As a company that deal with a number of Oppositions and Appeals on behalf of clients in front of the European Patent Office and have to deal with delays in reaching the end of the procedure, we are pleased to report that the European Patent Office has announced steps to allow the acceleration of the process, albeit only in certain instances.

How long do third parties have to appeal a granted patent?

The ability for a third party to oppose the grant of a patent by the European Patent Office is one of the fundamental aspects of the prosecution of a European patent. On grant of a European patent, third parties have nine months in which to file an Opposition on one of a number of grounds which can, if successful, lead to the revocation of the patent.

Data from the European Patent Office indicates that only around 2-3% of granted European Patents are opposed, of which approximately 33% are revoked and effectively removed. However, it is often the case that opposed patents are regarded as being commercially critical to the Patent proprietor and/or the Opponent and so considerable time, effort and expense is often put into opposing and defending the grant of a patent.

EPO Oppositions vs. National Courts

There has been an uneasy interface between the European Patent Office opposition procedure and the enforcement of the granted patents in national courts in recent years. Friction between the jurisdictions may be further exacerbated with the introduction of the Unified Patent Court.

For example, a patent may have been found to be infringed by a National Court with the patent proprietor being awarded damages, only for the same patent to be subsequently revoked upon the conclusion of European Opposition proceedings which may take several years. There is also no redress for a party which may have lost in an earlier court’s decision if an opponent subsequently wins the opposition procedure. While it has been possible in the past to request accelerated processing of oppositions relating to Patents involved in infringement actions, this measure is to the discretion of the Opposition Division.

New grounds for parties to accelerate opposition procedure

In an attempt to resolve this issue, the European Patent Office have now issued a Notice which opens the way for the parties to the opposition and/or the National or Unified Patent Court to request the acceleration of the Opposition procedure on the following grounds:

  1. In cases where an infringement action in respect of a European patent is pending before the Unified Patent Court or a National court, a party to the opposition proceedings may at any time request accelerated processing of the Opposition. The European Patent Office (EPO) will then aim to issue the next procedural action within three months of receipt of the request or, where the request is filed within the opposition period, within three months of receipt of the patent proprietor’s response to the notice of opposition (whichever is the later).
  2. In addition, the EPO will also accelerate the processing of the opposition if it is informed by the Unified Patent Court, the national court or the competent authority of a contracting Country stating that an infringement action relating to the opposed patent is pending in their jurisdiction.
  3. In return, the EPO expects the parties to the opposition procedure to then make their submissions promptly and in full and to strictly adhere to the time limits set by the EPO for replying to communications or commenting on written submissions from the other parties. Requests for extensions of time are unlikely to be granted unless in exceptional circumstances.

Going forward

We hope that these new measures will result in meaningful acceleration of the opposition procedure of granted European patents, limiting the prolonged periods of uncertainty around the validity of these patents.

If you have any questions or would like further information regarding the EPO and opposition procedures, or would like to understand how we could help you, please do not hesitate to contact us, either by email at mail@bailey-walsh.com or by telephone on +44 (0)113 243 3824.