, it is our standard practice to include a request for oral proceedings in every opposition statement.

Technical Board of Appeal decision T699/06 sheds some light on the attitude of the Boards of Appeal to requests for the postponement of oral proceedings scheduled to take place before them.  In this case, the representative could not make the date, since he had a prior commitment to speak at a conference.  The Board held that this amounted to “excessive work pressure”, a reason specifically mentioned in the guidance notices issued by the EPO as being insufficient for a date scheduled for oral proceedings to be changed.  By extension, this decision in dicates that the EPO would be reluctant to allow a change if a date is inconvenient for a foreign attorney or applicant who wishes to attend oral proceedings. It might still be worthwhile arguing for a change of date if both parties to the procedure can agree to the new date, as we have successfully obtained a postponement in these circumstances.

In Technical Board of Appeal decision T832/08, the patent Proprietor filed a large number of new auxiliary requests (nine) and a new document during the appeal proceedings.  The requests and document were filed after the summons to oral proceedings and about 6 weeks before the oral proceedings.  The document contained comparative trials with respect to subject matter disclosed in a previously filed document.  The Proprietor had not previously mentioned that he was conducting any comparative trials. The Board of Appeal refused to allow the document describing the trials and auxiliary requests into the appeal proceedings, on the ground that the Opponent would not have had sufficient time to consider them.  This case shows that Boards of Appeal are unlikely to use their discretion to accept new documents and auxiliary requests filed after the date for oral proceedings has been set, when the other party or the Board requires time to analyse the new documents.  The comparative trials should either have been filed with the grounds of appeal, or notice given to the Board of Appeal that comparative trials are or will be taking place, and that the results will be provided in due course.

At the oral proceedings themselves, the Board of Appeal will consider arguments supporting the independent claims of the main request and any auxiliary requests that have been timely filed.  Further requests, i.e. to make amendments, can be allowed only at the Board’s discretion.  In Technical Board of Appeal decision T299/08, the Proprietor presented for the first time at the appeal oral proceedings an auxiliary request narrowing the independent claim by including a feature from a dependent claim.  Although the Proprietor argued that the amendment was very simple and easily comprehensible, the Board of Appeal had previously set a deadline expiring two months before the oral proceedings for filing final written submissions.  The Board held that this auxiliary request could, and should, have been filed by this deadline, and refused to admit it.  This case is a reminder that the opportunity to make further amendments at oral proceedings is very limited, and that parties to appeal proceedings ignore directions from a Board of Appeal at their peril.

Alex Bruce 29 Nov 2010

Return to news list