Opposition is an extremely useful procedure for third parties.
In fact, after the grant of a patent, a third party mayoppose this issue and ask the EPO to cancel the patent.
In practice, after an opposition:
- 1/3 of the patents are maintained;
- 1/3 of the patents are kept in modified form (ie limited);
- 1/3 of the patents are revoked.
Chapter 1. The Opposition Division
Section 1.1. Principle
The opposition division consists of three examiners-technicians (A19 (2) EPC) two of whom were not in the Examination Division.
If the opposition division has two members of the Examination Division, its decision may be annulled due to a procedural violation (T285 / 11)
They may be assisted by a lawyer who has not participated in the issuance (A19 (2) EPC). In the event that the opposition division has been enlarged to 4 members, it is possible that the opposition may exercise its discretion in order to reduce the 3-member division (if the circumstances justifying enlargement have disappeared, T1254 / 11).
The Examiner who performed the Examination of Application during the Examination Process can not be President (A19 (2) EPC).
The President has a predominant voice in the event of a tie vote (A19 (2) EPC).
Section 1.2. Challenge of a member of the opposition division
Even if the provisions of theA24 (3) EPC the challenge should only apply to members of the Boards of Appeal and the Enlarged Board of Appeal, the decision G5 / 91 stated that the obligation of impartiality also applies to staff members of the EPO's first instance
Nevertheless, the fact that a member of the Opposition Division is a former employee of the applicant is not a sufficient reason to declare that member to be biased (T143 / 91).
If a member of a chamber has a close family relationship with a party, that member should beG1 / 05).
Chapter 2. Territorial Scope and Effects
Opposition is the last chance for a third party to obtain the nullity (or limitation) of the patent:
Section 2.1. Territorial scope
The opposition applies to all designated States (A99 (2) EPCincluding extension states).
It is not possible to object only for certain countries: in this case, it will be considered that the opposition applies to all the designated States (DI Guidelines 3).
Nevertheless, this does not mean that the opposition must treat all the designated states in the same way. Indeed, there may be several sets of claims issued because:
- partial transfer (R18 (2) EPC);
- previous national rights (R138 EPC);
- relevant prior art than for certain States by reason of their designations (A54 (4) CBE73).
Thus, the modifications made to the claims may be different depending on the game in question: the patent may even be revoked for certain states while it is maintained for the others (DI Guidelines 3).
However, it is not possible to use an earlier national law in an opposition.
Section 2.2. Extinction or waiver of patent in all designated states
Indeed, the opponent may want to benefit from the retroactivity of the revocation to protect himself.
Section 2.3. retroactivity
Some rights may have arisen from the simple patent application (temporary protection) and its issuance: it may be useful to seek to cancel them retroactively (A68 CBE, the effects of the patent are deemed to have had no effect).
Chapter 3. Quality of parts and time
Section 3.1. Holder
Of course, the holder is a party to the opposition procedure (A99 (3) EPC).
If there are several different holders of designated States, they are considered owners in opposition proceedings (A118 EPC).
Section 3.2. opposing
3.2.1. Any third party
It is even possible that several people make a joint objection (R151 (1) EPC) provided that they are properly designated before the end of the opposition period (T25 / 85 and G3 / 99). In this case, it will be necessary to appoint a common representative. If it is not designated, the EPO will designate it (R151 (1) EPC):
- the representative of the applicant first named in the application;
- failing this, the agent of another applicant who must constitute one for the continuation of the procedure;
- failing that, the applicant first mentioned in the request.
3.2.2. Limitation of the term "all thirds"
3.2.3. Non-limitation of the term "all third parties"
It is quite possible to oppose a patent in order to train (T798 / 93).
A non-contestation clause in a license agreement does not entail notas a general rule, inadmissibility of the opposition (G3 / 97).
An inventor or a shareholder of the holding company may very well form a valid opposition (T864 / 04).
3.2.4. Straw man
- an opponent must not disguise the patentee;
- an opponent, not an agent, which carries out actions which in the aggregate are characteristic of those of a professional representative (as this would be an abusive circumvention of the obligation to be represented by an agent).
There is no problem :
- if an agent acts in his own name, but on behalf of his client;
- if the opponent has his domicile or registered office in a Contracting State and is acting on behalf of a third party who does not fulfill this condition;
- if the "straw" opponent confirms that he is acting for a third party (identified or not) (T2365 / 11).
The proof of circumvention of the procedure must be provided by the person invoking it: this proof must be clear and unequivocal (G3 / 97)
3.2.5. Time limit
The opponent must be clearly identified before the end of the opposition period.
- the correction must reflect the true intention.
- the burden of proof rests with the Opponent,
- the proof requirements are large (eg instructional emails);
- the error may be an inaccurate indication: this is the case in the case of an identification error of the opponent;
- the request for correction must be made without delay.
If an opponent has neither domicile nor registered office in the territory of a Contracting State, he must be represented (A133 (2) EPC).
If the conditions of necessity of an agent are fulfilled, but no agent is constituted, there is an irregularity (R77 (2) EPC). The EPO notifies the opponent and invites him / her, within a given period, to remedy the situation.
Attention, if an opposition is formed by an agent or an employee of the opponent, it may be necessary that this one deposits a signed power (R152 (1) EPC and Decision of the President of the European Patent Office dated 12 July 2007 concerning the deposit of powers », OG 2007, Special Edition No. 3, L.1):
- for a professional representative :
- in the case of the replacement of a former representative whose termination has not been notified to the EPO, unless:
- reference is made to a general power already registered with the EPO;
- the EPO is notified of the termination of the mandate of the former representative before the end of the prescribed period.
- if circumstances so require (eg in case of doubt of the EPO).
- in the case of the replacement of a former representative whose termination has not been notified to the EPO, unless:
- for a lawyer :
- in all cases except where reference is made to a general power of attorney already registered with the EPO;
- for a employee of the opponent :
- in all cases except where reference is made to a general power of attorney already registered with the EPO.
If the power is not deposited, the agent or the employee is requested to remedy the irregularity within a specified time.
If this power is still not filed within this time, the opposition is deemed unformed (Directives D-IV 1.2.1 iv).
If, during the opposition, the opponent "loses" his proxy (eg cancellation, death, etc.), he is invited to appoint one. If he does not respond to this invitation, he still receives the date of the oral proceedings, but his attention will be drawn to the fact that, if he presents himself alone, he will not be able to intervene (Directives A-VIII 1.1).
3.2.8. Transfer of the opponent's quality
Transmission is possible only in case (DI guidelines 4):
- of hereditary succession (R84 (2) EPC);
- of universal succession (eg merger of legal person);
- of partial succession (ie transfer of a department)
- if the action in opposition has been instituted in the interest of the transferred heritage item (G4 / 88).
- this is not possible if the heritage element is a subsidiary (G2 / 04) because it has its own legal personality.
- it is necessary to prove that the quality of the opponent has been transmitted with the transferred asset (T298 / 97): the simple interest of having the patent annulled is not enough.
Subrogation of the parent company to affiliated companies is also possible (DI guidelines 4).
These provisions also apply to the stage:
- appeal (G4 / 88);
- period to form an appeal (T563 / 89 together G4 / 88). It is quite possible to appeal on behalf of a person (the person alleged to be correct according to the applicant's interpretation) and, in the alternative, another person (ie another possible interpretation, G2 / 04).
It should be noted that the relevant date for assessing the transfer of the status of opponent is the date of supply to the EPO of papers proving the succession / assignment (T1563 / 13): therefore, if an opponent sells his business, then forms an appeal, and finally provides the papers proving the assignment, the appeal on opposition is valid and the transfer can take place.
3.2.9. Checking the opponent's quality
The EPO must, at each stage of the procedure, check the quality of the opponent: it may very well happen that the opponent who has appealed is seen as opponent challenged by the Board of Appeal (T1178 / 04).
