Opposition procedure before the European Patent Office
Encyclopedia
The opposition procedure before the European Patent Office
(EPO) is a post-grant
, contentious, inter partes
, administrative procedure intended to allow any European patent to be centrally opposed. European patent
s granted by the EPO under the European Patent Convention
(EPC) may be opposed by any person from the public (no commercial or other interest whatsoever need be shown). This happens often when some prior art
was not found during the grant procedure, but was only known by third parties.
The opposition can only be based on grounds mentioned in , i.e. on the grounds that the subject-matter of the patent is not patentable
, on the grounds that the invention
is not sufficiently described
to allow a person skilled in the art to carry it out, or on the grounds that the content of the patent extends beyond the content of the application as filed
.
The notice of opposition must be filed in writing at the EPO (either at Munich
, The Hague
or Berlin
) within nine months from the publication of the mention of the grant of the European patent, along with the payment of an opposition fee. Opposition divisions of the EPO are then responsible for the opposition procedure. The opposition procedure may involve multiple opponents. According to the EPO, a European patent was once opposed by a record number of 27 opponents.
In order for an opposition to be admissible it must meet the provisions of, i.e. a notice of opposition must be filed within nine months from the publication of the mention of grant of the European patent by a natural
or legal person, and, i.e. a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based must be contained in the notice of opposition, as well as an indication of the facts and evidence
presented in support of these grounds.
In addition, an opposition is also rejected as inadmissible if it fails to meet the requirements of after the opponent was invited to remedy to these failures within a given time limit. If the opposition is not admissible, the opposition is rejected under .
Inadmissible oppositions and oppositions which are deemed not to have been filed are not substantively examined (no examination on the merits). An opposition can only be rejected as inadmissible if the opposition has been first deemed to have been filed, and, if it is deemed to have been filed, the opposition exists, even if later the opposition is rejected as inadmissible. If an opposition is deemed not to have been filed, an already paid opposition fee is refunded. In contrast, if an opposition is rejected as inadmissible, an already paid opposition fee is not refunded.
In view of the grounds of opposition, and in view for instance of a prior art document introduced into the proceedings by the opponent, the patent proprietor may amend the patent, i.e. the description, claim
s and drawings of the patent. The patent proprietor is master of its own patent in that the decision to amend or not, and how to amend the patent, is a decision of the patent proprietor alone (although the Opposition Division or the opponent may apply pressure to have amendments made). The patent, however, may not be amended in such a manner that the amendment would lead to an extension of the protection conferred by the patent.
If amendments are made to the patent during the opposition proceedings, the patent (and the invention to which it relates) must meet the requirements of the EPC. These requirements notably include the requirements of support in the description and clarity
, even though those are not listed as grounds of opposition in . However, the requirements to be met by the amended patent do not include the requirement of unity of invention
(because divisionals cannot be filed after grant).
During the opposition, oral proceedings may take place at the request of the EPO or at the request of any party to the proceedings, i.e. the patentee or an opponent. The oral proceedings are held before the Opposition Division itself. They are held in Munich, the Hague or Berlin, and are public unless very particular circumstances apply. This contrasts with oral proceedings held before an Examining Division, which are not public. The list of public oral proceedings in opposition before the EPO is available on its web site. The right to oral proceedings is a specific and codified part of the procedural right to be heard. A decision is often taken at the end of the oral proceedings.
The opposition has effect on all designated states in the European patent. Decisions by Opposition Divisions, like any other final decisions of first instance divisions, are appealable
.
A decision of the EPO to revoke a European patent is final (when the opportunity to appeal before the EPO is exhausted), which makes the opposition proceedings at the EPO especially attractive for opponents. In contrast, a decision of the EPO not to revoke a European patent (the decision instead maintaining the patent as granted or in an amended form) leaves the way open for revocation by the national court. The EPO decision does not create an estoppel precluding a subsequent challenge by an unsuccessful opponent at the national level (at least before the English courts). The validity of a European patent can be scrutinised both at the national level, before a national court, and at the international level, before the European Patent Office during opposition. The same is not true for infringement proceedings, upon which national courts exercise exclusive jurisdiction.
A decision on apportionment of costs forms part of the main decision, such as the main decision of the Opposition Division. The main decision however only deals with the obligation on the party or parties concerned to bear costs. The actual amounts to be paid by one party to another are dealt with in another decision, namely a decision on the award of costs. A decision on the award of costs is taken only after a decision apportioning the costs has been taken and if a request is submitted to that effect.
s belonging to a company, i.e. its economic activity, and more precisely the assets in the interests of which the opposition was filed.
