The European Patent Office Opposition and Appeal Procedures Daljit Khera Directorate Advisor, EPO 27.08.08

1. The European Patent OfficeOpposition and Appeal ProceduresDaljit KheraDirectorate Advisor, EPO 27.08.08

2. Contents • Overview • Opposition • Central Limitation or Revocation • Appeal

3. Refusal or withdrawal of application Validation in designated states European patent application Applicant Filing and formalities examination Substantive examination Grant of European patent Search and search report together with preliminary opinion on patentability EPO Publication of application and search report Online access to application file and legal status information Publication of patent specification Public domain Overview of European patent grant procedure (I)

4. Refusal of application Applicant Limitation or revocation proceedings Substantive examination Grant of European patent Appeal proceedings EPO Opposition proceedings Overview of European patent grant procedure (II)

5. Why 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 Division’s assessment of patentability (e.g. Greenpeace opposition to the ‘Edinburgh Patent’ in 2000)

6. Opponent Proprietor How 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

7. Opposition 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

8. Notice 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

9. Grounds 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

10. The 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)

11. Examination 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

12. Public 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

13. Oral 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)

14. Possible 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)

15. Oppositions 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

16. Central limitation or revocation procedure New EPC2000 Procedure Post-grant Limitation/Revocation (Art. 105a-105c EPC)‏ • Ad initio effects • Central • Avoiding opposition

17. Appealable 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 Publication Examination Grant Opposition

18. Boards 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.

19. President Referral Overview 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

20. Need more information? www.epo.org info@epo.org Tel. +49(0)89 2399-4636