Accelerated EPO oppositions without risking infringement

The European Patent Office (EPO) has announced that it will accelerate opposition proceedings when parallel revocation proceedings are initiated in a member state. This appears to offer opponents a mechanism to accelerate opposition proceedings at relatively low cost and without risking infringement.

 

Changes to the acceleration practice

Acceleration of opposition proceedings at the EPO was, until recently, only available when there was a parallel infringement action pending before the national court or the competent authority of a contracting state. The latest version of the Guidelines, which came into force on 1 March 2023, was updated to include the Unified Patent Court (UPC; see EPO Guidelines for Examination, E-VIII, 5 and 6).

The EPO has now announced that proceedings can be accelerated when there are revocation proceedings pending before the UPC, a national court or competent authority of a contracting state (Notice from the EPO dated 7 November 2023). The request may be filed at any time and must be filed in a written reasoned form. The request can be filed by the body overseeing the infringement or revocation action, or, crucially, by a party to the parallel opposition proceedings.

The key change is that the acceleration can now be instigated by opponents without risking infringement.

As before, the effect of a granted request for acceleration is that Opposition Divisions will “make every effort to issue the next procedural action … within three months”. Any requests for extension to time limits or to postpone oral proceedings during a period of acceleration will only be granted in exceptional, duly substantiated cases. The EPO already has a strict standard to granting extensions during opposition.

Although neither the Notice nor the current Guidelines place such strict time limits on the Boards of Appeal – who are not bound by the Guidelines – the time to a final decision should still be reduced. Boards are normally sympathetic to genuine requests submitted by parties with a “legitimate interest”.

Therefore, the Notice appears to offer opponents a way to accelerate the EPO opposition proceedings and to clarify their freedom to operate without risking infringement.

 

How to accelerate EPO opposition proceedings without risking infringement

Where?

Whilst the update to include revocation proceedings was apparently published with the UPC in mind, a “competent authority of a contracting state” should extend to national patent offices where post-grant revocation proceeding are available. For example, the UK Intellectual Property Office is competent to revoke patents (Section 72 of the UK Patent Act 1977). Therefore, accelerated opposition before the EPO could be secured even when a Unitary Patent is not sought, and without paying the €20,000 revocation fee at the UPC.

The choice of where to initiate revocation proceedings will depend on the aims of the opponent. For example, a competitor might prioritise its home market or an efficient national office with a good reputation to ensure freedom to operate. Conversely, initiating proceedings in a smaller state – likely to stay revocation proceedings until the EPO proceedings have terminated – might be preferable if the aim it primarily to accelerate before the EPO at minimal cost.

When?

Parties interested in accelerating opposition proceedings might wish to file the request at a specific point of proceedings. For example, there is normally a 6- to 12-month delay between the patentee’s response to the notice(s) of opposition and the issuance of the summons, which includes the preliminary opinion and sets the hearing date. This seems to be an optimal time to accelerate proceedings. However, the Notice makes clear that “oral proceedings will be (re)scheduled to take place at the earliest possible date” meaning acceleration can be effective even after a summons has been issued.

In summary, the Notice appears to give additional control to opponents who often have most to benefit from accelerated proceedings.

 

For more detailed advice in relation to any of the issues discussed above, or for advice relating to other matters regarding European practice, please do not hesitate to get in contact with your E+F representative or email us at elkfife@elkfife.com.