3.2.10. Parties to the proceedings and end
Section 3.3. speaker
3.3.1. Condition of intervention
A third may intervene In an opposition already formed in the event that (A105 (1) EPC):
- this third party was attacked for infringement (A105 (1) (a) EPC); or
- this third party has been ordered to cease its infringing acts and has initiated an action for declaration of non-infringement (A105 (1) (b) EPC).
- However, the letter of formal notice must not only be a letter warning against possible counterfeiting and reserving the right to take legal action in the future (T392 / 97).
2) Based on this patent / extension states
So, a counterfeit attack in a Extension status on the basis of a patent obtained by an extension will not allow valid presentation of an intervention (T1196 / 08).
3) Third party to the procedure
The speaker must be a third to the procedure: thus an opponent who has not appealed, but who wishes to intervene (because there is more freedom regarding the arguments and the requests that may be presented) can not intervene since he is already a party to the procedure according to to theA107 EPC (T1038 / 00).
Case of groups of companies
Men of straws
In the same way, if a person acts on his behalf a man of straw to form an opposition and then forms an opposition, we can ask ourselves if that person is really a third party to the proceedings: in this case, there is many separate legal entities and therefore the intervener is a third party (T384 / 15).
One can ask the question of abuse of process but one must look at the particular case.
3.3.2. Conditions relating to the current opposition
The intervention can be formed as long as an opposition procedure is pending (A105 (1) EPC) ie :
- there is an admissible and pending opposition procedure (G4 / 91 and Directives D-VII 6);
- the final decision has not yet been made (G4 / 91 ie delivery to the internal mail service of the decision, either 3 days before the date indicated on the decision G12 / 91unless a date of delivery to internal mail is clearly indicated on the decision, T2573 / 11).
- if no appeal is lodged, it is not possible to make an intervention during the period between the final decision and the end of the appeal period (G4 / 91).
- if an appeal is filed, the intervener will be considered as "intervening at the appeal stage" (see below, Directives D-VII 6) because the appeal has suspensive effect.
If it is filed before the end of the opposition period, the statement of intervention will be interpreted as an opposition (A105 (1) EPC).
In case of withdrawal of the opposition by the last opponent and intervention on the same day by a third party, it seems that the intervention is admissible since the withdrawal of an opposition does not automatically mean the end of the opposition proceedings (R84 (2) EPC).
3.3.3. Time limit
In the case T452 / 05this first action was considered to be the meaning of the action (" injunctive order was served"), But this may depend on the national law in question.
Evidence of legal action must be provided (A105 (1) EPC).
The Opposition Division may decide not to transmit this statement of intervention to the incumbent (s) and / or to propose to the proprietor to submit his observations and to amend his application (R79 (4) EPC).
The formalities officer informs the intervener of the state of the procedure and asks him to make it known 1 month if certain documents sent by the other parties are necessary (and if necessary, transmit it to him) (Directives D-IV 5.6).
If the intervention is admissible, the intervener is considered an opponent (A105 (2) EPC) and he will have the same rights (as the right to appeal): therefore, if all other opponents withdraw their opposition, the intervener may continue the proceedings (G3 / 04).
2) No new measure
However, it seems impossible for the intervener to attack new claims that had previously been spared by the "real" opponents (G9 / 91point 10).
3) New reasons / arguments / evidence
An intervener may introduce any new ground of opposition, argument or evidence in his / her intervention even if the time limit for filing an opposition has already expired (otherwise this would render the principle of intervention unnecessary and R89 (2) EPC together R76 EPC).
4) Points already decided
Nevertheless, if certain aspects of the opposition have already been decided, the speaker can not go back on what has already been decided (T694 / 01). Thus, if the Opposition Division has decided to maintain the patent in amended form, the intervener can only discuss the problems of bringing the description and the drawings into line with the claims.
3.3.6. Intervention at the appeal stage
If the intervention comes to the appeal stage, the intervener is treated as an applicant who has not lodged an appeal (G3 / 04). Thus, if all those who have appealed withdraws, the instance disappears.
2) Withdrawal of opposition the same day
If the last applicant withdraws his appeal on the same day that the intervener files his statement, it is appropriate to look at the exact chronological order of these events to determine whether the intervention is admissible (T517 / 97):
- if the intervention is declared admissible, the appeal procedure disappears (G3 / 04) and the opposition fee is not refunded;
- otherwise the opposition fee is refunded because the intervention is not receivable.
3) No new measure
It does not seem Not possible to attack from new claims, ie claims that, until then, had not been attacked (G9 / 91).
4) New reasons / arguments / evidence
The speaker may submit new arguments and of new patterns of the'A100 CBE not shown (G1 / 94). If new grounds are raised, it is generally appropriate to refer the case to the Opposition Division (except in special cases G1 / 94).
5) Points already decided
If certain aspects of the opposition have already been decided, the speaker can not go back on what has already been decided (T694 / 01). Thus, if the Board of Appeal has decided to maintain the patent in amended form, the intervener can only discuss the problems of bringing the description and the drawings into conformity with the claims (even if the case is referred to the division opposition A111 EPC, res judicata).
Section 3.4. Parties and suspension of proceedings
The opponent or the intervener can not request a stay of proceedings: it must be a third party to the proceedings (R78 (1) EPC).
3.4.2. Partial substitution
If the procedure is resumed and the third party replaces the holder (A99 (4) EPC) that for a part of the designated States (the recognition protocol does not apply, a substitution by a French court will have no effect in other countries), the maintained European patent may contain several sets description-drawings for different designated States (R78 (2) EPC).
The uniqueness of the patent is thus affected.
The former owner and the new "partial" holder of the patent will not be considered as co-owner (A99 (4) EPC) unless they ask for it.
The two opposition proceedings may thus have different outcomes (Directives D-VII 3.2).
Chapter 4. Withdrawal of opposition, waiver of patent and ex officio prosecution
Opposition can be withdrawn (R84 (2) EPC).
Section 4.1. Withdrawal of all oppositions
If all oppositions are withdrawn, this does not mean that the opposition proceedings are terminated (see the ex officio prosecution below). R84 EPC).
The opponent who withdraws his opposition ceases to be a party to the proceedings and can no longer correct his withdrawal or appeal against the decision to be taken (T283 / 02).
- revocation of the patent;
- maintenance in modified form of the patent;
- rejection of the opposition;
- formal decision noting the withdrawal of all oppositions (R84 (2) EPC, last phrase).
Section 4.2. Withdrawal by one of the opponents
4.2.1. Withdrawal by an opponent who has filed an opposition alone
If an opponent withdraws his opposition, while there are other admissible oppositions, the opposition proceedings continue normally.
The opponent who withdraws his opposition ceases to be a party to the proceedings and can no longer correct his withdrawal or appeal against the decision to be taken (T283 / 02).
4.2.2. Withdrawal by opponent who has filed a joint objection
If an opponent who has filed a joint opposition withdraws his opposition (and there are still opponents in that joint opposition), the opposition proceedings continue normally (G3 / 99).
Only the joint representative of this joint opposition may notify this withdrawal: in the event that the person wishing to withdraw his opposition (not being a common representative) sends a letter to the EPO, this letter will be deemed not presented because it is unsigned of the common representative (R86 EPC together R50 (3) EPC and G3 / 99).
Section 4.3. Waiver, revocation, lapse of patent
4.3.1. Before the EPO
When the proprietor decides to request the surrender / withdrawal of his patent before the EPO (either before the Opposition Division in a special request or by means of the revocation procedure of the EPOA105bis EPC), the EPO always interprets this request as a revocation application with retroactiveDirectives D-VII 5.1).
If there is an ambiguity, the holder is requested to re-specify his request (Directives D-VIII 1.2.5).
