Opposition

Opposition is an extremely useful procedure for third parties.

Indeed, after issuing a patent, a third party may be able to:oppose 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.

Contents

Chapter 1. The Division of Opposition

Section 1.1. Principle

Section 1.2. Challenge of #8217; a member of the opposition division;

Chapter 2. Territorial Scope and Effects

Section 2.1. Territorial scope

Section 2.2. Extinction or waiver of patent in all designated states

Section 2.3. retroactivity

Chapter 3. Quality of parts and time

Section 3.1. Holder

Section 3.2. opposing

3.2.1. Any third party

3.2.2. Limitation of the term & #8220; all thirds & #8221;

3.2.3. Non-limitation of the term & #8220; all others & #8221;

3.2.4. Straw man

3.2.5. Identification

3.2.6. Representation

3.2.7. Transfer of the quality of #8217;

3.2.8. Verification of the quality of the opponent

3.2.9. Parties to the proceedings and end

Section 3.3. speaker

3.3.1. Condition of #8217; intervention

1) Principle

2) On the basis of this patent / state of #8217;

3) Third party to the procedure

Principle

Case of groups of companies

Men of straws

3.3.2. Conditions relating to the current opposition 1P38217

3.3.3. Time limit

3.3.4. Procedure

3.3.5. Effects

1) Principle

2) No new measure

3) New reasons / arguments / evidence

4) Points already decided

3.3.6. Withdrawal of an intervention

3.3.7. Intervention at appeal stage

1) Principle

2) Withdrawal from the opposition the same day

3) No new measure

4) New reasons / arguments / evidence

5) Points already decided

Section 3.4. Parties and suspension of proceedings

3.4.1. Suspension

3.4.2. Partial substitution

Chapter 4. Withdrawal of opposition, waiver of patent and prosecution of IPT

Section 4.1. Withdrawal of all oppositions

Section 4.2. Withdrawal by one of the opponents

4.2.1. Withdrawal by an opponent who has filed an opposition alone

4.2.2. Withdrawal by opponent who has filed a joint objection

Section 4.3. Waiver, revocation, lapse of patent

4.3.1. In front of the EPO

4.3.2. With designated states

Section 4.4. Prosecution of the proceedings

Chapter 5. REB Listings

Section 5.1. In case of no opposition

Section 5.2. In case of opposition

Chapter 6. Formal aspects

Section 6.1. Time limit of #8217;

Section 6.2. Tax of #8217;

6.2.1. Principle

6.2.2. Incomplete payment

6.2.3. Refund of tax

6.2.4. Tax reduction

1) Discount before April 1, 2014

2) Reduction as of April 1, 2014

Section 6.3. Form of the Opposition

6.3.1. Obligation

6.3.2. Preference

6.3.3. Electronic filing

6.3.4. Filing by fax / fax

6.3.5. Signatures of the Act of Opposition

Section 6.4. languages

6.4.1. Act of Opposition

6.4.2. Evidence, prior art, etc.

Section 6.5. deposit local

Section 6.6. Contents of the Act of Opposition

6.6.1. General considerations

6.6.2. Problems on the #8217; identification of the opponent

6.6.3. Problems with the IPT and identification of the patent

6.6.4. Problem on the #8217; proxy identification

6.6.5. Focus on measurement

6.6.6. Focus on the grounds

6.6.7. Focus on state of the art documents

6.6.8. Focus on l & #8217; previous use or oral description

6.6.9. Focus on the knowledge of the #8217;

6.6.10. Focus on the language of evidence

Chapter 7. Training and Admissibility of the Opposition

Section 7.1. Skill

Section 7.2. Partial admissibility

Section 7.3. Irregularities leading to a reputed opposition to untrained #8221;

7.3.1. Case of & #8220; non-training & #8221;

7.3.2. Notification

7.3.3. Procedure if the opposition is deemed unformed

Section 7.4. Irregularities causing opposition #8220; inadmissible & #8221;

7.4.1. Inadmissibility from the end of the opposition period

1) Causes of inadmissibility

2) Notification

3) Procedure if the opposition is rejected

7.4.2. Inadmissibility that can be corrected within a new deadline

1) Cause of inadmissibility

2) Notification

3) Procedure if the opposition is rejected

7.4.3. If the opposition declared declared admissible

7.4.4. If the opposition declared inadmissible

Chapter 8. Notification to the Holder of the Opposition

Chapter 9. Infringement of the patent

Section 9.1. Measure / claims challenged

9.1.1. Principle

9.1.2. Dependent claims

9.1.3. Product-by-process

Section 9.2. Reasons raised

9.2.1. Possible reasons

9.2.2. Separate reasons

9.2.3. Excluded reasons

9.2.4. Vague and insufficiently detailed reasons

9.2.5. Presentation of several possible attacks related to l & #8217;

Section 9.3. Reasons raised ex officio by the Opposition Division

Section 9.4. Burden of proof

Chapter 10. Notifications, observations and modifications of the patent

Section 10.1. Notification of the Act of Opposition

10.1.1. Principle

10.1.2. Observations and possible modifications on the part of the holder

10.1.3. Notifications to other opponents

Section 10.2. Notification of the Act of #8217;

Section 10.3. Notification of observations / modifications of the holder

Section 10.4. Other notices addressed to parties

Section 10.5. Interviews and telephone interviews

Section 10.6. Opinion of the Opposition Division & PT38217;

Section 10.7. General eligibility of changes

10.7.1. Principle

10.7.2. General compliance with the provisions of EPC funds

10.7.3. Aiming to avoid national rights

10.7.4. Subsidiary queries

10.7.5. Clarity

10.7.6. Non-unit

10.7.7. Several independent claims of the same type

10.7.8. Extension of the scope of the patent

Section 10.8. Accelerated opposition procedure #8217

10.8.1. Counterfeit action

10.8.2. Other cases

Chapter 11. Late nature

Section 11.1. Principle

Section 11.2. Late reasons

11.2.1. Principle

11.2.2. Acceptance of a new reason

11.2.3. exceptions

Section 11.3. Late facts (eg publications) and evidence

11.3.1. At the opposition stage

11.3.2. At the opposition appeal stage

Section 11.4. Late arguments

Section 11.5. Late requests

Chapter 12. Decision of the opposition division

Section 12.1. Revocation

12.1.1. For background reasons

12.1.2. At the initiative of the holder

12.1.3. For other reasons

Section 12.2. Rejection of opposition

Section 12.3. Maintenance of patent in modified form

12.3.1. Proposal to maintain in an amended form

12.3.2. Intermediate decision

12.3.3. Provision of translations and payment of fees

12.3.4. Final decision

12.3.5. Publication of the new patent specification

12.3.6. summary

Chapter 13. Allocation of costs

Section 13.1. Parties to the proceedings

Section 13.2. Third parties to the procedure

Section 13.3. Allocation and setting of costs

13.3.1. Possible cases

13.3.2. Behaviors that can cause a breakdown

13.3.3. Costs to take into account

13.3.4. Procedure

1) 1st step: decision to allocate costs

2) Remedies on the cost allocation decision

3) 2nd step: setting fees

4) 3rd possible step: fixing decision

5) Appeal on the decision to fix costs

Hide changes

Chapter 1. The Division of Opposition

Section 1.1. Principle

The Opposition Division consists of three examiners-technicians (A19 (2) EPC) of which two were not in the division of TTP.

If the Opposition Division is composed of two members of the Examination Division, its decision will be subject to a procedural violation (#8217).T285 / 11)

They may eventually be assisted by a lawyer who has not participated in the issuance (A19 (2) EPC). In the case where the division of opposition has been enlarged to 4 members, it is possible that it may exercise its discretion to reduce the division to 3 members (if the circumstances which led to the enlargement have disappeared, T1254 / 11).

The Examiner who conducted the Examination of the Application during the Examination Procedure can not be President (1).A19 (2) EPC).

The President has a predominant voice in the event of a tie vote (A19 (2) EPC).

Section 1.2. Challenge of #8217; 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

L & #8217; opposition is the last chance for a third party to #8217; 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 oppose only for certain countries: in this case, it will be considered that the opposition applies to all the designated States (ibid.).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:

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 #8217 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

Opposition is possible even if the patent has been surrendered in all designated States or if the patent is extinguished in all those States (R75 EPC, DI guidelines 2).