The possibility to intervene not only exists during pending opposition proceedings before an Opposition Division (i.e., during the first instance proceedings), but also during subsequent pending appeal proceedings before a Board of Appeal (i.e., during the second instance proceedings).
Independently from the possibility to intervene in opposition proceedings (and then to become party to the proceedings), anyone may also file observations under . After publication of a European patent application, and a fortiori after grant of a European patent, anyone may file observations regarding the patentability of the invention which is the subject of the application (during examination proceedings) or patent (during opposition proceedings). In contrast to an intervener however, a person filing observations during opposition proceedings does not become party to the proceedings. This notably means that such person does not acquire the "bundle of procedural rights" created "in respect of the opponent", such as the right to be heard before any decision is taken. Observations by third parties, which must be filed in writing, may be filed by post or online.
Filing an opposition before the EPO is reportedly relatively affordable, "as the cost varies between €6000 and €50,000 (including patent lawyers’ fees)" (as of 2009). In contrast, the costs for litigating a European patent can be much higher ("For example, in Germany the total litigation costs can be as high as €2 million with €10 million at stake"). An opposition case is reported to take on average three years to be handled by the EPO.
The rules and practice differ from country to country in that respect. "For example, as of 2008, Belgium and France will stay the main proceeding until a final decision has been reached by the EPO whereas in Germany, Italy, the Netherlands and in the United Kingdom such a stay is not automatic and in most cases the courts will continue the proceedings notwithstanding the opposition. ... However, in Germany national nullity proceedings cannot be started before the Federal Patent Court until the EPO opposition proceedings have been concluded or the opposition period has expired."
European Patent Office
The European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...
(EPO) is a post-grant
Opposition proceeding
An opposition proceeding is an administrative process available under the patent and trademark law of most jurisdictions which allows third parties to dispute the validity of a granted patent or trademark.-Patents:...
, contentious, inter partes
Inter partes
The term inter partes is the Latin for "between the parties." It can be distinguished from in rem, referring to a legal action whose jurisdiction is based the control of property, or ex parte referring to a legal action that is by a single party....
, administrative procedure intended to allow any European patent to be centrally opposed. European patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
s granted by the EPO under the European Patent Convention
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC) may be opposed by any person from the public (no commercial or other interest whatsoever need be shown). This happens often when some prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
was not found during the grant procedure, but was only known by third parties.
The opposition can only be based on grounds mentioned in , i.e. on the grounds that the subject-matter of the patent is not patentable
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
, on the grounds that the invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
is not sufficiently described
Disclosure of the invention under the European Patent Convention
Article 83 of the European Patent Convention relates to the disclosure of the invention under the European Patent Convention. It prescribes that a European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in...
to allow a person skilled in the art to carry it out, or on the grounds that the content of the patent extends beyond the content of the application as filed
Amendments under the European Patent Convention
Article 123 of the European Patent Convention relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable...
.
The notice of opposition must be filed in writing at the EPO (either at Munich
Munich
Munich The city's motto is "" . Before 2006, it was "Weltstadt mit Herz" . Its native name, , is derived from the Old High German Munichen, meaning "by the monks' place". The city's name derives from the monks of the Benedictine order who founded the city; hence the monk depicted on the city's coat...
, The Hague
The Hague
The Hague is the capital city of the province of South Holland in the Netherlands. With a population of 500,000 inhabitants , it is the third largest city of the Netherlands, after Amsterdam and Rotterdam...
or Berlin
Berlin
Berlin is the capital city of Germany and is one of the 16 states of Germany. With a population of 3.45 million people, Berlin is Germany's largest city. It is the second most populous city proper and the seventh most populous urban area in the European Union...
) within nine months from the publication of the mention of the grant of the European patent, along with the payment of an opposition fee. Opposition divisions of the EPO are then responsible for the opposition procedure. The opposition procedure may involve multiple opponents. According to the EPO, a European patent was once opposed by a record number of 27 opponents.
Rationale
The purpose of the opposition proceedings is to give opponents the opportunity to challenge the validity of a granted European patent.Filing and admissibility
Before starting the substantive examination of the opposition, the Opposition Division examines whether the opposition must be considered as filed ("Is there an opposition?") and whether it is admissible ("Is the opposition admissible?"). The Opposition Division may find that the opposition is not deemed to have been filed, for instance because the opposition fee has not been paid within the nine-month opposition period, because the notice of opposition is not signed or because the notice is not in an accepted language.In order for an opposition to be admissible it must meet the provisions of, i.e. a notice of opposition must be filed within nine months from the publication of the mention of grant of the European patent by a natural
Natural person
Variously, in jurisprudence, a natural person is a human being, as opposed to an artificial, legal or juristic person, i.e., an organization that the law treats for some purposes as if it were a person distinct from its members or owner...
or legal person, and, i.e. a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based must be contained in the notice of opposition, as well as an indication of the facts and evidence
Evidence (law)
The law of evidence encompasses the rules and legal principles that govern the proof of facts in a legal proceeding. These rules determine what evidence can be considered by the trier of fact in reaching its decision and, sometimes, the weight that may be given to that evidence...
presented in support of these grounds.