In case of revocation before the EPO, the patent is canceled ex tunc (retroactively) and the opposition procedure should be terminated (which is then without cause).
4.3.2. With designated states
It is possible that during opposition (R84 (1) EPC):
- the holder renounces the patent in all designated States (and not before the EPO) or
- the patent is extinguished before all designated States (and not at the EPO).
Renunciation or termination in designated States shall not have retroactive effect, but only ex nunc (ie for the future).
The holder is often required to prove this point by providing extracts from the registers of Contracting States (Directives D-VII 5.1).
The opponent may request that the opposition proceedings continue (R84 (1) EPC): it is then necessary to submit a request in the 2 months from the notification of the EPO informing the opponent of this fact. Otherwise the procedure will be closed (Directives D-VII 5.1).
This delay 2 months does not benefit from the restitutio in integrum of theA122 EPC (T1403 / 16): in fact, failure to observe the time-limit does not entail any loss of rights, since, in application of theA114 EPCthe EPO may decide whether to continue or not, at its discretion. Therefore, the end of the 2 months does not in itself give rise to any legal consequence on the opposition.
If the holder has waived, before the competent authorities of the Contracting States, all the rights attached to the patent (including previous ones, eg provisional protection, etc.), the opponent will not be able to continue the procedure of opposition and this will be closed automatically (Directives D-VII 5.1).
Section 4.4. Automatic continuation of the proceedings
As soon as an opponent withdraws his opposition, dies or becomes incompetent, the Opposition Division must inform the other parties (owner, other opponents, interveners, etc.) that the proceedings are pursued ex officio (R84 (2) EPC and Directives D-VII 5.2, the continuation of the ex officio procedure does not apply only when there are no more opponents).
The ex officio prosecution of the opposition is pronounced, without any opponent, if (Directives D-VII 5.2):
- the licensee proposed amendments (T560 / 90);
- the procedure seems, without any particular effort or without costly investigations, to lead to a limitation or revocation of the patent (T197 / 88).
Chapter 5. REB Listings
Section 5.1. In case of no opposition
If no notice of opposition is placed on the file within the 9 monthsthe holder is informed and the BEB is mentioned (CV 13 Guidelines).
An inscription is also made at REB.
Section 5.2. In case of opposition
If an opposition is filed, the corresponding date is entered in the BAN (R143 (1) (q) EPC).
In addition, the date of the end of the procedure is also recorded in the BSE and the outcome of the procedure (R143 (1) (r) EPC).
Chapter 6. Formal aspects
Section 6.1. Opposition period
If the opposition is formed:
- after this period, it is declared inadmissible (R77 (1) EPC);
- before the publication of the mention, it is not considered as an opposition, but as a third party observation of theA115 EPC (Directives D-IV 1.1):
- the opposition fee paid is refunded;
- the notice of opposition is placed on file and opened for public inspection.
Section 6.2. Opposition fee
The opposition fee must be paid within the opposition period, otherwise the opposition is deemed unformed (A99 (1) EPC).
This tax is 785 € (A2 (1) .10 RRT).
If an opposition joint is carried out by several opponents, only one fee is required (G3 / 99).
6.2.2. Incomplete payment
Of course, the applicant must pay the missing sum within a specified time (T290 / 90), often 2 months.
6.2.3. Refund of tax
6.2.4. Tax reduction
1) Discount before April 1, 2014
If the opponent has his domicile (or registered office) in one of the Contracting States (or if he is the national of one of those States whose domicile is abroad) and that he has an official language other than as German, English or French, he may file the statement of opposition (of the R76 (2) (c) EPC) in that language (A14 (4) EPC).
2) Reduction as of April 1, 2014
For oppositions filed on or after 1 April 2014, no reduction is possible (" Decision of the Administrative Council of 13 December 2013 amending Rule 6 of the Implementing Regulation to the European Patent Convention and Article 14 (1) of the Rules relating to Fees », OY 2014, A4).
Section 6.3. Form of opposition
If the opposition is not in writing, the opposition is inadmissible (R77 (2) EPC).
A 2300 form is available on the EPO website.
- the sheets should be preferably in A4 format and be used in portrait format (except possibly for drawings, tables or mathematical formulas);
- leaves should preferably be numbered with an Arabic numeral centered at the top of the leaf (but not in the margin);
- for typed texts, the line spacing should preferably be 1.5;
- all texts must be preferentially with a font whose capital letters are at least 2.1 mm high (the size depends on the font chosen so be careful) and in black;
- the margins can not be preferentially lower than the following diagram:
6.3.3. Electronic filing
The opposition may be filed electronically (" Decision of the President of the European Patent Office dated 9 May 2018 concerning the electronic filing of documents », OJ 2018, A45).
6.3.4. Fax filing
An objection may normally be filed by fax (Directives D-III 3.3 andDecision of the President of the European Patent Office dated 20 February 2019 concerning the filing of patent applications and other documents by telefax", OJ 2019, A18) .
A confirmation by mail can then be requested. If the opponent does not respond to this invitation, the fax is deemed not received and the opposition is deemed unformed (Directives D-IV 1.2.1 iii).
6.3.5. Signatures of the notice of opposition
Initials or initials are not enough (Directives D-III 3.4).
If the document is not signed, the formalities officer invites the opponent / agent to remedy the irregularity within a specified time (R50 (3) EPC).
If the irregularity is not corrected within the prescribed period, the opposition shall be deemed unformed (Directives D-IV 1.2.1 ii).
Section 6.4. languages
6.4.1. Act of opposition
The notice of opposition must be filed in an official language of the EPO (ie German, French, English, R3 (1) EPC).
However, it is possible to file the opposition in the official language of a Member State if the opponent has his domicile (or registered office) in that State, or if he is the national of that State whose domicile is in abroad, and that the latter has an official language other than German, English or French (A14 (4) EPC).
A translation must be submitted (A14 (4) EPC) at the earliest simultaneously with the untranslated piece (G6 / 91) in one of the official languages of the Office, irrespective of the language of the proceedings (Directives A-VII 2) and within the period expiring later from
- a delay of 1 month from the date of delivery of the coin (R6 (2) EPC, and no from the end of the period).
- the opposition period (R6 (2) EPC).
If the required translation is not produced in due time, the opposition is deemed unformed (A14 (4) EPC, last phrase).
6.4.2. Evidence, prior art, etc.
Other documents that serve as proof may be produced in any language (although a translation may also be requested within a time limit that can not be less than 1 month, R3 (3) EPC).
Section 6.5. deposit local
If the opposition is filed elsewhere (eg national office, Vienna agency, etc.), a transmission is possible (but there is no obligation Directives D-IV 18.104.22.168 i)), but the important date remains the date of final receipt by the EPO (T522 / 94).
Section 6.6. Content of the notice of opposition
The notice of opposition gives the "scope" of the opposition.
6.6.1. General considerations
It must contain:
- R76 (2) (a) EPC :
- the name,
- the nationality and the State of the opponent's domicile orR41 (2) (c) EPC);
- R76 (2) (b) EPC :
- the number of the European patent against which the opposition is filed,
- the name of the patent owner,
- the title of the invention.
- R76 (2) (c) EPC :
- the numbers of the contested claims including the dependent (the "measure");
- the grounds on which the opposition is based (ie the reasons for theA100 CBE).
- the facts and evidence relied on in support of those grounds.
- R76 (2) (c) EPC :
- The information concerning the authorized representative, if it has beenR41 (2) (d) EPC).
6.6.2. Problems with the identification of the opponent
A mistake most identification of the opponent (eg it is impossible to identify the opponent at all), there is an irregularity R77 (1) EPC) and the opposition must be rejected as inadmissible (unless the opponent has remedied it within the opposition period, Directives D-IV 22.214.171.124 vi)).