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 be n & #8217; have not had any effect).

Chapter 3. Quality of parts and time

Section 3.1. Holder

Of course, the holder is a party of right to the procedure of #8217;A99 (3) EPC).

S & #8217; there are several different incumbents in functions of the designated states, they are considered as owners in the opposition procedure (#8217;A118 EPC).

Section 3.2. opposing

3.2.1. Any third party

L & #8217; opponent can be any third party (A99 (1) EPC), without regard to the right to act (G3 / 97 and DI guidelines 4).

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 (#8217);T25 / 85 and G3 / 99). In this case, it will be necessary to appoint a common representative. S & #8217; it is not designated, 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 & #8220; all thirds & #8221;

The only limitation to this principle is that the holder himself can not himself oppose his own patent (G9 / 93) even if for a time this could be allowed (G1 / 84).

3.2.3. Non-limitation of the term & #8220; all others & #8221;

It is quite possible to oppose a patent in order to train (T798 / 93).

A non-contestation clause in a license agreement entails 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

Lastly, it should be noted that the use of a nominee (or "straw man") is possible in order to hide the true identity of the third party wishing to oppose. This use is however limited (G3 / 97 and G4 / 97):

  • an opponent must not disguise the patentee;
  • an opponent, not an agent, which carries out actions which together are characteristic of those of a professional representative (as this would be an improper 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 #8217, a third party who does not fulfill this condition;
  • if the #8217; opponent & #8220; straw & #8221; confirms that #8217 is acting for a third party (identified or not) (T2365 / 11).

The proof of a circumvention of the procedure must be provided by the one invoked: this proof must be clear and unambiguous (G3 / 97)

3.2.5. Identification

The opponent must clearly be identified before the end of the opposition period.

However, a fault d & #8217; identification can be corrected with regard to the R139 EPC (T579 / 16). For this, three conditions must be respected (analogy with G1 / 12): 

  • the correction must reflect the true intent.
    • the burden of proof lies with the Opponent,
    • the proof requirements are large (eg e-mails from #8217;
  • The error may be an inaccurate indication: this is the case in the case of a #8217 error, a #8217 error, and the identification of the opponent; 
  • the request for correction must be made without delay.

3.2.6. Representation

If an opponent does not have a domicile or registered office in the territory of a Contracting State, it must be represented by (#8217;A133 (2) EPC).

If the conditions of necessity of a representative are met, but #8217; no agent is appointed, there is an irregularity (R77 (2) EPC). EPO notified it to the opponent and lodged an invitation to remedy it within a given time limit.

Attention, if an opposition is formed by an agent or an employee of the opponent, it may be necessary for him to deposit a signed power (R152 (1) EPC andDecision 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 term of office has not been notified to the EPO, unless:
      • reference is made to a general power already registered with EPO;
      • EPO is notified of the termination of the mandate of the former representative before the end of the prescribed period.
    • if circumstances dictate (eg in case of doubt of EPO).
  • for a lawyer :
    • in all cases except s & #8217, reference is made to a general power of attorney already registered with EPO;
  • for a employee of the Opposition :
    • in all cases except for s & #8217, reference is made to a general power already registered with the EPO.

If the power is not filed, the agent or the employee is requested to remedy the irregularity within a specified period.

If this power is still not filed within this time limit, the opposition is deemed to be unformed (ibid.).Directives D-IV 1.2.1 iv).

If in the process of opposition, the opponent #8220, loses #8221; his representative (eg removal, death, etc.), he is invited to appoint one. S & #8217; 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, s & #8217; he presents himself alone, he can not intervene (Directives A-VIII 1.1).

3.2.7. Transfer of the quality of #8217;

Transmission is possible in #8217;DI guidelines 4):

  • of hereditary succession (R84 (2) EPC);
  • of universal succession (eg merger of legal person);
    • even if the merger n & #8217; is not registered in the BER according to R22 (3) EPC, the universal successor becomes immediately opposing (T15 / 01).
  • of partial succession (ie transfer of #8217; a department)
    • if the action in opposition was brought in the interest of the property transferred (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 provide proof that the quality of the opponent has been passed on to the transferred heritage element (1).T298 / 97): the simple interest of canceling the patent n & #8217 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 to one 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 quality of the opponent is the date of the provision to EPO of documents proving 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 be carried out.

3.2.8. Verification of the quality of the opponent

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 lodged an appeal is regarded as an opponent challenged by the Board of Appeal (ibid.).T1178 / 04).

3.2.9. Parties to the proceedings and end

The opponent is party to the opposition procedure (1).A99 (3) EPC), but only until #8217, its eventual withdrawal or rejection (having become res judicata) of its opposition (DI Guidelines 6).

Section 3.3. speaker

3.3.1. Condition of #8217; intervention

1) Principle

A third can & #8220;intervene& #8221; in the case of #8217, an opposition already formed in the #8217 case whereA105 (1) EPC):

  • this third party was attacked for infringement (A105 (1) (a) EPC); or
  • this third party has been ordered to cease its counterfeit actions and that #8217 has initiated an action for declaration of non-infringement (A105 (1) (b) EPC).
    • However, the formal notice must not only be a letter warning against possible counterfeiting and reserving the rights of #8217 to take legal action in the future (T392 / 97).

It should be noted that #8217, a counterfeit seizure (T305 / 08) or a Beweissicherungsverfahren (German equivalent of the counterfeit seizure, T1746 / 15) do not allow to base an intervention.

2) On the basis of this patent / state of #8217;

L & #8217; counterfeiting attack or formal notice must be based on & #8220;this patent” (A105 (1) (a) EPC and A105 (1) (b) EPC).

So, a counterfeit attack in a State of extension #8217; on the basis of #8217, a patent obtained by an extension will not make it possible to validly present an intervention (T1196 / 08).

The intervention must be based on a court action brought in a designated state and not a state of #8217;extension (T7 / 07 and T1196 / 08).

3) Third party to the procedure
Principle

The intervener 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 claims that may be presented) can not intervene since #8217, he is already a party to the procedure according to at 1P38217;A107 EPC (T1038 / 00).

Case of groups of companies

If the parent company is opposed, this does not prevent the subsidiary from making an intervention as long as the conditions of the #8217;A105 (1) EPC are met (T305 / 08 or T435 / 17).

Men of straws

In the same way, if a person makes a man of straw to form an opposition, and then forms an opposition, we can ask ourselves whether that person is really a third party to the proceedings: in the 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 cases of the species.

3.3.2. Conditions relating to the current opposition 1P38217

The intervention can be formed as long as an opposition procedure is in place. pending (A105 (1) EPC) ie :

  • there is a valid 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 of time between the final decision and the end of the appeal period (G4 / 91).
    • if an appeal is lodged, the intervener will be considered as "#8220; (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 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 procedure. (R84 (2) EPC).

3.3.3. Time limit

The intervener must produce a statement of intervention in the 3 months from the first (T296 / 93) action judicial mentioned above (ie introductory action, R89 (1) EPC).

In the case, T452 / 05This first action was considered to be the meaning of the action (& #8220;injunctive order was served& #8220;), but this may depend on the national law in question.

Neither l & #8217;A121 EPC neither l & #8217;A122 EPC This time limit is not applicable because the third party is neither a requester nor a holder.

3.3.4. Procedure

In practice, the intervener must produce, within the time limit indicated above, a written and reasoned declaration, in the form of an act of opposition (1).R89 (2) EPC together R76 EPC).

Proof of judicial action must be brought (A105 (1) EPC).

The opposition fee must be paid within the same time limit so that the intervention is correctly submitted (R89 (2) EPC and A2 (1) .10 RRT : 785 €).

The opposition division may decide not to transmit this statement of intervention to the incumbent (s) and / or not to propose to the holder to submit his observations and to amend his application (ibid.R79 (4) EPC).

The formalities officer informs the respondent of the status 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).

3.3.5. Effects

1) Principle

The intervener is party to the opposition proceedings (1).A105 (1) EPC) until its eventual withdrawal or rejection (having become res judicata) of its intervention (DI Guidelines 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

It seems, however, impossible for the intervener to attack new claims that had previously been spared by the #8220; opponents (G9 / 91point 10).

