More options for speeding up European Patent Office oppositions

What changes did the EPO announce in November 2023?

When a patent is granted by the European Patent Office (EPO), a third party may object to the grant of the patent so long as they file a notice of opposition within a period of nine months of the date that the patent is granted. The opposition procedure gives the third party the opportunity to possibly narrow/revoke the patent centrally at the EPO and thus can make the process of removing the patent more straight forward.

The third party may object to the patent on the grounds that the patent lacks novelty, inventive step, relates to excluded subject matter and/or extends beyond the content of the disclosure as originally filed. It is common for the patent to be objected to on at least three grounds, and oppositions to be long and drawn-out affairs that take place over several years. This can lead to a long period of uncertainty for both the patentee and the third party due to the length of the opposition proceedings. In an attempt to mitigate this problem, the EPO previously updated its guidelines to state that an opposition related to infringement proceedings taking place at an EPC national court could be accelerated so that the opposition proceedings could be brought to a conclusion more swiftly.

When proceedings are accelerated the EPO tries to issue substantive communications within 3 months, and it is highly likely that requests for extensions of time will be refused (like in examination proceedings when acceleration is requested). The date for concluding oral proceedings may also be brought forward. These measures mean an opposition may be concluded in less than a year, rather than several years.

Recently, the EPO announced in its November edition of its Official Journal that in the case where revocation proceedings are pending at a national court or Unified Patent Court in parallel to an EPO opposition, the EPO would also allow (upon request) the EPO opposition proceedings to be accelerated. A request may be made by the national court/Unified Patent Court or by a party to the opposition proceedings.

The updated practice of the EPO will likely be welcomed by both patentees and third parties alike as it will mean that there are more options for accelerating EPO opposition proceedings. For example, in the case where a third party wishes to quickly and centrally knock out a European patent the third party may initiate a revocation action in a single EPC state and use that as a basis for requesting acceleration of the EPO opposition proceedings.

If you need any advice on speeding up EPO oppositions, please get in touch to speak to one of our attorneys.

Wilson Gunn