Correction of the error may nevertheless be requested beyond the opposition period under the R139 EPC (T219 / 86 or T615 / 14): the opponent will have to provide evidence to establish that the original intent was to form the opposition on behalf of the corrected opponent.
A mistake minor identification of the opponent (eg formal conditions not respected), there is an irregularity R77 (2) EPC) and this can be corrected after an invitation by the EPO, even after the opposition period, within a specified period of time Directives D-IV 126.96.36.199 i)).
6.6.3. Problems with patent identification
If it is not really possible to identify the patent to be challenged (eg only the name of the holder can be sufficient if he has only one patent), there is an irregularity (under R77 (1) EPC) and the opposition must be rejected as inadmissible (unless the opponent has remedied it within the opposition period, Directives D-IV 188.8.131.52 ii)).
A minor error in the identification of the patent, there is an irregularity (under R77 (2) EPC) and this can be corrected after an invitation by the EPO, even after the opposition period Directives D-IV 184.108.40.206 ii)).
Some decisions even go so far as to consider that there is no irregularity if the information given makes it possible to easily determine the patent in question (eg the number of the patent is given, but not its title T317 / 86only the publication number is communicated T335 / 00).
6.6.4. Problem with proxy identification
6.6.5. Focus on measurement
If the opposition does not make it possible to know to what extent the patent is in question (all the claims, only a part, etc.), there is an irregularity (Directives D-IV 220.127.116.11 iii)).
This measure will commit the opponent to a possible appeal, because the decision will necessarily entitle him to his claims for the untested claims (A107 EPC).
6.6.6. Focus on the grounds
The mere "lack of patentability" is not sufficient unless it implicitly addresses one of the grounds (Directives D-IV 18.104.22.168 iv)).
6.6.7. Focus on the documents of the state of the art
When writing an opposition, many documents can be cited because they are the simplest and most indisputable means of proof.
Nevertheless, we must be careful because a document which is simply quoted, without its relevance being established, may be rejected by the opposition division (T32 / 10).
Proof of the contents of the document (eg translation) or even the documents themselves can be provided after the opposition period at the request of the EPO, within a specified time (R83 EPC and T94 / 84) although it is advisable to produce them as soon as possible (Directives D-III 6 iii)). If they are not filed within the time allowed, arguments using these arguments may be rejected by the Opposition Division (R83 EPC).
Only one copy of the documents is sufficient (Directives D-III 6 iii)).
In addition, the documents cited in the Examination procedure (ie by the Examining Division and by the Research Division) will not be included automatically in the opposition proceedings (T198 / 88). Only the following documents may be included, even if they are not mentioned in the notice of opposition (DV 2.2 Guidelines):
- the document cited in the application as the closest state of the art. The same is true of the relevant documents cited in the patent specification, which, while not the closest state of the art, are nevertheless essential for the understanding of the problem (T536 / 88, in particular point 2.1),
- the closest state of the art document (eg, Document D1 of the Examination Procedure).
If the only documents cited are prior national rights or documents which are not part of the state of the art, the opposition must be rejected as inadmissible (R77 (1) EPC together R76 (2) (c) EPC and T550 / 88).
6.6.8. Focus on past use or oral description
Where an earlier use / oral description is invoked by the opponent or an intervener, it is necessary to provide evidence that makes it possible in particular to determine (G-IV Guidelines 7.2 and T328 / 87):
- the date of prior use / oral description,
- the purpose of the use / oral description (ie the same or similar),
- the circumstances of the use / oral description (ie accessibility to the public).
6.6.9. Focus on the knowledge of the person skilled in the art
Even if there is no official definition, the general knowledge of the person skilled in the art (Guidelines G-VII 3.1) may include:
- basic textbooks and monographs (T171 / 84),
- articles referenced or quoted in basic textbooks and monographs (T206 / 83),
- articles published in specialized journals (T595 / 90),
- information contained in patent specifications or scientific publications, if the invention falls within a field of research so new that there is still no relevant technical information on the subject in the textbooks (T51 / 87).
If the notice of opposition refers to the general knowledge of a person skilled in the art, it is not necessary to prove that knowledge within the opposition period (T151 / 05).
However, if the patentee disputes this knowledge, the opponent will have to provide proof of his allegations, for example by citing a document dealing with that particular subject.
6.6.10. Focus on the language of evidence
Evidence can be produced in any language (R3 (3) EPC), but the EPO may request a translation into one of the official languages within a specified period.
If the translation is not produced on time, the document may be rejected by the Opposition Division (R3 (3) EPC).
Section 6.7. Facts (eg publications) and late proofs
6.7.1. At the opposition stage
New facts and evidence may be produced up to the date of delivery of the decision to the internal mail service (if written procedure) or until the decision is made (oral proceedings) (E-VI Guidelines 2).
These facts and evidence may only be admitted exceptionally, if there are At first sight there is good reason to believe that these means would impede the maintenance of the patent (T1002 / 92 and G9 / 91).
In addition, means produced late can be accepted (E-VI 2.1 Guidelines) even if they are not prima facie relevant :
- if the applicant combines two claims, but the patent contains a large number of claims, the opponent having failed to foresee all the possible combinations;
- if the applicant combines a claim with the content of the description.
It is not necessary for the Opposition Division to give detailed reasons for the "irrelevance" of rejected prior art if it is filed late (T156 / 84).
6.7.2. At the opposition appeal stage
Similarly, the admission of new means is subject to the discretion of the chamber: they are only admissible if they seem At first sight eminently relevant.
If the document is eminently relevant, the Board of Appeal would normally have to dismiss at first instance in order not to deprive the holder of a remedy, unless this reference seems unjustified (T258 / 84 and T273 / 84).
Section 6.8. Arguments submitted late
A late argument is then subject to the test of " prima facie relevance ", Ie it is acceptable if, at first sight, the patentability is questioned by reflecting 10 minutes (G 10/91 and DV 2.2 Guidelines).
Chapter 7. Formation and admissibility of the opposition
Section 7.1. Skill
Normally, the opposition division is competent (A19 (1) EPC).
Nevertheless, the formalities officer is responsible for the verification of the formal requirements (" Decision of the President of the European Patent Office dated 12 December 2013 to assign to agents who are not examiners certain tasks of the Examining or Opposition Divisions », OJ 2014, A6, point 1, taken under the R11 (3) EPC).
Of course, he does not check the reasons given, the evidence, and so on. (ie absence or insufficiency, R76 (2) (c) EPC), because their examination requires a technician.
In this context, it is the opposition division which examines this point (Directives D-IV 1.2.2).
Section 7.2. Partial admissibility
There is no partial inadmissibility.
The fact that the above conditions are fulfilled for at least one reason renders the opposition admissible as a whole (Directives D-IV 22.214.171.124 v))
Section 7.3. Irregularities causing an opposition deemed "untrained"
7.3.1. Case of "non-training"
An opposition is deemed un-formed if (Directives D-IV 1.2.1):
- The opposition fee is not paid within the opposition period or if paid only partially (A99 (1) EPC, last phrase) ;
- The signature at the bottom of the notice of opposition is missing (R50 (3) EPC). A notification is then sent to the person seeking to oppose, and gives him a deadline to correct (2 months generally, Directives E-VIII 1.2).
