Title: The European Patent Office Opposition and Appeal Procedures Daljit Khera Directorate Advisor, EPO27'
1The European Patent OfficeOpposition and Appeal
ProceduresDaljit KheraDirectorate Advisor,
EPO 27.08.08
2Contents
- Overview
- Opposition
- Central Limitation or Revocation
- Appeal
3Overview of European patent grant procedure (I)
4Overview of European patent grant procedure (II)
5Why 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)
6How 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
7Opposition 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
8Notice 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
9Grounds 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
10The 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)
11Examination 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
12Public 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
13Oral 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)
14Possible 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)
15Oppositions 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
16Central limitation or revocation procedure
- New EPC2000 Procedure
- Post-grant Limitation/Revocation (Art. 105a-105c
EPC)? - Ad initio effects
- Central
- Avoiding opposition
17Appealable 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
18Boards 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.
19Overview 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
20Need more information?
- www.epo.org
- info_at_epo.org
- Tel. 49 (0)89 2399 - 4636