3) New reasons / arguments / evidence

An intervener may introduce any new grounds for opposition, argument or evidence in his or her intervention even if the time limit for filing an opposition has already expired (otherwise it would render the principle of an intervention unnecessary and the R89 (2) EPC together R76 EPC).

4) Points already decided

Nevertheless, if certain aspects of the opposition have already been decided, the intervener can no longer return to what has already been decided (ibid.).T694 / 01). Thus, if the Opposition Division has decided to maintain the patent in modified form, the intervener will only be able to discuss the problems of bringing the description and the drawings into conformity with the claims.

3.3.6. Withdrawal of an intervention

(modified on 12/22/2019)

L & #8217; intervener becomes an opponent due to his intervention (see above). Consequently, the effect of a withdrawal from an intervention is the same as that of an opposition (#8217; effect of & #8217;T1665 / 16).

(modified on 12/22/2019)

Consequently, the documents cited by an intervener form part of the procedure without having to discuss their admissibility, whether at first instance or in appeal (T1665 / 16).

(modified on 12/22/2019)

3.3.7. Intervention at appeal stage

1) Principle

If the intervention reaches the appeal stage, the intervener is treated as an applicant who has not lodged an appeal (1).G3 / 04). Thus, if all those who lodged an appeal withdraws, the instance disappears.

He must pay the tax of #8217; opposition (A105 (1) EPC and R89 (2) EPC and and A2 (1) .10 RRT : 785 €).

2) Withdrawal from the opposition the same day

If the last applicant withdraws his appeal on the same day that the intervener lodges his statement, it is advisable to look at the exact chronological order of these events in order to know whether the intervention is admissible (1).T517 / 97):

  • if the intervention is declared admissible, the appeal procedure disappears (G3 / 04) and the 1PA38217 objection 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 d & #8217; attack from new claims, ie claims which, up to #8217; there, have not been the subject of an attack (G9 / 91).

4) New reasons / arguments / evidence

The intervener may submit new arguments and of new patterns of the'A100 CBE not shown (G1 / 94). If new grounds are raised, it is generally necessary 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 settled, the intervener can no longer return to what has already been decided (ibid.).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 drawings into conformity with the claims (even if the case is referred back to the division. d & #8217; opposition A111 EPC, res judicata).

Section 3.4. Parties and suspension of proceedings

3.4.1. Suspension

The opponent or the intervener may not request a stay of proceedings: he / she must act for one third of the proceedings (1).R78 (1) EPC).

Moreover, this suspension can be decided only if the opposition division considers the opposition to be admissible.R78 (1) EPC and Directives D-VII 4.1).

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 not have effect in other countries), the maintained European patent may contain several sets of description-drawings for different designated States (R78 (2) EPC).

The uniqueness of the patent s & #8217 is therefore affected.

L & #8217; former holder and new holder & #8220; partial & #8221; patent will not be considered as co-owner (A99 (4) EPC) except s & #8217, they request it.

The two opposition procedures can thus have different outcomes (Directives D-VII 3.2).

Chapter 4. Withdrawal of opposition, waiver of patent and prosecution of IPT

L & #8217; opposition may 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 continuation of the above application, 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).

The Opposition Division can only terminate the opposition by a decision (Directives D-VIII 1.1 together A101 (2) EPC, A101 (3) EPC):

  • 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 its opposition, while there are other admissible objections, 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 #8217, there are still opponents in the joint opposition), the opposition procedure continues normally (G3 / 99).

Only the joint representative of this joint opposition may notify this withdrawal: in the case of 1 PT38217, where 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).

If c & #8217; is the common representative withdrawing his / her opposition, a new representative must be appointed or, failing this, he / she shall designate him according to R151 EPC (G3 / 99).

Section 4.3. Waiver, revocation, lapse of patent

4.3.1. In front of the EPO

When the holder decides to apply for the withdrawal / withdrawal of his patent before the EPO (either in front of the PT38217 division, opposition in a special request, or in the PT38217 application of the revocation procedure of #8217;A105bis EPC), EPO always interprets this request as a revocation application with retroactive effects (Directives D-VII 5.1).

S & #8217; there is an ambiguity, the holder is asked 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 (which is then without cause) should be terminated.

4.3.2. With designated states

It is possible that #8217;R84 (1) EPC):

  • the holder waives the patent in all designated States (and not in EPO) or
  • the patent is extinguished in all designated States (and not in EPO).

Renunciation or termination in designated States shall not be retroactive, but only ex nunc (ie for the future #8217).

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 procedure 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 l & #8217;A122 EPC (T1403 / 16): indeed, the failure to comply with the time limit does not lead to any loss of rights, since, in application of the provisions of the law, there is no provision for the loss of rights;A114 EPCEPO 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 proprietor has waived all the rights attached to the patent before the competent authorities of the Contracting States (including the former ones, eg provisional protection, etc.), the opponent shall not be able to continue the procedure of #8217 opposition and this will be terminated by #8217;Directives D-VII 5.1).

Section 4.4. Prosecution of the proceedings

As soon as an opponent withdraws its opposition, dies or becomes incompetent, the opposition division must inform the other parties (owner, other opponents, interveners, etc.) that the procedure is being continued (1).R84 (2) EPC and Directives D-VII 5.2, the continuation of the procedure of the office does not apply when #8217; there are no longer any opponents).

Otherwise the procedure is closed (Directives D-VII 5.2) and this closure decision may be appealed by the holder (T197 / 88).

The prosecution of the Opposition is granted, 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 act of opposition is filed on file within the time limit of 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 BWR as well as the result of the procedure (R143 (1) (r) EPC).

Chapter 6. Formal aspects

Section 6.1. Time limit of #8217;

The deadline for forming a valid opposition is 9 months (A99 (1) EPC) from the publication of the mention of the grant to the BEB (A97 (3) EPC).

TheA122 EPC or A121 EPC n & #8217; is not applicable to the delay of #8217; opposition.

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 an opposition, but as a third party observation of the #8217;A115 EPC (Directives D-IV 1.1):
    • the opposition fee paid is refunded;
    • Opposition Act is filed and opened at Public Inspection.

Section 6.2. Tax of #8217;

6.2.1. Principle

The opposition fee must be paid within the time limit of opposition, 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

S & #8217; it is missing that #8217; a small part of the sum (about 10 %, J11 / 85), the formalities officer may still consider that the payment is being made correctly (A8 RRT and Directives D-IV 1.2.1 i).

Of course, the applicant must pay the missing sum within a specified time (T290 / 90), often 2 months.

6.2.3. Refund of tax

In the case of an opposition deemed unformed, the fee is refunded (T323 / 87 and Directives D-IV 1.4.1).

6.2.4. Tax reduction

1) Discount before April 1, 2014

If the opponent has his / her domicile (or registered office) in one of the Contracting States (or if he / she is the national of one of these States with a foreign address), and if he / she has an official language other than German, English or French, it may file the statement of opposition (of the R76 (2) (c) EPC) in that language (A14 (4) EPC).

In this case, the opposition fee is reduced by 20% (R6 (3) EPC together A14 (1) RRT).

2) Reduction as of April 1, 2014

For oppositions filed on or after 1 April 2014, no reduction is possible (& #8220;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 the Opposition

6.3.1. Obligation

The opposition must be in writing and must be motivated (R76 (1) EPC). In principle, this writing must be typed or printed (R76 (3) EPC and R50 (2) EPC).

If the objection is not filed in writing, the opposition is inadmissible (ibid.).R77 (2) EPC).

A margin of 2.5 cm must be reserved on the left of the sheet (R76 (3) EPC and R50 (2) EPC).

6.3.2. Preference

A 2300 form is available on the EPO website.

Preferentially, the opposition must respect the conditions of the R49 (3) EPC (Directives D-III 3.1):

  • 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 can be formed electronically (& #8220;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. Filing by fax / fax

(modified on 12/22/2019)

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 to be unformed (ibid.).Directives D-IV 1.2.1 iii).