- The opposition was filed by fax, a confirmation was requested by the EPO, but it was never received within the time allowed ("Decision of the President of the European Patent Office dated 20 February 2019 concerning the filing of patent applications and other documents by telefax", OJ 2019, A18) ;
- the power of the attorney was not delivered on time (R152 EPC, " Decision of the President of the European Patent Office dated 12 July 2007 concerning the deposit of powers », OG 2007, Special Edition No. 3, L.1, see above for cases of surrender of this power);
- the notice of opposition is written in a non-official language, the conditions mentioned above (ie the opponent has his domicile (or his registered office) in one of the Contracting States, or if he is the national of one of those States whose domicile is abroad, and that the latter has an official language other than German, English or French), are not fulfilled (eg a Chinese lodges a notice of opposition in Chinese );
- the notice of opposition being drafted in a non-official language (and if the opponent has his domicile (or registered office) in one of the Contracting States, or if he is the national of one of those States having his domicile abroad, and that the latter has an official language other than German, English or French), the translation is not provided before the expiry of the deadline expiring later following deadlines:
- 1 month after the filing of the notice of opposition;
- 9 months after the publication of the mention of the issue.
If the formality agent notices an irregularity (which is not guaranteed, Directives D-IV 1.3.3), and if it is still possible to remedy it, the latter shall notify the opponent and inform him of the fact that it must be corrected within the time limits indicated above (in the absence of a time limit, it is necessary to correct it in the 9 months from the publication of the mention of issue to the BEB) (Directives D-IV 1.3.1).
The only notification requirement of the formality officer concerns the signature (Directives D-IV 1.3.3).
7.3.3. Procedure if the opposition is deemed unformed
The agent notifies the opponent (R112 (1) EPC) the opposition is deemed not to have been formed. It is possible to request a decision.
At the end of the 2 months to request this decision, the parties are informed that the proceedings are terminated.
In such situations, if the opposition fee had been paid, it will be refunded (Directives D-IV 1.4.1).
The submitted documents are then treated as a third party observation and are accessible in the file (Directives D-IV 1.4.1).
Section 7.4. Irregularities giving rise to an "inadmissible" opposition
7.4.1. Inadmissibility from the end of the opposition period
1) Causes of inadmissibility
The opposition is declared inadmissible if (R77 (1) EPC) [Group 1]:
- The filing of the document is not made in writing to the EPO within the 9 months (A99 (1) EPC);
- The designation of the patent is insufficient (ie impossible to unambiguously identify the patent);
- The extent to which the patent is in question is missing, the grounds for opposition are missing or the evidence is non-existent (R77 (1) EPC together R76 (2) (c) EPC):
- for example, the opponent did not provide identification of the document in support of a novelty attack (even if it is highly relevant);
- It is impossible to identify the opponent.
If the formality agent notices an irregularity (which is not guaranteed, Directives D-IV 1.3.3), and if it is still possible to remedy it, the latter shall notify the opponent and inform him that it must be corrected within the opposition period (Directives D-IV 1.3.2).
3) Procedure if the opposition is rejected
The existence of an irregularity of [Group 1] at the end of the opposition period render the opposition inadmissible (R77 (1) EPC):
- if these irregularities have already been notified to the opponent:
- a rejection is pronounced by the formalities officer (or by the opposition division if it concerns facts and evidence) (Directives D-IV 1.4.2).
- if these irregularities have not been notified to the opponent:
- the formalities officer notifies him and gives him in general 2 months to pronounce (A113 (1) EPCthis does not mean that the opponent can correct them) and tells him that the opposition will probably be rejected as inadmissible (Directives D-IV 1.4.2).
- the opponent can then challenge the existence of this irregularity;
- a rejection is pronounced by the formalities officer (or by the opposition division if it concerns facts and evidence) (Directives D-IV 1.4.2).
The opposition fee is not refunded.
The rejection of the opposition shall be notified to the holder (R77 (3) EPC).
7.4.2. Inadmissibility that can be corrected within a new deadline
1) Cause of inadmissibility
Moreover, the opposition is also declared inadmissible if one of the conditions of forms other than those of [Group 1] are missing (R77 (2) EPC) [Group 2] (see in particular the form requirements mentioned above for R76 (2) EPC):
- the incorrect identification of the opponent (eg problem of form of the R41 (2) (c) EPC, but it is still possible to identify the opponent),
- the number of the patent against which the opposition is filed (Directives D-IV 126.96.36.199 ii)),
- the defect of title of the invention (Directives D-IV 188.8.131.52 ii)),
- the lack of identification of the patent owner (Directives D-IV 184.108.40.206 ii))
- the lack of identification of the agent (name and address, R41 (2) (d) EPC), if it has been established or if it is to beA133 (2) EPC),
- the notice of opposition does not satisfy the formal requirements of the EPC and other R77 (1) EPC (eg margin problem, not typed, etc. R50 (2) EPC).
If the formality agent finds an irregularity, the latter informs the opponent and informs him of the fact that it must be corrected within a given period of time on pain of rejection (R77 (2) EPC and Directives D-IV 1.3.2).
Of course, the opponent can, of his own accord, even without notification, send his corrections to the EPO (Directives D-IV 1.3.3), even after the opposition period.
3) Procedure if the opposition is rejected
The opposition fee is not refunded.
The rejection of the opposition shall be notified to the holder (R77 (3) EPC).
7.4.3. If the opposition declared admissible
Before the opposition is declared admissible or inadmissible, the proprietor receives the notice of opposition (R79 (1) EPC).
It can thus challenge the possible admissibility of the opposition (Directives D-IV 5.5) setting out the detailed reasons for the inadmissibility invoked.
In this case, a reasoned decision of admissibility may be made with the final decision.
- In this case, the acceptance of an opposition at the beginning of the opposition proceedings is not a decision of the EPO (Directives D-IV 5.1).
- Thus, inadmissibility future (ie during the opposition procedure) is entirely possible (T222 / 85).
If all oppositions are contested, the Opposition Division may also choose to give a decision on the admissibility, reasoned and appealable, before any opposition proceedings, provided that the procedure is not unduly delayed (Directives D-IV 5.5).
7.4.4. If the opposition declared inadmissible
If an opposition is declared inadmissible, there may be several situations:
- if there is another admissible opposition and its examination leads directly to a decision rejecting the opposition (s) or a decision to revoke the patent, the examination of the decision of inadmissibility will be rendered at the same time that the final decision (Directives D-IV 5.5);
- otherwise, the inadmissibility is put directly in the form of a reasoned decision. An appeal is possible against this decision.
If the decision of inadmissibility is made:
- before the notification referred to in R79 (1) EPC sent to the holder, the appeal will be a procedure ex-parte : thus, the person wishing to oppose is the only party to the proceedings (T295 / 01 who is ex-parte).
- after the notification referred to in R79 (1) EPC sent to the holder, the appeal will then be a procedure inter partes (ie the holder and the person wishing to oppose will participate in the appeal proceedings, T1062 / 99 who is inter partes).
When all oppositions are finally dismissed, the opposition procedure ends. The parties are informed (Directives D-IV 4)
Chapter 8. Notification to the opposition holder
Chapter 9. Infringement of the patent
Opposition may continue even if:
- the patent is extinguished in all countries: to do this, the opponent must submit a request in the 2 months from the receipt of the notification of this termination (R84 (1) EPC).
- the opposition is withdrawn by the opponent or the opponent dies: there can then be automatic continuation of the procedure (R84 (2) EPC). This situation is, for example, conceivable if the procedure entails without cost the limitation or the revocation of the patent.
Section 9.1. Measure / claims challenged
The Opposition Division can only examine the claims challenged by the opponents: an ex officio examination of the uncompromised claims is not possible (G9 / 91).
9.1.2. Dependent claims
Nevertheless, it is considered that the dependent claims may also be considered even if they were not explicitly mentioned in the objection, if there is any doubt as to their validity (DV 2.1 Guidelines and G9 / 91).
This last principle seems to be called into question if only certain dependent claims are attacked: this behavior seems to be interpreted by the Board of Appeal as a future renunciation of attacking the other dependent claims (T653 / 02).
Similarly, it is also considered that a claim product-by-process Referring to the process of an attacked claim may also be challenged if there is doubt as to its validity (T525 / 96).
