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The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public (no commercial or other interest whatsoever need be shown). This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

The opposition can only be based on grounds mentioned in Article 100 EPC, i.e. on the grounds that the subject-matter of the patent is not patentable, on the grounds that the invention is not sufficiently described to allow a person skilled in the art to carry it out, or on the grounds that the content of the patent extends beyond the content of the application as filed.

The notice of opposition must be filed in writing at the EPO (either at Munich, The Hague or Berlin) within nine months from the publication of the mention of the grant of the European patent, along with the payment of an opposition fee. Opposition divisions of the EPO are then responsible for the opposition procedure. The opposition procedure may involve multiple opponents. According to the EPO, a European patent was once opposed by a record number of 27 opponents.

Rationale

The purpose of the opposition proceedings is to give opponents the opportunity to challenge the validity of a granted European patent.

Filing and admissibility

Before starting the substantive examination of the opposition, the Opposition Division examines whether the opposition must be considered as filed ("Is there an opposition?") and whether it is admissible ("Is the opposition admissible?"). The Opposition Division may find that the opposition is not deemed to have been filed, for instance because the opposition fee has not been paid within the nine-month opposition period, because the notice of opposition is not signed or because the notice is not in an accepted language.

In order for an opposition to be admissible it must meet the provisions of

• Article 99(1) EPC, i.e.
  • a notice of opposition must be filed within nine months from the publication of the mention of grant of the European patent by a natural or legal person, and
  • the notice must be filed in the form of a written reasoned statement, and
• Rule 76(1)(c) EPC, i.e. the extent and grounds of the opposition must be contained in the notice, as well as an indication of facts, evidence and arguments to support the grounds.

In addition, an opposition is also rejected as inadmissible if it fails to meet the requirements of Rule 76(1)(a), (b) and (d) EPC after the opponent was invited to remedy to these failures within a given time limit. If the opposition is not admissible, the opposition is rejected under Rule 77(1) or (2) EPC.

Inadmissible oppositions and oppositions which are deemed not to have been filed are not substantively examined.

Substantive examination

If the opposition is admissible, the grounds for opposition are examined as to their merits. The patent proprietor has also the opportunity to reply to the grounds of opposition developed by the opponent. Arguments and, to a certain extent, amendments may be filed in reply by the patent proprietor.

In view of the grounds of opposition, and in view for instance of a prior art document introduced into the proceedings by the opponent, the patent proprietor may amend the patent, i.e. the description, claims and drawings of the patent. The patent proprietor is master of its own patent in that the decision to amend or not, and how to amend the patent, is a decision of the patent proprietor alone (although the Opposition Division or the opponent may apply pressure to have amendments made). The patent, however, may not be amended in such a manner that the amendment would lead to an extension of the protection conferred by the patent.

If amendments are made to the patent during the opposition proceedings, the patent (and the invention to which it relates) must meet the requirements of the EPC. These requirements notably include the requirements of support in the description and clarity (Article 84 EPC), even though those are not listed as grounds of opposition in Article 100 EPC. However, the requirements to be met by the amended patent do not include the requirement of unity of invention (because divisionals cannot be filed after grant).

During the opposition, oral proceedings may take place at the request of the EPO or at the request of any party to the proceedings, i.e. the patentee or an opponent. The oral proceedings are held before the Opposition Division itself. They are held in Munich, the Hague or Berlin, and are public unless very particular circumstances apply. This contrasts with oral proceedings held before an Examining Division, which are not public. The list of public oral proceedings in opposition before the EPO is available on its web site. The right to oral proceedings is a specific and codified part of the procedural right to be heard. A decision is often taken at the end of the oral proceedings.

Issue and effects of the opposition

After the end of the opposition proceedings, the patent is either

• maintained as granted, that is, the opposition is rejected (or considered inadmissible);
• maintained in an amended form. In this case, a new patent specification is published; or
• revoked.