If the opposition brief is transmitted in time limit, you must pay attention to the time of transmission of the last page: in fact, the EPO that the document will be transmitted when the last page is transmitted. If the last page is sent at 12:01 a.m. the day after the last deadline, the brief will be out of timeT858 / 18) and it will not be possible to consider that pages received before midnight constitute an admissible memorial.

(modified on 12/22/2019)

6.3.5. Signatures of the Act of Opposition

The act of opposition must be signed by the opponent or the representative (R76 (3) EPC together R50 (3) EPC).

Initials or initials are not enough (Directives D-III 3.4).

If the act is not signed, the formalities officer invites the opponent / agent to remedy the irregularity within a specified period of time (ibid.).R50 (3) EPC).

If the irregularity is not corrected within the time allowed, the opposition shall be deemed to be unformed (1).Directives D-IV 1.2.1 ii).

TheA122 EPC or A121 EPC n & #8217; is not applicable to the time limit.

Section 6.4. languages

6.4.1. Act of Opposition

The objection must be filed in an official language of the EPO (ie German, French, English, R3 (1) EPC).

However, it is possible to file opposition in the official language of a Member State if it is the opponent of his / her place of residence (or head office) in that State, or if he is the national of that State having his / her place of residence. the foreign language, 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 (#8217;R6 (2) EPC).

These deadlines do not benefit from 1P38217;A121 EPC or A122 EPC.

If the requested translation is not filed on 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

The objection must be filed directly with the EPO (EPO).A99 (1) EPC): Berlin, The Hague or Munich (Directives D-III 1).

If the opposition is filed elsewhere (eg national office, Vienna agency, etc.), a transmission is possible (but there is no obligation Directives D-IV 1.2.2.1 i)), but the important date remains the date of final receipt by the EPO (T522 / 94).

Section 6.6. Contents of the Act of Opposition

L#8217; act of #8217; opposition gives the #8220; scope & #8221; of opposition.

6.6.1. General considerations

It must contain:

  • R76 (2) (a) EPC :
    • the name,
    • l & #8217, address,
    • the nationality and the State of domicile or the seat of the opponent (#8217;R41 (2) (c) EPC);
  • R76 (2) (b) EPC :
    • the number of the European patent against which the opposition is brought,
    • the name of the patent owner,
    • the title of the invention.
  • R76 (2) (c) EPC :
    • the numbers of the contested claims including the dependent ones (la & #8220; mesure & #8221;);
      • The other claims independent will be excluded from the discussion.
      • The other claims dependent can be admitted later if, & #8220;prima facie& #8221; , they are not patentable (G9 / 91) unless only some of them are attacked explicitly (T653 / 02);
    • the grounds on which the opposition is based (ie the grounds of the & #8217;A100 CBE).
      • If reasons are forgotten, their subsequent introduction will be considered late.
      • A late argument is submitted to the & #8220;prima facie relevance& #8221; , ie it is acceptable if, at first glance, patentability is questioned by thinking 10 minutes (G 10/91 and DV 2.2 Guidelines).
    • the facts and evidence adduced in support of these reasons.
  • R76 (2) (c) EPC :
    • The information concerning the representative, if & #8217; one has been established (R41 (2) (d) EPC).

6.6.2. Problems on the #8217; identification of the opponent

A mistake most of the opponent's identification (e.g. it is impossible to identify the opponent at all), there is an irregularity (under R77 (1) EPC) and the opposition must be dismissed as inadmissible (unless the opponent has remedied it within the opposition period, Directives D-IV 1.2.2.1 vi)).

A 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 in order to establish that the original intention was to form the opposition to the name of the corrected opponent #8217;

A mistake minor of the opponent's identification (e.g. formal requirements not met), there is an irregularity (in respect of R77 (2) EPC) and this can be corrected after invitation from the EPO, even after the opposition deadline, within a given period Directives D-IV 1.2.2.2 i)).

This time limit does not benefit from l & #8217;A121 EPC or A122 EPC.

6.6.3. Problems with the IPT and identification of the patent

If #8217; it is really not possible to identify the patent to be attacked (e.g. only the name of the holder may be sufficient if he only has 1 patent 38217), there is an irregularity (under R77 (1) EPC) and the opposition must be dismissed as inadmissible (unless the opponent has remedied it within the opposition period, Directives D-IV 1.2.2.1 ii)).

A minor error in the identification of the patent, there is an irregularity (under R77 (2) EPC) and this can be corrected after invitation from the EPO, even after the opposition period Directives D-IV 1.2.2.2 ii)).

Some decisions even go as far as #8217; to consider that #8217; there is no irregularity if the information given makes it possible to determine without difficulty the patent in question (eg the patent number is given, but not its title T317 / 86only the publication number is communicated T335 / 00).

6.6.4. Problem on the #8217; proxy identification

If the name and professional address of the representative is not indicated in the forms of the R41 (2) (d) EPC, there is an irregularity within the meaning of R77 (2) EPC.

6.6.5. Focus on measurement

If the opposition does not make it possible to know to what extent the patent is challenged (set of claims, only part, etc.), there is an irregularity (Directives D-IV 1.2.2.1 iii)).

If an independent claim is in question, the claims that depend on it may be examined (G9 / 91 and DV 2.1 Guidelines) unless only some of them are attacked explicitly (T653 / 02).

Likewise, if a process claim is challenged, the product claim & #8220;product by process& #8221; is implicitly called into question if it targets the same process (T525 / 96 and DV 2.1 Guidelines).

This measure will bind the opponent for a possible appeal, since the decision will necessarily give rise to his claims for the claims not challenged (A107 EPC).

6.6.6. Focus on the grounds

An irregularity exists if the notice of opposition does not mention at least one reason mentioned in the #8217;A100 CBE (Directives D-IV 1.2.2.1 iv)).

The simple & #8220; lack of patentability & #8221; is not enough, unless it implicitly targets one of the reasons (Directives D-IV 1.2.2.1 iv)).

Once we said, we didn't say anything about the detailed motivation of the reasons. Indeed, if the opponent raises a reason but does not detail it (or insufficiently), this does not mean that the opposition is not formed (T623 / 18).

6.6.7. Focus on state of the art documents

When writing an opposition, many documents can be cited, as these are the simplest and most incontestable means of proof.

Nevertheless, we must be careful, because a document which is simply cited, without its relevance being established, may be rejected by the opposition division (#8217; opposition (T32 / 10).

In addition, it is necessary that the opponent mentions the parts of the documents on which it is based (unless the documents are very brief, Directives D-IV 1.2.2.1 v) and T222 / 85).

Proof of the content of the document (e.g. translation) or even the documents themselves can be provided after the opposition period on request by the EPO, within a specified period (R83 EPC and T94 / 84) even if #8217; it is advisable to produce them as soon as possible (Directives D-III 6 iii)). S & #8217; they are not produced within the time limit, the arguments using these arguments can be rejected by the Division of opposition (#8217;R83 EPC).

Only one copy of the documents is sufficient (Directives D-III 6 iii)).

In addition, documents cited in the procedure of & #8217; Examination (ie by the division of & #8217; Examination and by the research division) will not be automatically included in the procedure of & #8217; opposition (T198 / 88). Only the following documents may be included, even if & #8217; they are not cited by the & #8217; notice of opposition (#8217;DV 2.2 Guidelines):

  • the document cited in the application as being the closest state of the art. The same applies to the relevant documents cited in the patent specification, which, if they do not constitute the closest state of the art, are none the less essential for the understanding of the problem. (#8217;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 previous national laws 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 l & #8217; previous use or oral description

When a previous use / oral description is invoked by the opponent or an intervener, it is necessary to provide evidence allowing 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).

This proof does not necessarily have to be provided within the opposition period (#8217;T328 / 87 and T28 / 93).

The evidence provided will be examined very critical and strict (E-IV 4.3 Guidelines) and the certainty of the opposition division must go beyond reasonable doubt (T97 / 94).

6.6.9. Focus on the knowledge of the #8217;

Even if #8217; there is no official definition, the general knowledge of the skilled person (#8217;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 relates to a field of research so new that there is no technical information relevant to the subject in the manuals (#8217;T51 / 87).

If the notice of opposition mentions the general knowledge of the skilled person, it is not necessary to provide proof of this knowledge within the opposition period (#8217;T151 / 05).