Section 9.2. Reasons raised
9.2.1. Possible reasons
Possible grounds for opposition are exposed toA100 CBE :
- the subject of the patent is not (A100 a) EPC):
- new (A52 (1) EPC, A54 CBE and A55 CBE),
- inventive (A52 (1) EPC, A56 CBE),
- does not have an industrial character (A52 (1) EPC, A57 EPC), ,
- is not considered patentable (A52 (1) EPC at A52 (3) EPC),
- is excluded from patentability by a specific provision (eg therapeutic method, object contrary to morality, etc.) (A53 CBE).
- the patent does not disclose the invention in a sufficiently clear and complete manner for a person skilled in the art to be able to perform it (A100 b) EPC).
- the subject matter of the European patent extends beyond the content of the application as filed (A100 c) EPC).
- this pattern actually covers
- theA123 (2) EPC or,
- theA76 (1) EPC if the patent was issued on the basis of a divisional application, or
- theA61 (2) EPC together A76 (1) EPC if the patent was issued on the basis of a new application filed in the context of an invention previously filed by a person not authorized under theA61 (1) EPC.
- this pattern actually covers
9.2.2. Separate reasons
The reasons each constitute a distinct legal basis (Directives D-III 5).
In particular, theA100 a) EPC is broken down into several patterns (G1 / 95): for example, to invoke only the lack of novelty and inventive step does not validly invoke the invocation of the other grounds of this paragraph (eg the exclusion of patentability).
9.2.3. Excluded reasons
In particular, can not serve as reason for opposition:
- clarity or conciseness (A84 CBEeven though this article may be invoked on amended claims in the course of opposition);
- lack of unity of invention (A82 CBE);
- the existence of prior national rights (A139 EPC, although modifications related to these are possible);
- the right to the patent (A61 CBE);
- the form of the description, the claims, or the drawings (respectively R42 EPC, R43 EPC and R46 EPC);
- the incorrect designation of the inventor (R19 EPC);
- the only validity of the priority (A87 CBE and A88 CBE);
- the only non-modification of the filing date following the late delivery of missing parts (R56 (3) EPC);
9.2.4. Vague and insufficiently detailed reasons
These reasons must be detailed in the statement of opposition (R76 (1) EPC): a simple attack of type " the patent is insufficiently described for the person skilled in the art to perform it Will be inadmissible.
9.2.5. Presentation of several possible attacks on the inventive step
Opponents may exhibit multiple inventive step attacks using each document cited as the closest state of the art document.
In practice, after having determined true The closest state of the art document, the EPO will only discuss attacks from this document.
Refusing to discuss other attacks is not a violation of the right to be heard because the problem-solution approach is properly applied (R13 / 13).
Section 9.3. New reasons
A ground not present in the notice of opposition is a new ground (G1 / 95, 5.3): " a ground of opposition which has not been raised and developed in the notice of opposition, nor introduced into the proceedings by the Opposition Division acting under Article 114 (1) EPC"
By way of illustration, if the notice of opposition mentions only a lack of novelty, the absence of an industrial character is a new ground if it is invoked later in the proceedings.
9.3.2. Accepting a new reason
New grounds of opposition may be taken into consideration at the appeal stage only with the consent of the holder (G10 / 91) except :
- if they have been examined ex officio by the Opposition Division (T309 / 92).
- if they were presented at the opposition stage and refusedA114 (2) EPC) wrongly (T986 / 93).
- It is also worth noting a decision to the contrary (T1286 / 14) which states that the Board of Appeal can only ascertain whether the Opposition Division has examined the prima facie relevance of the new ground.
Nevertheless, if the defect ofinventive activity with D1 as the closest state of the art, it is possible, although not raised, to challenge the patent for lack of novelty has been raised in relation to D1 (G7 / 95).
On the other hand, if a novelty attack is performed at the same time as an inventive step, it is normal that the lack of inventive step do not be motivated (because this is often contradictory). In this case, the lack of inventive step can be examined without being considered as a new ground (T131 / 01).
Section 9.4. Reasons raised ex officio by the Opposition Division
The opposition division is:
- not have to consider all possible grounds for opposition (G10 / 91);
- not be limited to the pleas raised by the parties: the Opposition Division may, if it appears prima facie relevant, raise it automatically (A114 (1) EPC and R81 (1) EPC).
These grounds of appeal may arise (DV 2.2 Guidelines):
- of the research report,
- the examination procedure,
- personal knowledge of the examiner,
- comments from third parties (A115 EPC).
- if the comments of third parties can be normally anonymous (" Decision of the President of the European Patent Office dated 10 May 2011 concerning the filing of comments by third parties under Article 115 EPC via an electronic form », OY 2011, 418Article 2 and Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third party comments under Article 115 EPC », OY 2017, A86),
- this does not seem to be the case in ex-partes proceedings, such as the opposition (T146 / 07), as this anonymity could constitute an abusive circumvention of the opposition procedure (eg it could allow an opponent to introduce a late but relevant document). Thus, it would be necessary to sign these observations in accordance with R50 (3) EPC and R86 EPC to enable the EPO that the third party is not a party to the proceedings.
New grounds of opposition may be taken into consideration at the appeal stage only with the consent of the holder (G10 / 91).
Section 9.5. Facts, reasons and late or non-submitted evidence
The EPO may dismiss any fact, motive and evidence submitted late (or simply not presented).
Nevertheless, the Opposition Division may accept these grounds if they are, prima facie, relevant (T156 / 84).
Reasons may even be very late (eg 1 month before the oral proceedings), but the admission of new grounds is left to the discretion of the Opposition Division (T1283 / 11).
Documents cited in the Examination procedure or in the application are not automatically part of the opposition procedure (T198 / 88) with the exception of the closest prior art document identified by the Examining Division to understand the technical problem set out in the description (T536 / 88).
Section 9.6. Burden of proof
In general, each party bears the burden of proving the facts it alleges. In addition, if a party provides convincing evidence, the burden of proof will then be shifted to the other party (T270 / 90).
It may happen that an opponent brings evidence, or states a relevant fact (DV 2.2 Guidelines):
- if an allegation appears plausible and undisputed, it may be considered without further evidence;
- if an allegation is contested or is not plausible, the party alleging it must prove it.
Nevertheless, stronger evidence is needed if:
- the opponent invokes:
- the incumbent argues that:
- the invention can be realized, but the opposition division in doubt (demonstration of plausibility, T792 / 00 and Guidelines F-III 4);
- changes made according to the R139 EPC are not contrary to A123 (2) EPC (T383 / 88);
- the invention provides certain advantages, but the opposition division in doubt (T97 / 00).
Chapter 10. Notifications, observations and modifications of the patent
Section 10.1. Notification of opponents' notice of opposition
The formalities officer shall notify the notice of opposition:
10.1.2. Observations and possible modifications on the part of the holder
When notifying the holder of the notice of opposition, the holder shall be invited to submit observations and amendments within a specified period of time (A101 (1) EPC and R79 (1) EPC) : most of the time 4 months (Directives D-IV 5.2).
This notification is made by the formalities officer (R11 (3) EPC) at the end of the opposition period or the time limit for correcting the minor irregularities of the R77 (2) EPC ( ' The opposition procedure at the EPO », OG 2001, 148, §2.2.1 and Directives D-IV 5.2), whether the issue of admissibility has been definitively decided or not.
There is no sanction if no response is provided in time (G1 / 90).
10.1.3. Notifications to other opponents
Section 10.2. Notification of the notice of opposition
There is no obligation here on the part of the EPO (R79 (4) EPC). At its discretion:
- the opposition division does nothing, or
- the opposition division acts as if the notice of opposition had been presented by a real opponent (see above).
