The European Patent Office Opposition and Appeal Procedures Daljit Khera Directorate Advisor, EPO27' - PowerPoint PPT Presentation

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The European Patent Office Opposition and Appeal Procedures Daljit Khera Directorate Advisor, EPO27'

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Title: The European Patent Office Opposition and Appeal Procedures Daljit Khera Directorate Advisor, EPO27'


1
The European Patent OfficeOpposition and Appeal
ProceduresDaljit KheraDirectorate Advisor,
EPO 27.08.08
2
Contents
  • Overview
  • Opposition
  • Central Limitation or Revocation
  • Appeal

3
Overview of European patent grant procedure (I)
4
Overview of European patent grant procedure (II)
5
Why do we need opposition?
  • It allows the introduction of disclosures which
    may not have been available to the Examining
    Division
  • Oral disclosures
  • Prior use
  • Proprietary disclosures e.g. manuals
  • It also allows the public to challenge the
    Examining Divisions assessment of patentability
  • (e.g. Greenpeace opposition to the
    Edinburgh Patent in 2000)

6
How does it work?
  • Oppositions proceedings are adversarial
  • the patent proprietor and the opponent battle it
    out amongst themselves
  • the Opposition Division arbitrates and takes the
    final decision

7
Opposition procedure
  • A notice of opposition must be filed within 9
    months of the publication of the patent (Article
    99 EPC)
  • It can be filed by anyone else (G9/93)
  • Opposition is an independent procedure to
    examination
  • It is an inter partes procedure

8
Notice of opposition (Rule 55 EPC)
  • The notice of opposition must include
  • Name and address of the opponent, and state of
    residence
  • Number, title proprietor of patent opposed
  • Extent to which the patent is opposed
  • Grounds for opposition
  • Indication of facts, evidence and arguments
  • If appointed, the name and address of the
    representative

9
Grounds for opposition (Article 100 EPC)
  • The subject-matter is not patentable(Articles 52
    to 57 EPC)
  • The invention is not sufficiently disclosed
  • The subject-matter extends beyond the application
    as originally filed
  • Neither lack of unity nor lack of clarity are
    grounds for opposition

10
The opposition division (Article 19 EPC)
  • First Memberperforms examination
  • Second Membertakes minutes inoral proceedings
  • Chairmanretains overall responsibility
  • (Legally qualified Member)legal issues and
    minutes

Only one of the division may have taken part in
the examination procedure (not the chairman)
11
Examination of the Opposition (Article 101 EPC)
  • Initial submissions by the parties
  • Notice(s) of Opposition
  • Observations from patentee (Rule 79 (1) EPC)
  • Official communication
  • To all parties (Rule 81 (1) EPC)
  • Respecting the parties' requests
  • Oral Proceedings (Article 116 EPC)
  • Decision

12
Public Prior Use
  • Burden of proof "Up to the Hilt" (T 472/92)
  • Who
  • What
  • How
  • When
  • Witnesses may be called to provide confirmation
    of the evidence already given

13
Oral Proceedings (Article 116 EPC)
  • Submissions (Rule 116(1) EPC)
  • Preparation
  • The Proceedings itself
  • Requests
  • Representation
  • Presentation of argumentation (Article 113 (1)
    EPC)
  • Confirmation of requests
  • The decision, given orally (Article 116 (4) EPC)
  • Written decision and minutes (Rule 124 EPC)

14
Possible outcomes
Patentee
Opponent
Patent revoked (Article 102(1) EPC) ? ?
Opposition rejected (Article 102(2) EPC) ? ?
Patent maintained (amended) (Article 102(3)
EPC) ? ?
The Decision (?/?) can be appealed (Article 106
EPC)
15
Oppositions in 2007
  • Oppositions were filed against 5 of granted
    European patents.
  • Around one third of all opposed patents were
    revoked.

Opposition rejected
Patent revoked
31.5
38.3
5
Oppositions
30.2
Granted patents
Patent maintained in amended form
16
Central limitation or revocation procedure
  • New EPC2000 Procedure
  • Post-grant Limitation/Revocation (Art. 105a-105c
    EPC)?
  • Ad initio effects
  • Central
  • Avoiding opposition

17
Appealable Procedure
  • Appealable Decisions
  • From decisions of
  • Receiving section
  • Examining division
  • Opposition division
  • Any party adversely affected
  • Examination of Appeal
  • Suspensive effect
  • Decision

Boards of Appeal
Filing
Search
Opposition
Publication
Examination
Grant
18
Boards of Appeal
  • Legal Board
  • Appeals relating to legal matters e.g. refund of
    fees
  • Technical Board
  • Technical matters in examination e.g. refusal for
    lack of novelty
  • Enlarged Board of Appeal
  • Important legal questions from Boards of Appeal
  • During appeal proceedings
  • Points of law referred by President
  • Conflicting decisions given by different Boards
    of Appeal
  • New EPC2000
  • Review of BoA decision by the Enlarged Board of
    Appeal (Art. 22 and 112a EPC)? is possible under
    certain conditions.

19
Overview of the Appeal Procedure
  • Departments of first instance
  • Receiving Section
  • Examination Division
  • Opposition Division
  • Legal Division

Decision
Appeal
  • Boards of Appeal
  • Technical
  • Legal

Referral
Enlarged Board of Appeal
20
Need more information?
  • www.epo.org
  • info_at_epo.org
  • Tel. 49 (0)89 2399 - 4636
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