However, if the patent holder disputes this knowledge, the opponent must provide proof of his allegations, for example by citing a document dealing with this 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 time.

If the translation is not produced on time, the document may be rejected by the opposition division (#8217;R3 (3) EPC).

Chapter 7. Training and Admissibility of the Opposition

Section 7.1. Skill

Normally, this is the opposition division which is competent. (#8217;A19 (1) EPC).

However, the formalities officer is responsible for checking the formal conditions (& #8220;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 conditions set out above are fulfilled for at least one reason makes the opposition admissible in its entirety (Directives D-IV 1.2.2.1 v))

Section 7.3. Irregularities leading to a reputed opposition to untrained #8221;

7.3.1. Case of & #8220; non-training & #8221;

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) ;
    • However, if the unpaid portion is minimal, the opposition may be accepted (AX Guidelines 7.1.1 and A8 RTT);
    • The person seeking to oppose is not notified of this irregularity.
  • The signature at the bottom of the notice of opposition is absent ((#8217;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 the EPO was never received within the time limit (“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 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);
  • l & #8217; notice of opposition is drafted in a non-official language, the conditions mentioned above (ie l & #8217; opposing his domicile (or his registered office) in one of the Contracting States, or if he is the national of one of #8217; these States having their domicile abroad, and that the latter has an official language other than German, English or French) which are not met (e.g. a Chinese files a notice of opposition in Chinese );
  • l & #8217; notice of opposition being drafted in a non-official language (and if the opponent has his domicile (or his registered office) in one of the Contracting States, or if he is the national of one of these States having his domicile to a foreigner, and that the latter has an official language other than German, English or French), the translation is not provided before the later of the two expires. following deadlines:
    • 1 month after the filing of the notice of opposition;
    • 9 months after the publication of the mention of the issue.

7.3.2. Notification

If the formality officer notices an irregularity (which is not guaranteed, Directives D-IV 1.3.3), and if & #8217; it is still possible to remedy it, the latter notifies the opponent and the & #8217; informs that & #8217; they must be corrected within the deadlines indicated above (in the absence of a deadline, it is necessary to correct it within 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 objector (#8217;R112 (1) EPC) that the opposition is deemed not to have been filed. It is possible to request a decision.

At the end of the 2 months to request this decision, the parties are informed that & #8217; the procedure is 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 causing opposition #8220; inadmissible & #8221;

7.4.1. Inadmissibility from the end of the opposition period

1) Causes of inadmissibility

L & #8217; opposition is declared inadmissible if (R77 (1) EPC) [Group 1]:

  • The filing of the deed is not made in writing to the EPO within the period of 9 months (A99 (1) EPC);
  • The designation of the patent is insufficient (ie impossible to & #8217; unambiguously identify the patent);
  • The extent to which the patent is challenged 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 to the support of a novelty attack (even if it is highly relevant);
  • It is impossible to identify the opponent.
2) Notification

If the formality officer notices an irregularity (which is not guaranteed, Directives D-IV 1.3.3), and if & #8217; it is still possible to remedy it, it notifies the opponent and the & #8217; informs them that & #8217; they must be corrected within the opposition period (#8217;Directives D-IV 1.3.2).

3) Procedure if the opposition is rejected

L & #8217; existence of [Group 1] irregularity at the end of the opposition period will make the objection inadmissible (#8217;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 relates to the facts and evidence) (Directives D-IV 1.4.2).
  • if these irregularities have not been notified to the opponent:
    • l & #8217; formalities officer notifies him and generally gives him 2 months to pronounce (A113 (1) EPC, this does not mean that the opponent can correct them) and indicates to him that the opposition will probably be rejected as inadmissible (Directives D-IV 1.4.2).
    • l & #8217; opponent can then contest the existence of this irregularity;
    • a rejection is pronounced by the formalities officer (or by the opposition division if it relates to the facts and evidence) (Directives D-IV 1.4.2).

The opposition tax is not refunded.

The rejection of the opposition is notified to the holder (R77 (3) EPC).

7.4.2. Inadmissibility that can be corrected within a new deadline

1) Cause of inadmissibility

In addition, 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):

  • l & #8217; incorrect identification of the opponent (ex. problem of form of the R41 (2) (c) EPC, but it is still possible to identify the opponent),
  • the lack of a patent number against which the opposition is filed (Directives D-IV 1.2.2.2 ii)),
  • the lack of title of the invention (#8217; invention)Directives D-IV 1.2.2.2 ii)),
  • failure to identify the patent holder (#8217;Directives D-IV 1.2.2.2 ii))
  • failure to identify the representative (name and address, R41 (2) (d) EPC), if & #8217; there has been one or if & #8217; there must be one (A133 (2) EPC),
  • l & #8217; act of opposition does not meet the formal requirements of the EPC and other than R77 (1) EPC (eg margin problem, not typed, etc. R50 (2) EPC).
2) Notification

If the formality officer notices an irregularity, the latter notifies the opponent and #8217; informs them that they must be corrected within a given period under penalty of rejection (R77 (2) EPC and Directives D-IV 1.3.2).

Obviously, the opponent can himself, even without notification, send his corrections to the EPO (#8217;Directives D-IV 1.3.3), even after the opposition period.

TheA121 EPC or theA122 EPC n & #8217; is not applicable to these time limits.

3) Procedure if the opposition is rejected

At the end of the time limit, and if & #8217; it has not been remedied to the & #8217; irregularity, the & # 1 TP38217; formality agent rejects & #8217; opposition as inadmissible (R77 (2) EPC and Directives D-IV 1.4.2).

The opposition tax is not refunded.

The rejection of the opposition is notified to the holder (R77 (3) EPC).

7.4.3. If the opposition declared declared admissible

Before the opposition is declared admissible or inadmissible, the holder receives the notice of opposition (#8217;R79 (1) EPC).

He can thus contest the possible admissibility of the opposition (Directives D-IV 5.5) specifying the detailed reasons for the alleged inadmissibility.

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 start of the opposition procedure is not a decision of the EPO (#8217;Directives D-IV 5.1).
  • Thus, inadmissibility future (ie during the opposition procedure) is entirely possible (T222 / 85).

If all the oppositions are contested, the opposition division may also choose to make a decision on admissibility, reasoned and subject to appeal, before any opposition procedure, provided that the procedure is not unduly delayed (Directives D-IV 5.5).

In addition, inadmissibility can be decided at the appeal stage (T289 / 91), even though this inadmissibility is raised for the first time at this stage (T522 / 94).

7.4.4. If the opposition declared inadmissible

If an opposition is declared inadmissible, there may be several situations:

  • s & #8217; there is another admissible opposition, and its examination leads directly to a decision rejecting the opposition or revocations or to 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 inadmissible is rendered:

  • 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).

If no opposition is admissible, the opposition division must refrain from commenting on the merits (#8217; opposition)T925 / 91, indirectly from A101 (1) EPC).

When all oppositions are definitively rejected, the opposition procedure ends. The parties are informed (Directives D-IV 4)

Chapter 8. Notification to the Holder of the Opposition

The acts of opposition are notified to the holder (R79 (1) EPC) even if the required translation was not produced (#8217;Directives A-VII 5) and are therefore deemed to have not been produced.

Chapter 9. Infringement of the patent

The opposition division will then analyze the grounds for the & #8217;A100 CBE and request the parties to respond to notifications from the EPO / comments from other parties (A101 (1) EPC).

The opposition may continue even if:

  • the patent is extinguished in all countries: to do this, the opponent must submit a request within 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 may then be prosecution of the procedural office (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

9.1.1. Principle

The opposition division can only examine the claims attacked by the opponents: an examination of the office of claims not attacked is not possible (#8217;G9 / 91).

9.1.2. Dependent claims

Nevertheless, it is considered that the dependent claims can also be viewed even though they would not have been explicitly mentioned in the opposition factum, if there is doubt about their validity (DV 2.1 Guidelines and G9 / 91).

This latter principle seems to be called into question if ever only certain dependent claims are attacked: this behavior seems to be interpreted by the Board of Appeal as a future renunciation of & #8217; attack the other dependent claims (T653 / 02).

