13/03/2024
As reported previously, the EPO has confirmed that it will accelerate opposition proceedings when there are parallel pending infringement or revocation actions before a national court of a contracting EPC state or before the Unified Patent Court (UPC).
The aim of accelerating opposition proceedings is to increase legal certainty for parties involved in the parallel court proceedings. For example, this can avoid a scenario of infringement being found by a court during national proceedings only for the patent to subsequently be revoked ab initio at opposition. This will also avoid taking up court time issuing decisions on patents which are subsequently revoked or substantively amended.
Acceleration at Different Stages of Opposition Proceedings
Recently, the EPO have provided further guidance setting out how opposition proceedings will be accelerated based on what stage the opposition has reached when the EPO is notified of the parallel proceedings. The different scenarios for when the EPO can be notified of parallel proceedings are as follows:
- During the opposition period (i.e. in the nine months after grant of the European patent)
After expiry of the period, the proprietor will be invited to comment on the opposition within three months (instead of the usual four months) and summons will be issued within two months of receipt of the proprietor’s reply, summoning the parties at minimum notice (Rule 115(1) EPC).
- After expiry of the opposition period but before the proprietor’s reply to the opposition
Summons to oral proceedings will be issued within two months of receipt of the proprietor’s reply. The parties will be summoned at minimum notice (Rule 115(1) EPC).
- After the proprietor has replied but before summons has been issued
Summons to oral proceedings will be issued within two months of receipt of the information on parallel proceedings. The parties will be summoned at minimum notice (Rule 115(1) EPC).
- After summons has been sent
Oral proceedings are rescheduled to the earliest possible date (provided that the time saving is significant).
- After the decision has been pronounced
The decision and the minutes will be issued within one month.
It is noted that these scenarios are only applicable to oppositions at first instance. Acceleration of proceedings before the Boards of Appeal are governed by the Rules of Procedure of the Boards of Appeal, of which Article 10(4) allows a court to request acceleration of the proceedings.
How will Acceleration affect Oppositions?
As intended, the obvious effect of these changes will be to accelerate opposition proceedings, and in some instances quite substantially. In the case that the EPO are notified of the parallel proceedings during the opposition window, then a decision should be issued around 8 months from the end of the opposition window. This is significantly shorter than typical opposition, which will often take a number of years to conclude.
A key way in which the proceedings are to be accelerated prior to the summons to oral proceedings being issued is by summoning the parties with minimum notice, which, under R. 115(1) EPC, is two months. This is much shorter than the usual six months provided, and will greatly reduce the scope for filing further submissions in response to the preliminary opinion of the opposition division that is issued with the summons.
Another interesting point to note is that even once a date has been set for oral proceedings, if the EPO are notified of parallel proceedings then this date will be rescheduled to the earliest possible date. The guidance published does not specify what constitutes the “earliest possible date”, but it seems reasonable that the parties can still expect at least two months’ notice of the rescheduled date under R. 115(1) EPC. Again, this rescheduling could have a significant impact on a party’s strategy with respect to filing further submissions.
While acceleration can significantly alter the timeline of an opposition, for the patentee, at least, it should not come as a surprise as they will also be a party to the parallel court proceedings. An opponent, on the other hand, may not be involved in the parallel proceedings and may, with relatively little warning, find their opposition dramatically accelerated. This will add a further variable to opposition proceedings and will require parties and their representatives to be able to act nimbly and responsively.
Here at Reddie & Grose LLP our highly qualified team is capable of representing before both the UPC and the EPO, and has experience assisting litigation in national courts in Europe. Having a single set of representatives assisting with both parallel procedures will negate many of the pressures of an accelerated opposition as both procedures can be managed in parallel in an effective and efficient manner. If you would like to find out more about how we can assist in EPO oppositions, proceedings before the UPC, or proceedings before national courts, please get in touch with one of our team.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