The opposition has effect on all designated states in the European patent. Decisions by Opposition Divisions, like any other final decisions of first instance divisions, are appealable.

A decision of the EPO to revoke a European patent is final (when the opportunity to appeal before the EPO is exhausted). In contrast, a decision of the EPO not to revoke a European patent (the decision instead maintaining the patent as granted or in an amended form) leaves the way open for revocation by the national court. The EPO decision does not create an estoppel precluding a subsequent challenge by an unsuccessful opponent at the national level (at least before the English courts). The validity of a European patent can be scrutinised both at the national level, before a national court, and at the international level, before the European Patent Office during opposition. The same is not true for infringement proceedings, upon which national courts exercise exclusive jurisdiction.

Apportionment of costs

Each party to the opposition proceedings normally bears the costs it has incurred, unless the Opposition Division (or, in appeal proceedings, the Board of Appeal under Rule 100(1) EPC), for reasons of equity, orders a different apportionment of costs. For example, in case T 1306/05, a highly relevant document had been lately filed, without any valid justification, by the opponent during the oral proceedings before the Board of Appeal, thus rendering useless both the oral proceedings and the patent proprietor preparation thereto. A different apportionment of costs has been ordered by the Board of Appeal. The patent proprietor has requested about €26,000 to be paid by the opponent.

A decision on apportionment of costs forms part of the main decision, such as the main decision of the Opposition Division. The main decision however only deals with the obligation on the party or parties concerned to bear costs. The actual amounts to be paid by one party to another are dealt with in another decision, namely a decision on the award of costs. A decision on the award of costs is taken only after a decision apportioning the costs has been taken and if a request is submitted to that effect.

Transfer of opponent status

This section needs expansion. You can help by adding to it. (June 2008)

The opponent status cannot be freely transferred. As far as legal persons are concerned, the opposition can only be transferred or assigned to a third party together with the business assets belonging to a company, i.e. its economic activity, and more precisely the assets in the interests of which the opposition was filed.

Intervention of a third party

Under Article 105 EPC, any third party may intervene in opposition proceedings after the opposition period has expired, if the third party proves that "(a) proceedings for infringement of the same patent have been instituted against him, or (b) following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for a ruling that he is not infringing the patent." The admissibility of an intervention is subject to conditions. The so-called notice of intervention must notably be filed within three months of the date on which proceedings referred to in Article 105 are instituted. An admissible intervention is treated as an opposition.

The possibility to intervene not only exists during pending opposition proceedings before an Opposition Division (i.e., during the first instance proceedings), but also during subsequent pending appeal proceedings before a Board of Appeal (i.e., during the second instance proceedings).

Statistics

Overall, about 6% of the European patents granted by the European Patent Office are opposed. Of those, about 1/3 are revoked, 1/3 are maintained in an amended form, which generally means "reduced in scope", and 1/3 are maintained as granted, that is, the opposition is rejected. The opposition rate (i.e. the number of oppositions filed per 100 granted patents) before the EPO is consistently higher in the closest available proxy for the pharmaceutical sector than it is in organic chemistry and in all sectors (overall EPO average).

Parallel national proceedings

The "possibility of parallel validity proceedings in national courts and in the EPO is inherent in the legal arrangements in the EPC under which the EPO was established". If a third party files an opposition to a European patent with the EPO and also, in parallel, initiates a revocation action (also called "nullity action" or "validity proceedings") against the same patent before a national court, the national court (at least in England) may exercise its discretion to either

• stay the national proceedings, in order to wait the outcome of the EPO opposition proceedings, or
• allow the revocation proceedings to go ahead, without waiting the outcome of the EPO proceedings.