9.1.3. Product-by-process

Similarly, it is also considered that & #8217; a claim & #8220;product-by-process& #8221; referring to the process of #8217; an attacked claim may also be attacked, if #8217; there is doubt as to its validity (T525 / 96).

Section 9.2. Reasons raised

9.2.1. Possible reasons

The possible grounds for an opposition are set out in l & #8217;A100 CBE :

  • the object of patent n ° #8217; is not (A100 a) EPC):
  • Patent #8217 does not set out the invention in a manner sufficiently clear and complete for a skilled person to be able to execute it (#8217;A100 b) EPC).
    • this reason actually covers & #8217; insufficient description of & #8217;A83 CBE.
    • the content of the patent specification should be examined in order to make this assessment (DV Guidelines 4) even if & #8217; the text as filed may be used to remedy this insufficient description.
  • 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 granted on the basis of a divisional application, or
      • theA61 (2) EPC together A76 (1) EPC if the patent was granted on the basis of & #8217; a new application filed within the framework of & #8217; an invention previously filed by a person not empowered under & #8217;A61 (1) EPC.

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, invoking only the lack of novelty and #8217; inventive step does not validly invoke the & #8217; invocation of the other grounds of this paragraph (e.g. l & #8217; exclusion from patentability).

9.2.3. Excluded reasons

In particular, may not be used as grounds for opposition:

  • clarity or conciseness (A84 CBE, although this article may be invoked on the amended claims during opposition);
  • the lack of unity of invention (#8217;A82 CBE);
  • the existence of previous 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 (#8217;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);
  • etc.

9.2.4. Vague and insufficiently detailed reasons

These reasons must be detailed in the opposition factum (#8217;R76 (1) EPC): a simple & #8220;the patent is insufficiently described for a person skilled in the art to be able to execute it& #8221; will be inadmissible.

9.2.5. Presentation of several possible attacks related to l & #8217;

Opponents may exhibit multiple inventive step attacks using each document cited as the closest state of the art document.

In practice, after determining the "trueAs the most recent document of the state of the art, 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. Reasons raised ex officio by the Opposition Division

The opposition division n & #8217; is:

  • nor required to examine all possible grounds for opposition (#8217;G10 / 91);
  • nor bound to be limited to the only grounds raised by the parties: the opposition division may, if they seem prima facie relevant, lift it from the office (#8217;A114 (1) EPC and R81 (1) EPC).

These reasons raised from office may arise (DV 2.2 Guidelines):

  • of the research report,
  • of the examination procedure,
  • personal knowledge of the examiner,
  • d & #8217; observations made by third parties (A115 EPC).
    • whether third party observations can be normally anonymous (& #8220;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, 418, article 2 and & #8220;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 appear to be the case in ex-partes proceedings, such as the opposition (T146 / 07), since this anonymity could constitute an abusive circumvention of the opposition procedure (e.g. it could allow an opponent to file a late, but relevant document). Thus, it would be necessary to sign these observations in accordance with R50 (3) EPC and R86 EPC in order to allow the EPO #8217 that the third party is not a party to the proceedings.

New grounds for opposition may only be taken into consideration at the appeal stage with the agreement of the holder (#8217;G10 / 91).

Section 9.4. Burden of proof

D & #8217; in general, each party bears the burden of proof of the facts which it alleges. In addition, if one party provides convincing evidence, the burden of proof will then be shifted to the other party (#8217;T270 / 90).

It may happen that #8217; an opponent provides evidence, or states a relevant fact (DV 2.2 Guidelines):

  • if an allegation seems plausible and if it is not disputed, it may be taken into account without further evidence;
  • if an allegation is disputed or is not plausible, the party alleging it must prove it.

D & #8217; in general, the division must make its decision by determining what is most likely (balance of probabilities, T270 / 90, E-IV 4.3 Guidelines)

Nevertheless, stronger evidence is needed if:

  • l & #8217; opponent invokes:
    • previous use (T472 / 92, incontestable proof) unless this use is invoked by a third party (T12 / 00);
    • oral disclosure (incontestable evidence, the testimony of a single person not suspected of lying is not sufficient T1210 / 05).
  • the incumbent argues that:
    • the invention can be carried out, but the division of the opposition doubts it (demonstration of the plausible character, 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 division of the opposition doubts it (T97 / 00).

Chapter 10. Notifications, observations and modifications of the patent

Section 10.1. Notification of the Act of Opposition

10.1.1. Principle

L & #8217; Formalities Officer notifies the act of opposition:

10.1.2. Observations and possible modifications on the part of the holder

Upon notification of the notice of opposition to the holder, the latter is invited to submit their comments and modifications within a specified period (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 of the time allowed to correct minor irregularities in the R77 (2) EPC (“The opposition procedure to the EPO #8217;” , 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 penalty if no response is made within the time limits (G1 / 90).

Thus, neither l & #8217;A121 EPC neither l & #8217;A122 EPC n & #8217; is applicable to the time limit, because no loss of rights is n & #8217; is incurred.

However, the opposition division may disregard comments provided too late (A114 (2) EPC, E-VIII 1.8 Directives).

Any modifications presented serve as a basis for the opposition (in application A113 (2) EPC, Directives D-VI 2.1).

10.1.3. Notifications to other opponents

These notifications (R79 (2) EPC) do not invite opponents to submit observations and do not give any time limit (Directives D-IV 5.2).

Section 10.2. Notification of the Act of #8217;

There is no obligation here on the part of the EPO (#8217;R79 (4) EPC). At its discretion:

  • the opposition division does nothing, or
  • the opposition division acts as if the act 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 time limit (if the opposition division finds it relevant and requests it, R79 (3) EPC, ex. changes are produced without & #8217; oral proceedings are required, & #8220;The opposition procedure to the EPO #8217;” , OG 2001, 148 §2.2.2): most often, this delay is 4 months (Guidelines D-IV 5.4).

There is no penalty if no response is made within the time limits (G1 / 90).

Thus, neither l & #8217;A121 EPC neither l & #8217;A122 EPC n & #8217; is applicable to the time limit, because no loss of rights is n & #8217; is incurred.

However, the opposition division may disregard comments provided too late (A114 (2) EPC, E-VIII 1.8 Directives).

Section 10.4. Other notices addressed to parties

D & #8217; in general, the parties are invited as often as necessary to submit their comments on the notifications addressed to them (A101 (1) EPC) within a specified period (R81 (2) EPC, often 4 months, Guidelines D-IV 5.4).

L & #8217; possible response to a notification is, in turn, notified to all other parties (R81 (2) EPC).

Notifications addressed to the holder according to A101 (1) EPC always contain an invitation to modify his request (Directives D-VI 4.2).

There is no penalty if no response is made within the time limits (G1 / 90). Thus, neither l & #8217;A121 EPC neither l & #8217;A122 EPC n & #8217; is applicable to the time limit, because no loss of rights is n & #8217; is incurred.

However, the opposition division may disregard comments provided too late (A114 (2) EPC, E-VIII 1.8 Directives).

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 & #8217; they relate only to matters not affecting all parties.

Section 10.6. Opinion of the Opposition Division & PT38217;

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 grounds which would oppose the maintenance of the European patent (#8217;R81 (3) EPC).

Motivation is not necessary for questions of form or for self-evident proposals (Directives D-VI 4.1).

The opposition division may carry out a search for new documents in certain exceptional cases (eg highlighting a characteristic which was completely secondary previously, D-VI Guidelines 5).

Section 10.7. General eligibility of changes

10.7.1. Principle

A modification is only admissible if it is inspired by a reason for opposition (#8217;R80 EPC):

  • invoked;
  • 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 due to an admissible modification (H-II 3.2 Guidelines).

It is not possible to add claims (#8217;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 l & #8217;A123 (2) EPC which has never been presented previously whereas the holder simply combines two claims (T128 / 13).

10.7.3. Aiming to avoid national rights

It is possible to submit amendments to avoid problems with previous national rights (A123 (1) EPC together R80 EPC together A138 EPC together A139 (2) EPC).

10.7.4. Subsidiary queries

Submission of auxiliary requests is possible (Directives D-VI 7.2.2), but this must remain reasonable (T907 / 91).