In addition, an opposition is also rejected as inadmissible if it fails to meet the requirements of after the opponent was invited to remedy to these failures within a given time limit. If the opposition is not admissible, the opposition is rejected under .
Inadmissible oppositions and oppositions which are deemed not to have been filed are not substantively examined (no examination on the merits). An opposition can only be rejected as inadmissible if the opposition has been first deemed to have been filed, and, if it is deemed to have been filed, the opposition exists, even if later the opposition is rejected as inadmissible. If an opposition is deemed not to have been filed, an already paid opposition fee is refunded. In contrast, if an opposition is rejected as inadmissible, an already paid opposition fee is not refunded.
Substantive examination
If the opposition is admissible, the grounds for opposition are examined as to their merits. The patent proprietor has also the opportunity to reply to the grounds of opposition developed by the opponent. Arguments and, to a certain extent, amendments may be filed in reply by the patent proprietor.In view of the grounds of opposition, and in view for instance of a prior art document introduced into the proceedings by the opponent, the patent proprietor may amend the patent, i.e. the description, claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
s and drawings of the patent. The patent proprietor is master of its own patent in that the decision to amend or not, and how to amend the patent, is a decision of the patent proprietor alone (although the Opposition Division or the opponent may apply pressure to have amendments made). The patent, however, may not be amended in such a manner that the amendment would lead to an extension of the protection conferred by the patent.
If amendments are made to the patent during the opposition proceedings, the patent (and the invention to which it relates) must meet the requirements of the EPC. These requirements notably include the requirements of support in the description and clarity
Claims under the European Patent Convention
Article 84 of the European Patent Convention defines the function of the claims under the European Patent Convention, the function being to define the matter, i.e. the invention, for which patent protection is sought. This legal provision also imposes that the claims must be clear, concise as well...
, even though those are not listed as grounds of opposition in . However, the requirements to be met by the amended patent do not include the requirement of unity of invention
Unity of invention under the European Patent Convention
Under , a European patent application must "relate to one invention only or to a group of inventions so linked as to form a single general inventive concept"...
(because divisionals cannot be filed after grant).
During the opposition, oral proceedings may take place at the request of the EPO or at the request of any party to the proceedings, i.e. the patentee or an opponent. The oral proceedings are held before the Opposition Division itself. They are held in Munich, the Hague or Berlin, and are public unless very particular circumstances apply. This contrasts with oral proceedings held before an Examining Division, which are not public. The list of public oral proceedings in opposition before the EPO is available on its web site. The right to oral proceedings is a specific and codified part of the procedural right to be heard. A decision is often taken at the end of the oral proceedings.
Issue and effects of the opposition
After the end of the opposition proceedings, the patent is either- maintained as granted, that is, the opposition is rejected;
- maintained in an amended form. In this case, a new patent specification is published; or
- revoked.
The opposition has effect on all designated states in the European patent. Decisions by Opposition Divisions, like any other final decisions of first instance divisions, are appealable
Appeal procedure before the European Patent Office
Decisions of the first instances of the European Patent Office can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure , as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the...
.
A decision of the EPO to revoke a European patent is final (when the opportunity to appeal before the EPO is exhausted), which makes the opposition proceedings at the EPO especially attractive for opponents. In contrast, a decision of the EPO not to revoke a European patent (the decision instead maintaining the patent as granted or in an amended form) leaves the way open for revocation by the national court. The EPO decision does not create an estoppel precluding a subsequent challenge by an unsuccessful opponent at the national level (at least before the English courts). The validity of a European patent can be scrutinised both at the national level, before a national court, and at the international level, before the European Patent Office during opposition. The same is not true for infringement proceedings, upon which national courts exercise exclusive jurisdiction.