References and notes

1. "Proceedings at this level are called "administrative" rather than "judicial" though it is difficult to see why – after all the opposition division is deciding a dispute between rival parties." in Jacob LJ, Unilin Beheer BV v Berry Floor NV & Ors EWCA Civ 364 (25 April 2007).
2. "The function of Article 100 EPC is to provide, within the framework of the EPC, a limited number of legal bases, ie a limited number of objections on which an opposition can be based." in G 1/95 (19 July 1996), reasons 4.1.
3. European Commission Pharmaceutical Sector Inquiry, Preliminary Report - 28 November 2008, Comments from the EPO, 10.03.2009 (Final), page 5.
4. G9/93, 6 July 1994, Reasons, point 3.
5. Rule 3 EPC
6. Rule 76(1)(c) EPC (formerly Rule 55(c) EPC 1973)
7. Rule 76(1)(a), (b) and (d) EPC (formerly Rule 55(a), (b) and (d) EPC 1973)
8. Rule 77(1) or (2) EPC (formerly Rule 56(1) or (2) EPC 1973)
9. Article 101(1) EPC
10. ^ Rule 80 EPC
11. EPO Board of Appeal decision T 1099/06, Reasons 6.
12. Article 123(3) EPC
13. Article 101(3) EPC
14. See also decision T 936/04 of 24 April 2008 on whether the double patenting prohibition can be raised in opposition proceedings: "It is within the discretion of the instances of the EPO to raise the objection in opposition or opposition appeal proceedings against proposed amended claims, but this should be done only in clear cases" (catchword 1).
15. Enlarged Board of Appeal decision G 1/91 of 9 December 1991. The reference to Article 102(3) in the decision is a reference to Article 102(3) EPC 1973, corresponding to Article 101(3)(a) EPC (of the revised text of the Convention, the so-called EPC 2000).
16. Article 116(1) EPC
17. Article 19(2)(fourth sentence) EPC
18. Article 116(4) EPC
19. Article 116(3) EPC
20. EPO web site, Oral proceedings calendar. Consulted on April 30, 2008.
21. "The right to oral proceedings according to Article 116 EPC is a specific and codified part of the procedural right to be heard according to Article 113(1) EPC." in Decision T 1012/03 of December 1, 2006, Reasons 25.
22. Article 102(2) EPC
23. Article 102(3) EPC
24. Article 102(1), (4) and (5) EPC
25. Article 106 EPC
26. ^ Glaxo Group Ltd v Genentech Inc & Anor EWCA Civ 23 (31 January 2008)
27. See also Article 16 of the Rules of Procedure of the Boards of Appeal (RPBA)
28. Article 104 EPC
29. Template:Fr icon Decision T 1306/05 of July 10, 2008, Boards of Appeal of the EPO.
30. Under Rule 88(2) EPC and Rule 100 EPC.
31. Template:Fr icon Laurent Teyssedre, T1306/05 : répartition des frais, Le blog du droit européen des brevets, October 19, 2008. Consulted on November 8, 2008.
32. Guidelines for Examination in the EPO, section d-ix, 1.2 .
33. Rule 88(2) EPC
34. Decision G 2/04 of 25 May 2005, Headnote I.(a).
35. EPO Board of Appeal decision T 0384/08 of 26 June 2009, Reasons 24.
36. Article 105(1) EPC
37. Rule 89 EPC
38. Rule 89(1) EPC
39. Article 105(2) EPC
40. Enlarged Board of Appeal decision G 1/94 (OJ 1994,787), point 10 of the decision.
41. EPO web site, CA/PL 29/99 dated 8.11.1999, Revision of the EPC: limitation procedure, in Travaux préparatoires 1997-2000, Patent Law Committee documents, item II.7.
42. European Commission, Pharmaceutical Sector Inquiry, Preliminary Report (DG Competition Staff Working Paper), 28 November 2008, pages 10-11 (pdf, 1.95 MB).

See also

• Reexamination procedure in US patent law.

External links

• European Patent Convention, Part V, Opposition and Limitation Procedure (Art. 99 to 105)
• Guidelines for Examination in the EPO, section d Part D, Guidelines for Opposition and Limitation/Revocation Procedures
• Ancillary Regulations to the EPC relating to Art. 99 EPC, the opposition procedure

• European Patent Organisation