To do this, the holder will have to indicate the order of preference of his requests.

The opposition division examines in order these sets of claims (main then subsidiary, Directives D-VI 7.2.2) and if one of the games seems patentable, the opposition division l & #8217; indicates (T234 / 86) and specifies the reasons why the previous games were not considered patentable (Guidelines H-III 3.4.1).

10.7.5. Clarity

Changes made during opposition #8217; must be clear (A101 (3) EPC together A84 CBE) even if this is not a reason for opposition (#8217;T301 / 87).

However, it is not possible to have an extensive interpretation of the & #8217;A101 (3) EPC : the objections of clarity must have their origin in the modifications made (G3 / 14).

Typically, it is not possible to examine the clarity of the claims if they result from an incorporation of whole dependent claims in an independent claim or from a whole alternative contained in a dependent claim in an independent claim (#8217;G3 / 14 or T260 / 13).

In other cases (e.g. the dependent claim contains several interrelated features, and 1 & # 388177; 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).

10.7.6. Non-unit

It is not possible to attack changes for problems of non-unit (G1 / 91).

Indeed, although the unit of invention is a substantive condition within the meaning of the EPC, it is in fact only a simple provision of administrative order and its main objective is to prevent applicants from abusing the procedure and pays only #8217; a very small number of fees to the EPO (search fees, filing fees, #8217; Examination,…) (DV 2.2 Guidelines).

10.7.7. Several independent claims of the same type

The provisions of the R43 (2) EPC also not applicable to modifications (analogy of non-unity, T263 / 05).

10.7.8. Extension of the scope of the patent

This prohibition is based on l & #8217;A123 (3) EPC.

To find out if an extension of the scope has been introduced, it is necessary to ask whether an object was & #8220;Non-infringing& #8221; in the initial game and suddenly became & #8220;forger& #8221; in the modified game.

Once this great principle is explained, there are some more complex cases. Thus, & #8217; has not been deemed to extend the scope of & #8217; a patent:

  • a reintroduction during the opposition procedure of definitions deleted during the Examination (#8217; opposition)T1481 / 05);
  • the change of category of & #8217; a claim of & #8220; product & #8221; to & #8220; use & #8221; (G2 / 88).

Section 10.8. Accelerated opposition procedure #8217

10.8.1. Counterfeit action

If an infringement action has been brought before a national court, it is possible for a party to submit a request for accelerated processing (Press release from the EPO dated 17 March 2008, OG 2008, 221point 1).

This request can be filed at any time.

It must be in writing and be reasoned.

L & #8217; EPO then does its best to carry out the next pleading (the deadline expiring at the latest being retained) (& #8220;Communiqué from the European Patent Office, dated March 17, 2008, relating to the accelerated processing of oppositions when 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 the reception of the holder's response to the notice of opposition.

This acceleration will also be carried out if a competent court or administration notifies the & #8217; EPO that & #8217; an infringement action is pending (& #8220;Communiqué from the European Patent Office, dated March 17, 2008, relating to the accelerated processing of oppositions when an action for infringement has been initiated” , OG 2008, 221point 2).

The cooperation of the parties is essential (& #8220;Communiqué from the European Patent Office, dated March 17, 2008, relating to the accelerated processing of oppositions when 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 clearly exceeded the average duration;
  • the length of the opposition proceedings clearly exceeded the average length;
  • d & #8217; other cases (eg divisional) depend on the outcome of the opposition;
  • The next phase of the exam requires only a relatively short time.

(modified on 12/22/2019)

Chapter 11. Late nature

(modified on 12/22/2019)

Section 11.1. Principle

D & #8217; generally, and especially in an opposition procedure, the contradictory is desirable. Therefore, the belatedness of & #8217; information is often seen in a & #8220; suspicious & #8221; and its admissibility in the context of the opposition is often debated.

(modified on 12/22/2019)

Section 11.2. Late reasons

(modified on 12/22/2019)

11.2.1. Principle

A reason not present in the notice of opposition is a new reason (#8217; act of opposition)G1 / 95, 5.3) : “a ground for opposition which has not been raised and developed in the notice of opposition, nor introduced into the procedure by the division of opposition acting under Article 114 (1) EPC

By way of illustration, if the act of opposition only mentions a lack of novelty, the absence of an industrial character is a new reason if it is invoked later in the procedure.

11.2.2. Acceptance of a new reason

If a new motif is presented (even tardily), the opposition division must analyze it (#8217; opposition)T736 / 95) and l & #8217; accept s & #8217; it seems prima facie relevant to the patentability of the patent (DV 2.2 Guidelines).

New grounds for opposition may only be taken into consideration at the appeal stage with the agreement of the holder (#8217;G10 / 91) except :

  • s & #8217; they were examined ex officio by the opposition division & #8217;T309 / 92).
  • s & #8217; they were presented at the opposition stage and refused (A114 (2) EPC) wrongly (T986 / 93).
    • It is also worth noting a decision to the contrary (T1286 / 14) which specifies that the Board of Appeal can only verify whether the Opposition Division has examined the prima facie relevance of the new ground. 

11.2.3. exceptions

However, if the defect in & #8217;inventive activity with document D1 as the closest prior art, it is possible, although this has not been raised, to attack the patent for lack of novelty has been raised in relation to D1 (G7 / 95).

On the other hand, if a novelty attack is carried out at the same time as an inventive activity attack, it is normal for the defect of inventive activity do not be motivated (as this often amounts to contradicting each other). In this case, the absence of inventive step can be examined without this being considered as a new reason (T131 / 01).

Section 11.3. Late facts (eg publications) and evidence

(modified on 12/22/2019)

11.3.1. At the opposition stage

New facts and evidence may be produced until #8217; until the date of delivery of the decision to the internal mail service (if written procedure) or until #8217; until the decision is pronounced (oral procedure) (E-VI Guidelines 2).

The documents cited in the Examination procedure or in the request do not automatically form 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 described in the description (T536 / 88).

These facts and evidence can only be admitted on an exceptional basis, if there is 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 & #8217; they are not prima facie relevant :

  • if the applicant combines two claims, but the patent contains a large number of claims, the opponent n & #8217; having been unable 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 & #8220; irrelevancy & #8221; prior art refused if these are filed late (T156 / 84).

11.3.2. At the opposition appeal stage

Likewise, the admission of new means is subject to the assessment of the board: they are only admissible if they appear to At first sight eminently relevant.

The arguments of the holder who will probably oppose this admission must be taken into account (T1002 / 92 and G9 / 91).

However, the new means must not go beyond the limits (identical or very similar) of the dispute defined in opposition (A114 (2) EPC and A111 (1) EPC).

If the document is eminently relevant, the Board of Appeal should normally refer it to the first instance so as not to deprive the holder of a remedy, unless such reference seems unwarranted (T258 / 84 and T273 / 84).

Section 11.4. Late arguments

(modified on 12/22/2019)

The new arguments presented in support of the facts set out above must always to be taken into consideration (T131 / 01, E-VI Guidelines 2), even if in the end they are dismissed for irrelevance.

A late argument is then submitted to the & #8220;prima facie relevance& #8221; , ie it is acceptable if, at first glance, patentability is questioned by thinking 10 minutes (G 10/91 and DV 2.2 Guidelines).

A new argument is not a new reason (e.g. introduction of #8217; an attack under A100 c) EPC when this motif was not present in the act of opposition), but may be a new angle of attack (#8217; act of opposition)T395 / 00).

Section 11.5. Late requests

(modified on 12/22/2019)

A request (eg new set of amended claims) may be considered late if, for example, it is presented during oral proceedings before the Opposition Division when the holder had already had numerous opportunities to submit new requests.

(modified on 12/22/2019)

However, the discretion of the opposition division is not without limits.

(modified on 12/22/2019)

Indeed, if it is obvious that the requests are convergent and try to overcome in good faith the objections of the division or of the opponent, without being considered as an attempt to unduly prolong the proceedings, then the request must be accepted (T368 / 16).

(modified on 12/22/2019)

This request can, for example, be motivated by a new document or a new argument from the opponent.