Apportionment of costs
Each party to the opposition proceedings normally bears the costs it has incurred, unless the Opposition Division (or, in appeal proceedings, the Board of Appeal under ), for reasons of equity, orders a different apportionment of costs. For example, in case T 1306/05, a highly relevant document had been lately filed, without any valid justification, by the opponent during the oral proceedings before the Board of Appeal, thus rendering useless both the oral proceedings and the patent proprietor preparation thereto. A different apportionment of costs has been ordered by the Board of Appeal. The patent proprietor has requested about €26,000 to be paid by the opponent.A decision on apportionment of costs forms part of the main decision, such as the main decision of the Opposition Division. The main decision however only deals with the obligation on the party or parties concerned to bear costs. The actual amounts to be paid by one party to another are dealt with in another decision, namely a decision on the award of costs. A decision on the award of costs is taken only after a decision apportioning the costs has been taken and if a request is submitted to that effect.
Transfer of opponent status
The opponent status cannot be freely transferred. As far as legal persons are concerned, the opposition can only be transferred or assigned to a third party together with the business assetAsset
In financial accounting, assets are economic resources. Anything tangible or intangible that is capable of being owned or controlled to produce value and that is held to have positive economic value is considered an asset...
s belonging to a company, i.e. its economic activity, and more precisely the assets in the interests of which the opposition was filed.
Intervention and observations by third parties
Under , any third party may intervene in opposition proceedings after the 9-month opposition period has expired, if the third party proves that "(a) proceedings for infringement of the same patent have been instituted against him, or (b) 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." The admissibility of an intervention is subject to conditions. The so-called notice of intervention must notably be filed within three months of the date on which proceedings referred to in Article 105 are instituted. An admissible intervention is treated as an opposition. If the intervention is admissible, the intervener becomes party to the opposition proceedings.The possibility to intervene not only exists during pending opposition proceedings before an Opposition Division (i.e., during the first instance proceedings), but also during subsequent pending appeal proceedings before a Board of Appeal (i.e., during the second instance proceedings).
Independently from the possibility to intervene in opposition proceedings (and then to become party to the proceedings), anyone may also file observations under . After publication of a European patent application, and a fortiori after grant of a European patent, anyone may file observations regarding the patentability of the invention which is the subject of the application (during examination proceedings) or patent (during opposition proceedings). In contrast to an intervener however, a person filing observations during opposition proceedings does not become party to the proceedings. This notably means that such person does not acquire the "bundle of procedural rights" created "in respect of the opponent", such as the right to be heard before any decision is taken. Observations by third parties, which must be filed in writing, may be filed by post or online.
Statistics, costs and duration
Overall, about 6% of the European patents granted by the European Patent Office are opposed. Of those, about 1/3 are revoked, 1/3 are maintained in an amended form, which generally means "reduced in scope", and 1/3 are maintained as granted, that is, the opposition is rejected. The opposition rate (i.e. the number of oppositions filed per 100 granted patents) before the EPO is consistently higher in the closest available proxy for the pharmaceutical sector than it is in organic chemistry and in all sectors (overall EPO average).Filing an opposition before the EPO is reportedly relatively affordable, "as the cost varies between €6000 and €50,000 (including patent lawyers’ fees)" (as of 2009). In contrast, the costs for litigating a European patent can be much higher ("For example, in Germany the total litigation costs can be as high as €2 million with €10 million at stake"). An opposition case is reported to take on average three years to be handled by the EPO.
Parallel national proceedings
The "possibility of parallel validity proceedings in national courts and in the EPO is inherent in the legal arrangements in the EPC under which the EPO was established". If a third party files an opposition to a European patent with the EPO and also, in parallel, initiates a revocation action (also called "nullity action" or "validity proceedings") against the same patent before a national court, the national court (at least in England) may exercise its discretion to either- stay the national proceedings, in order to wait the outcome of the EPO opposition proceedings, or
- allow the revocation proceedings to go ahead, without waiting the outcome of the EPO proceedings.
The rules and practice differ from country to country in that respect. "For example, as of 2008, Belgium and France will stay the main proceeding until a final decision has been reached by the EPO whereas in Germany, Italy, the Netherlands and in the United Kingdom such a stay is not automatic and in most cases the courts will continue the proceedings notwithstanding the opposition. ... However, in Germany national nullity proceedings cannot be started before the Federal Patent Court until the EPO opposition proceedings have been concluded or the opposition period has expired."
Composition of an Opposition Division
According to , "[a]n Opposition Division shall consist of three technically qualified examiners, at least two of whom shall not have taken part in the proceedings for grant of the patent to which the opposition relates. An examiner who has taken part in the proceedings for the grant of the European patent may not be the Chairman." Violations of Article 19(2) EPC are considered to be substantial procedural violations.External links
- European Patent Convention, Part V, Opposition and Limitation Procedure (Art. 99 to 105): Guidelines for Opposition and Limitation/Revocation Procedures: Opposition procedure
- Ancillary Regulations to the EPC relating to Art. 99 EPC, the opposition procedure