European Patent Oppositions And Appeals

The opposition process is one of the most significant features of the European patent system. Within nine months of the date of grant of a European patent, it is possible for a third party to lodge a notice of opposition. The notice of opposition must be accompanied by a detailed statement of all the facts, evidence and arguments on which the opposition is based.

The notice of opposition is considered by a tribunal of three examiners, known as the Opposition Division , made up of the primary examiner of the Examining Division responsible for the pre-grant examination of the patent application and two other examiners not previously involved with the case. The opposition is transmitted to the patent proprietor, who is given an opportunity to respond. The response may involve amendment of the claims of the patent, and it is critical that any amendment does not broaden the scope of the patent in any way, i.e. the scope of the claims may only be reduced after grant, and not widened.

It is customary for the parties to request oral proceedings if the Opposition Division does not intend to decide in their favour. Oral proceedings take place at the EPO’s offices, either in Munich or The Hague. Almost all oral proceedings are completed within one day, and the decision is announced at the conclusion of the hearing. The formal written decision, with detailed reasons, is issued some time later (sometimes several months later).

Once the written decision has been issued, a party adversely affected by it may file an appeal within two months. The appeal is considered by one of the EPO’s Boards of Appeal, which constitute the judicial arm of the EPO and are completely independent of the Examining and Opposition Divisions. The appeal procedure is effectively a judicial review of the previous procedure, and usually follows a similar course to opposition proceedings, i.e. written submissions by both parties, followed by oral proceedings, with the final decision being issued at the conclusion of the hearing.

Typical timescales are 2-3 years from the lodging of an opposition to the issuance of the first instance decision of the Opposition Division after oral proceedings, and a similar period for the completion of appeal proceedings.