Section 10.3. Notification of observations / modifications of the holder
The observations / modifications of the holder are notified to the opponents (R79 (3) EPC).
Opponents may be invited to reply within a specified time (if the Opposition Division finds it relevant and requests it, R79 (3) EPC, ex. amendments are produced without the need for oral proceedings, " The opposition procedure at the EPO », OG 2001, 148 §2.2.2): most often, this delay is 4 months (Guidelines D-IV 5.4).
There is no sanction if no response is provided in time (G1 / 90).
Section 10.4. Other notices addressed to parties
Any response to a notification is, in turn, notified to all other parties (R81 (2) EPC).
Section 10.5. Interviews and telephone interviews
Interviews or informal telephone conversations are not allowed in opposition under the R81 (2) EPCbecause not all parties can participate (Directives E-III 1) unless they concern only matters that do not affect all parties.
Section 10.6. Opinion of the Opposition Division
In the notifications sent to the parties, the Opposition Division may give its opinion on patentability and, in particular, it may send a reasoned opinion indicating the reasons which would preclude the maintenance of the European patent (R81 (3) EPC).
Motivation is not necessary for questions of form or for self-evident propositions (Directives D-VI 4.1).
The Opposition Division may search for new documents in exceptional cases (eg highlighting a feature that was previously quite secondary, D-VI Guidelines 5).
Section 10.7. General eligibility of changes
An amendment is permissible only if it is based on a ground of opposition (R80 EPC):
- or simply possible.
Thus, a grooming of the claims or a modification of the dependent claims (T406 / 86) is not possible unless this grooming is necessary and appropriate because of an allowable modification (H-II 3.2 Guidelines).
It is not possible to add claims (T295 / 87) unless such addition is essential to the defense of the patent (eg a dependent claim has two different embodiments and must be separated into two independent claims (T233 / 97 and H-II Guidelines 3.1).
10.7.2. General compliance with the provisions of EPC funds
Of course, the amendments must respect the substantive provisions of the EPC (novelty, inventive step, non-addition of material, etc.) (A101 (3) (a) EPC).
However, this requirement should not be able to allow a complete review of the patent, whether for clarity (see below) or other requirements of the EPC (G3 / 14): in particular, it is not possible to raise an objection under theA123 (2) EPC which has never been presented before, when the holder simply combines two claims (T128 / 13).
10.7.3. Aiming to avoid national rights
10.7.4. Subsidiary queries
To do this, the holder must indicate the order of preference of his requests.
The opposition division examines these sets of claims in order (principal then subsidiary, Directives D-VI 7.2.2) and if one of the games seems patentable, the opposition divisionT234 / 86) and explains why the previous games were not considered patentable (Guidelines H-III 3.4.1).
Typically, it is not possible to examine the clarity of the claims if they result from an incorporation of entire dependent claims into an independent claim or an entire alternative contained in a dependent claim into an independent claim (G3 / 14 or T260 / 13).
In other cases (eg the dependent claim contains several interrelated features, and one of these features is incorporated in the independent claim), this seems possible if the alleged lack of clarity is related to the modification (G3 / 14 or T1977 / 13).
It is not possible to attack the modifications for problems of non-unit (G1 / 91).
Although unity of invention is a substantive condition within the meaning of the EPC, it is in fact a mere administrative provision and its main purpose is to prevent applicants from abusing the procedure. and pays only a very small number of fees to the EPO (search, filing, examination fees, etc.) (DV 2.2 Guidelines).
10.7.7. Several independent claims of the same type
10.7.8. Extension of the scope of the patent
This prohibition is based onA123 (3) EPC.
To find out if an extension of the scope has been introduced, it is necessary to ask whether an object was " Non-infringing In the initial game and suddenly became " forger In the modified game.
Once this great principle is exposed, there are some more complex cases. Thus was not considered to extend the scope of a patent:
- a reintroduction during the opposition proceedings of definitions deleted during the Examination (T1481 / 05);
- category change from "product" to "use" claim (G2 / 88).
Section 10.8. Accelerated opposition procedure
10.8.1. Counterfeit action
If an action for infringement has been brought before a national court, it is possible for a party to submit an application for accelerated processing (EPO Communiqué of 17 March 2008, OG 2008, 221point 1).
This request can be filed at any time.
It must be in writing and be reasoned.
The EPO then makes its best efforts to perform the next procedural act (the latest expiry date being retained) (" Notice from the European Patent Office dated 17 March 2008 concerning accelerated processing of oppositions where an action for infringement has been initiated », OG 2008, 221, point 1):
- in a delay of 3 months from the receipt of the request;
- if the request has been made within the opposition period, within 3 months from receipt of the holder's response to the notice of opposition.
This acceleration will also be carried out if a court or competent administration notifies the EPO that an infringement action is pending (" Notice from the European Patent Office dated 17 March 2008 concerning accelerated processing of oppositions where an action for infringement has been initiated », OG 2008, 221point 2).
The cooperation of the parties is essential (" Notice from the European Patent Office dated 17 March 2008 concerning accelerated processing of oppositions where an action for infringement has been initiated », OG 2008, 221point 3).
10.8.2. Other cases
The EPO will also speed up the procedure if (Directives D-VII 1.2):
- the duration of the examination procedure has clearly exceeded the average duration;
- the length of the opposition proceedings significantly exceeded the average duration;
- other cases (eg divisional) depend on the outcome of the opposition;
- the next phase of the exam requires only a relatively short time.
Chapter 11. Decision of the Opposition Division
The decision of the Examining Division can only be based on a text proposed or validated by the applicant (A113 (2) EPC).
Three types of decision can be made in this case.
Section 11.1. Revocation
The revocation takes effect retroactively from the beginning (ie ex tunc, A68 CBE).
11.1.1. For substantive reasons
The opposition division may revoke:
11.1.2. At the initiative of the holder
If the proprietor makes a request to surrender the patent or to surrender the patent, the request is interpreted as an application for revocation (Directives D-VIII 1.2.5).
If there is a possible ambiguity, the applicant is asked to clarify.
The opposition proceedings are then closed.
11.1.3. For other reasons
Revocation can also occur if:
- the incumbent disapproves of the amended / issued text, but does not propose new amendments in a meaningful way (T73 / 84 and Directives D-VI 7.2.1);
- the holder does not pay the publication fee on time or fails to file the translated claims (R82 (3) EPC and Directives D-VIII 1.2.4).
Section 11.2. Rejection of opposition
The Opposition Division may decide to reject the opposition if no valid reason appears to it (A101 (2) EPC).
The decision rejecting the opposition may be appealed by the opponent (A106 (1) EPC).
Section 11.3. Maintenance of the patent in modified form
The Opposition Division may also, if the holder agrees (A113 (2) EPC) and if the opponents were able to present their arguments (A113 (1) EPC), maintain the patent in a modified form (A101 (3) (a) EPC).
11.3.1. Proposal to maintain a modified form
If the EPO wishes to make "necessary editorial changes", the Opposition Division may notify the parties modified text in which it intends to maintain the patent and invites them to submit their comments within a 2 months if they do not agree with this text (R82 (1) EPC).
If within the 2 monthsthe owner (respectively the opponent) objects to this text and if relevant changes are made (relevant arguments are raised), the examination may be resumed (Directives D-VI 7.2.1).
This notification according to the R82 (1) EPC is not essential (Directives D-VI 7.2.1, " Notice from the European Patent Office dated 14 July 1989 concerning the application of Rule 58 (4) EPC in opposition proceedings », OJ 1989, 393, point 1.2) if:
- the holder has already given his consent, and
- the opponent had the opportunity to comment on these amendments.
Note that if the holder does not comment on these changes during the oral proceedings or declares that he does not want to make a decision, this does not mean that he has given an implicit agreement (T861 / 16).
