Notice from EPO President: Acceleration of EPO Oppositions and Appeals
European Patents
The European Patent Convention provides for the central examination and grant of patents, which can have effect in up to 44 nations, including the EU member states, the UK and beyond. European patents granted by the European Patent Office must be validated in the territories of interest and are subsequently maintained and enforced in each of those territories.
What is an EPO Opposition, and why would I file one?
To avoid patent infringement litigation or payment of license fees, parties may choose to challenge the validity of a granted European patent. A successful validity challenge can result in revocation of the patent, clearing the way for any party to use without charge the invention disclosed in the revoked patent. To challenge a European patent in each of the validated territories individually can be costly and complex.
The EPO opposition procedure provides a simplified, relatively low-cost alternative to multi-national litigation. Within a limited time frame of 9 months immediately after the grant of a European patent, an Opponent can make a validity challenge centrally at the EPO. This challenge has the potential to simultaneously revoke the patent across all validated territories in one proceeding. Instead of requiring the appointment of locally qualified legal representation in each of multiple territories, an Opponent can instruct their own European Patent Attorney to represent them in EPO opposition proceedings. The attorney can serve as their advocate in a court-like hearing where the Opposition Division makes the final decision. These representation rights of European Patent Attorneys also extend to Appeals to decisions made by the Opposition Division.
Sometimes, patent owners are eager to initiate infringement proceedings promptly after their patent is granted. In Europe, these proceedings can only occur in a national court or through the newly established Unified Patents Court (UPC). However, the latter option is exclusive to patentees who have not opted out of the UPC. An effective defense against a patent infringement claim is to contest the patent’s validity. The EPO opposition procedure provides an efficient and cost-effective means to accomplish this.
Recent change in EPO procedure
If an allegation of patent infringement against the Opponent prompts an Opposition, the parties can be engaged in two parallel sets of proceedings. Obtaining relief for infringement proceedings, such as an injunction or order for damages, will always be a priority for a patent owner before any final decision is reached on the validity of the patent. Consequently, the alleged infringer may be at a disadvantage if there is a delay in deciding the patent validity challenge. Typical Opposition proceedings take around 15 months from filing to decision and proceedings do not commence until the end of the opposition period, this can mean a period of 24 months from grant of the patent to issuance of a decision of the Opposition Division, this may be longer than it takes for parallel infringement proceedings to conclude.
In a notice dated 7th November 2023, EPO President Antonio Campinos acknowledges the disadvantage to Opponents caused by delays in concluding proceedings at the EPO. He expresses the EPO’s intention to expedite these proceedings, including Appeal proceedings resulting from Opposition decisions. This is anticipated to enhance legal certainty for both those accused of patent infringement and patentees. The goal is to achieve a faster resolution of such disputes.
Our Expertise
Our European Patent Attorneys have experience in representing clients in European Patent Oppositions and Appeals. They handle cases on behalf of the Patentee or Opponent. We have registered to represent clients in the Unified Patents Court. As UK Patent Attorneys, we hold litigation rights to represent clients before the UK Intellectual Property Enterprise Court. Additionally, our extensive network of experienced associates well position us. We can support clients in high-value and multi-national patent infringement and validity disputes.
We’re more than happy to assist and support you with some further advice on novelty or inventive step. Please get in touch.
