29/06/2016
The European Patent Office has announced that from 1st July 2016, the (first instance) opposition procedure will be streamlined such that, in “straightforward” cases, the decision will be issued 15 months from the deadline for filing a notice of opposition, (in other words within 24 months from grant of the patent).
EPO Opposition proceedings have historically been a painstakingly slow process, with the decision routinely issuing three to four years after grant. The EPO have seemingly accepted that this timescale causes unnecessary uncertainty to opponents and proprietors alike.
How is the process being streamlined?
Prior to 1 July 2016, the proprietor was set a four month term in which to respond to an opposition, this term being extendable by two months on request. Under the new system, the patentee will only be able to obtain the extension in “exceptional cases with duly substantiated requests”. In my view, it seems somewhat unfair that the opponent retains a nine month term to prepare his submissions while the patentee’s term is less than half this.
A further change is that, under the old system, the opponent had ample time to respond to the patentee’s submission prior to Summons. However, under the new system, it appears that a Summons to Oral Proceedings will be issued shortly following the patentee’s initial response. In practice, this means that both parties should ensure that all documents and requests are submitted as soon as possible in the new system, for the opponent within the nine month opposition term, and for the patentee within the subsequent four month term for response. This will be a significant pressure on the patentee, in particular, given the short time frame for response.
It is not entirely clear whether the changes being enforced under the new system, for example in requesting extensions applies to existing oppositions or only to oppositions filed on or after 1 July 2016. Parties should not assume that a two month extension to a term expiring on or after 1 July 2016 is extendable as of right. Please contact us for further information on this point.
It remains to be seen whether the EPO intends to expedite the (second instance) appeal procedure in a similar manner, but clarification of this will of course be welcome.
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.