11.3.2. Intermediate decision
If the Opposition Division considers that the patent can be maintained on the basis of the text accepted by the proprietor and if the opponent has had sufficient opportunity to comment on that text, the Opposition Division shall intermediate decision (Directives D-VI 7.2.2, " Notice from the European Patent Office dated 14 July 1989 concerning the application of Rule 58 (4) EPC in opposition proceedings », OJ 1989, 393 point 2.1), which may be appealed to endorse the text.
The agreement of the holder on the text can be expressed:
- expressly by the holder;
- the fact that the owner proposed the text;
- the non-response of the holder to the EPO proposal.
An independent appeal is planned under theA106 (2) EPC (even if the opponent has agreed to the proposed version or has not ruled on it, Notice from the European Patent Office dated 14 July 1989 concerning the application of Rule 58 (4) EPC in opposition proceedings », OJ 1989, 393point 2.2)
This intermediate decision may also be based on a auxiliary request presented by the holder (Directives D-VI 7.2.2).
In this case, the decision must indicate for which reasons the version of the main request (and of any auxiliary request of previous rank) does not fulfill the conditions laid down by the EPC (T234 / 86).
Otherwise, a substantial procedural violation could be raised. The proprietor can then appeal against this decision by challenging the inadmissibility of previous requests.
The purpose of the intermediate decision is to prevent the holder from unnecessary translation costs which would entail a possible amendment of the text in the event of an appeal.
11.3.3. Provision of translations and tax payments
- to provide the different translations of the claims in the official languages of the EPO
- this applies to each claim set if there are several (Directives D-VI 7.2.3),
- to pay the printing fees for the new booklet (A2 (1) .8 RRT): 75 €.
No tax on the number of claims is to be paid.
If at least one of the two actions is not carried out by the proprietor, the opposition division shall notify the proprietor and this notification shall 2 months (R82 (3) EPC).
If the holder still does nothing despite this last notification or if the late payment fee is not paid (A2 (1) .9 RRT : 120 €), the patent is revoked (G1 / 90) by a new decision of the Opposition Division.
11.3.4. Final decision
If the holder performs both actions in a timely manner, the publication will be made as soon as possible and a final decision is made indicating that the patent is maintained in modified form (specifying the text on the basis of which it was taken, R82 (4) EPC).
This final decision of course is appealable, but only in respect of matters not found in the interim decision. If the interim decision is not the subject of any appeal, the finding contained in it becomes final (Directives D-VI 7.2.2).
Opposition proceedings are closed when the final decision is rendered (regardless of when it becomes res judicata, G4 / 91).
11.3.5. Publication of the new patent specification
The new booklet includes (R87 EPC):
- the description,
- the revendications,
- the drawings.
Because it's never as clear as with a diagram ...
Chapter 12. Cost Breakdown
Section 12.1. Parties to the proceedings
In principle, each party pays the costs it incurred (A104 (1) EPC).
The parties are the owner, the opponents or the interveners (if any).
This principle can nevertheless be moderated for reasons of equity (in this case, only the expenses necessary for an adequate defense are taken into account. R88 (1) EPC and D-IX Directives 1.3): the decision of the Opposition Division will then contain provisions on the apportionment of costs.
By way of illustration, an opponent had to pay the full costs and fees of the holder's agent because the opponent did not come to the oral proceedings and did not even respond to the notifications. The opponent had come from Japan for the oral proceedings of the opposition (T930 / 92).
Section 12.2. Third parties to the proceedings
Regarding third parties (witnesses, experts, etc.), their expenses are reimbursed (R122 (2) EPC), whether cited by the EPO or even by a party to the proceedings.
These costs are distributed among the parties based on fairness (D-IX Directives 1.3).
Section 12.3. Distribution and fixing of costs
12.3.1. Possible cases
12.3.2. Behaviors that can lead to a distribution
A division of costs is possible when the behaviors are incompatible with the vigilance that must be shown when safeguarding rights (D-IX Directives 1.4).
This is particularly the case (D-IX Directives 1.4):
- in case of negligence;
- in case of bad faith;
- in the case of the use of inappropriate means and arguments;
- in case of extension of time (A16 (1) RPCR);
- in the case of an act or omission which interfered with the oral proceedings or which contributed to delayingA16 (1) RPCR);
- in the event of a waiver of the patent, shortly before the oral proceedings when the revocation of the patent had been evident for a long time because of a document produced;
- in the event of late citing of a state of the art which is known to have been previously known, the oral procedure being delayed (T117 / 86);
- in the case of invocation of facts or relevant evidence belatedly and without just cause (T867 / 92);
- in the event of non-appearance in the oral proceedings without notifying the EPO in advance (T930 / 92 and T212 / 07) or only one day in advance (T937 / 04);
- Conversely, some of the boards of appeal consider that participation in an oral procedure is not mandatory for the parties: if a late announcement of an absence provided for at the oral proceedings may constitute faulty action of irresponsible or even malicious nature Would require strong evidence to support such an allegation (T1079 / 07 or T383 / 13 or T1699 / 15).
- in case of abuse of procedure (A16 (1) RPCR).
12.3.3. Fees to take into account
The costs to be taken into account are (R88 (1) EPC) « the expenses necessary to ensure adequate defense of the rights in question ».
This includes (D-IX Directives 1.3):
- the costs incurred by witnesses;
- expert fees;
- the remuneration of the parties' representatives (in the event of a procedure, in case of delay due to late documents, etc.);
- travel expenses ;
- the incumbent's fees incurred to provide evidence in response to very late documents (T416 / 87);
- the costs incurred in order to give instructions to the professional representative (T930 / 92);
Unnecessary or irrelevant expenses should not be taken into account (D-IX Directives 1.3).
1) 1st step: decision to allocate costs
In the opposition decision, the Opposition Division may prescribe (possibly ex officio, D-IX 1.2 guidelines) the distribution of costs without fixing, at that time, the amounts (A104 (1) EPC and R88 (1) EPC).
Otherwise, each party bears its own costs (A104 (1) EPC).
A request can be submitted by a party before the final decision in order to request a particular distribution (with a motivating preference) (D-IX 1.2 guidelines). In that event, the Opposition Division must necessarily pronounce on that point in the reasons for its decision (D-IX 1.2 guidelines).
2) Remedies on the cost allocation decision
If the other party lodges an appeal against the decision (but not particularly against the apportionment of costs), this does not mean that the allocation of costs can be rediscussed (T1237 / 05).
3) 2nd step: setting fees
In order to fix costs, it is necessary to submit a request for this purpose, enclosing the various supporting documents (R88 (2) EPC).
The formalities officer (by delegation of the Opposition Division, R11 (3) EPC and Decision of the President of the European Patent Office dated 12 December 2013 to assign to agents who are not examiners certain tasks of the Examining or Opposition Divisions », OJ 2014, A6) then fixes the costs and notifies the partiesD-IX Guidelines 2.1). It's not a decision.
This fixing is deemed to be enforceable in the various Member States at the end of a 1 month from the date of notification and if no decision has beenA104 (3) EPCit is necessary to understand "decision" as covering the "fixing of costs" in this case D-IX Guidelines 3).
4) 3rd possible step: fixing decision
A decision can then be requested, in writing and motivated, within a 1 month from the notification relating to the determination of costs (R88 (3) EPC). It is also necessary to pay a corresponding fee (A2 (1) .16 RRT : 75 €).
TheA122 EPC is applicable only for the holder.
This decision, which has become res judicata, is enforceable in the various member states (A104 (3) EPC).
5) Appeal on the decision to fix costs
The amount of the appeal fee is 2225 € (A2 (1) .11 RRT).
If an appeal is submitted without respecting these conditions, it will be rejected (R101 (1) EPC).
The principle of no reformatio in pejus applies here (T668 / 99).