(modified on 12/22/2019)

In any case, it is necessary that these late modifications born are not, prima facie, no admissible (e.g. violation ofA123 (2) EPC evident E-VI 2.1 Guidelines).

(modified on 12/22/2019)

Chapter 12. Decision of the opposition division

The decision of the division of #8217; Examination can only be based on a text proposed or validated by the applicant (A113 (2) EPC).

Three types of decisions can be made in this case.

Section 12.1. Revocation

The revocation takes effect retroactively from the outset (ie ex tunc, A68 CBE).

12.1.1. For background reasons

The opposition division may revoke:

A notification is sent to the holder (R81 (3) EPC, last sentence) and details the reasons for this revocation. A copy is sent to the opponents (R81 (2) EPC).

12.1.2. At the initiative of the holder

In the event that the revocation is requested by the holder himself (Directives D-VIII 1.2.5 and T237 / 86), no substantive examination is carried out.

If the owner submits a request for abandonment of the patent or for renunciation of the patent, this request shall be interpreted as a request for revocation (Directives D-VIII 1.2.5).

S & #8217; there is a possible ambiguity, the requester is asked to specify.

The opposition proceedings are then closed.

12.1.3. For other reasons

Revocation can also occur if:

Section 12.2. 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 is subject to appeal by the opponent (#8217; opposition).A106 (1) EPC).

Section 12.3. Maintenance of patent in modified form

The opposition division may also, if the holder agrees (#8217;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).

12.3.1. Proposal to maintain in an amended form

If the & #8217; EPO wishes to make & #8220; essential editorial changes & #8221; , the opposition division may notify the parties of a 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 months, the holder (respectively l & #8217; opponent) objects to this text and if relevant changes are made (relevant arguments are raised), the review may be resumed (Directives D-VI 7.2.1).

This notification according to the R82 (1) EPC n & #8217; 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 during the opposition proceedings” , OJ 1989, 393, point 1.2) if:

  • the holder has already given his consent, and
  • the opponent had the opportunity to express their views on these modifications.

Note that if the holder does not express an opinion on these modifications during the oral procedure or declares that he does not want to express an opinion, this does not mean that he has given an implicit agreement (T861 / 16).

12.3.2. Intermediate decision

If the opposition division considers that the patent can be maintained on the basis of the text accepted by the holder and if the opponent has had sufficient opportunity to decide on this text, the opposition division renders a 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 during the 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 c & #8217; is the holder who proposed the text;
  • the holder's non-response to the EPO's proposal.

An independent remedy is provided for under l & #8217;A106 (2) EPC (even if the opponent has given his agreement to the proposed version or that he has not pronounced on it, & #8220;Notice from the European Patent Office dated 14 July 1989 concerning the application of Rule 58 (4) EPC during the 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 defect could be raised. The owner can then appeal against this decision by contesting the inadmissibility of the previous requests.

The purpose of the interim decision is to prevent the holder from unnecessary translation costs that would result in a possible modification of the text in the event of an appeal.

If no appeal is filed under 2 months (A108 EPC), the intermediate decision becomes final (Directives D-VI 7.2.2).

12.3.3. Provision of translations and payment of fees

Once the decision becomes final (T89 / 90 and Directives D-VI 7.2.3), the holder is invited (R82 (2) EPC), under 3 months :

  • to provide the various translations of the claims in the official languages of the EPO
  • to pay the taxes of #8217; printing of 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 holder, the opposition division notifies the holder and this notification starts a new period of 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.

TheA122 EPC is applicable to both periods (G1 / 90 and Directives E-VIII 3.1.1).

12.3.4. 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 is of course subject to appeal, but only with regard to points not noted in the interim decision. Indeed, if the intermediate decision is not subject to any appeal, the finding that it contains becomes final (Directives D-VI 7.2.2).

The opposition proceedings are closed when the final decision is made (regardless of when it becomes final, G4 / 91).

12.3.5. Publication of the new patent specification

L & #8217; EPO publishes, as soon as possible (if possible with the mention of the decision of the R82 (4) EPC), the new patent specification (A103 EPC).

The new booklet includes (R87 EPC):

  • the description,
  • the revendications,
  • the drawings.

A new patent certificate is issued (R87 EPC together R74 EPC) under the same conditions as for the issue.

12.3.6. summary

Because this is never as clear as #8217; with a diagram…

Chapter 13. Allocation of costs

Section 13.1. Parties to the proceedings

In principle, each party pays the costs it incurred (#8217;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 hypothesis, 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 relating to the apportionment of costs.

As an illustration, an opponent had to pay the full costs and fees of the holder's representative, because the opponent had not come to the oral proceedings and had not even responded to the notifications. The opponent came from Japan for the opposition's oral proceedings (#8217;T930 / 92).

Section 13.2. Third parties to the procedure

Regarding third parties (witnesses, experts, etc.), their expenses are reimbursed (R122 (2) EPC), whether they were cited by the EPO or even by a party to the proceedings.

These costs are divided between the parties according to equity (D-IX Directives 1.3).

Section 13.3. Allocation and setting of costs

13.3.1. Possible cases

A breakdown of the costs is possible in the event that equity #8217 requires (modification of the formulation of #8217;A104 EPC, A104 CBE73).

13.3.2. Behaviors that can cause a breakdown

A distribution of the costs is possible when the behaviors are incompatible with the vigilance which it is advisable to show when & #8217; It is & #8217; it is a question of safeguarding rights (D-IX Directives 1.4).

C & #8217; is notably the case (D-IX Directives 1.4):

  • in case of negligence;
  • in case of bad faith;
  • in the event of the use of inappropriate means and arguments #8217;
  • in case of extension of time (A16 (1) RPCR);
  • in the event of an act or omission which has prejudiced or contributed to delay the oral procedure (A16 (1) RPCR);
  • in the event of renunciation of the patent only shortly before the oral proceedings when the revocation of the patent had been evident for a long time owing to a document produced;
  • in the event of a late citation of #8217; a state of the art of which it is proven that #8217; he had prior knowledge of it, the oral procedure s & #8217; finding it delayed (T117 / 86);
  • in case of invocation of relevant facts or evidence late and without valid reason (T867 / 92);
  • in the event of non-appearance at the oral proceedings without notifying the EPO in advance (T930 / 92 and T212 / 07) or only one day in advance (T937 / 04);
    • conversely, some Board of Appeal considers that participation in oral proceedings is not compulsory for the parties: if a late announcement of & #8217; a planned absence from the oral proceedings may constitute & #8220;faulty action of irresponsible or even malicious nature& #8221; , it would be necessary to require solid evidence to support such an allegation (#8217;T1079 / 07 or T383 / 13 or T1699 / 15).
  • in case of abuse of process (A16 (1) RPCR).

13.3.3. Costs 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;
  • the costs of #8217; expert opinions;
  • 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);
  • etc.

Unnecessary or irrelevant expenses should not be taken into account (D-IX Directives 1.3).

13.3.4. Procedure

1) 1st step: decision to allocate costs

In the decision of the opposition, the opposition division may prescribe (possibly from office, 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 this case, the opposition division must necessarily rule on this point in the reasons for its decision (D-IX 1.2 guidelines).

2) Remedies on the cost allocation decision

The appeal against this decision is open during 2 months from the service of the decision (A106 (1) EPC and A108 EPC).

The decision to apportion costs n & #8217; is not subject to appeal if it is the only object of the appeal (A106 (3) EPC together R97 (1) EPC).

If the other party appeals against the decision (but not particularly against the apportionment of costs), this does not mean that the apportionment 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).

L & #8217; formalities officer (by delegation from the opposition division, R11 (3) EPC andDecision 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). This is not a decision.

This fixation is deemed to be enforceable in the different member states at the end of #8217; 1 month from the notification and if no decision has been requested (A104 (3) EPC, you must understand & #8220; decision & #8221; as covering & #8220; setting costs & #8221; in that 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.

Therefore, the Examining Division decides on the setting of costs without oral proceedings (R88 (4) EPC) and then make a decision (R88 (3) EPC).

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

An appeal seeking fixation costs of the opposition proceedings will only be accepted if the amount at stake is greater than that of the appeal fee (A106 (3) EPC together R97 (2) EPC).

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 is applicable here (T668 / 99).

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