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1 June 2017

Nearly one year on – the new EPO opposition procedure

At the beginning of July 2016, the EPO introduced a new streamlined opposition procedure that is intended to simplify the opposition procedure and deliver decisions faster.

Under the streamlined procedure, the EPO hopes to cut the overall duration of “straightforward” opposition cases from up to 27 months (as is currently the case) to approximately 15 months. More complicated cases invariably take much longer.

The changes are part of the EPO’s Early Certainty initiative.

It is too early to know how big an effect the new procedure will ultimately have on the EPO’s opposition process but the new procedure has now been in place for nearly a year and many oppositions are now directly affected by the new procedure. This seemed an appropriate time to remind our readers of the most significant changes.

The emphasis of the new procedure is to accelerate oppositions. Under the new procedure, the time limit for the Proprietor to respond (4 months) to the opposition(s) is applied more strictly. Any requests for extension of time should only be granted by the EPO in exceptional circumstances and must be accompanied by a substantiated request, and the EPO does appear to be adopting a much stricter attitude to extensions of time.

Another change means that the EPO now allocates each file to the relevant Opposition Division on receipt of the opposition whereas in the past the file was allocated only after the Proprietor’s reply. This may seem an insignificant internal procedural matter. However, now when the Proprietor replies, the Opposition Division is already in place and assigned to the file and the next step can therefore be rapid. In fact, it is understood that the EPO sets an internal 3 month time limit for the Opposition Division to initiate the next step. This next step can be revocation of the patent or maintenance of the patent (if oral proceedings have not been requested by the adversely affected party) or summons to oral proceedings. Therefore, in straightforward cases, after only 7-8 months from the expiry of the opposition procedure, the parties should not be surprised if they receive a summons to attend oral proceedings.

At the same time as shortening the overall length of time, the new procedure also allows the parties more time from being summoned to oral proceedings to the actual date of the oral proceedings itself. The summons should now provide at least 4 months for filing final submissions in advance of the oral proceedings and a further 2 months until the oral proceedings, i.e. a minimum of 6 months from date of summons to the date of oral proceedings. In addition, the annex to the EPO’s summons to oral proceedings should now be comprehensive in setting out the position of the Opposition Division. It should not merely summarise the issues for discussion.

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