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EPO accelerates opposition proceedings for parallel infringement and revocation actions

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European Patent Office (EPO) opposition is an effective tool for parties seeking revocation or limitation of both opted-out European patents and European patents registered with unitary effect (“unitary patents”) in all EPC-contracting states. Normally, the time frame from filing a notice of opposition to a decision being issued by the Opposition Division is approximately 18-24 months.

While the territorial coverage may not be as broad as EPO opposition, validity proceedings can also be brought before the Unified Patent Court (UPC), a national court or any other competent authority of an EPC-contracting state and can occur in parallel to EPO opposition proceedings. One advantage of pursuing a UPC revocation action as opposed to an EPO opposition is that the action can be filed, and revocation proceedings initiated, as soon as the patent has granted. In contrast, EPO opposition proceedings will not occur until expiry of the nine-month post-grant opposition period.

Since infringement of European patents are not dealt with at the EPO, the above-mentioned courts are crucial in patent enforcement and infringement proceedings can also occur in parallel to EPO opposition proceedings.

Accelerating opposition proceedings – past and present

Traditionally, acceleration of the EPO opposition procedure could be requested by a party if parallel infringement proceedings relating to the opposed patent were pending before the UPC or a national court of an EPC-contracting state. The EPO has now broadened the acceleration criteria such that pending revocation proceedings before any above-mentioned court system can also be used as a reason to accelerate opposition proceedings.

Where such parallel opposition proceedings exist, the EPO will accelerate the proceedings before the Opposition Division. Proceedings will be accelerated upon the EPO being informed by either the UPC, a national court or the competent authority of an EPC-contracting state. Alternatively, a party to the parallel proceedings may request accelerated proceedings at any time. In practice, the UPC/national courts should inform the EPO that there is a pending infringement/revocation action, and so the EPO will usually automatically accelerate the opposition proceedings.

Once proceedings have been accelerated, the opposition division will make every effort to issue procedural actions (e.g. communications, summons to oral proceedings) within three months. This is in line with accelerated examination of pending European patent applications. If the opposition is accelerated before the patent proprietor has responded to the notice of opposition, the opposition division will make every effort to issue the next communication within three months after the response of the patent proprietor has been filed. If applicable, oral proceedings will be scheduled at the earliest date possible, which may involve rescheduling oral proceedings to an earlier date if a date has already been set.

Once opposition proceedings are accelerated, requests from parties to extend time limits beyond the normal period or postpone oral proceedings will only be granted in exceptional, substantiated cases.

Looking forward

The broader EPO acceleration criteria will likely be a welcome change to parties that regularly partake in both EPO opposition proceedings and litigation before the UPC/national courts.

It is also encouraging to see that the EPO is implementing procedures to compensate for delays in the initiation of opposition proceedings brought about by the nine-month opposition period. This clearly shows that EPO opposition is still a valid tool to challenge the validity of a patent and is the only tool available to obtain a decision that is applicable in all EPC-contracting states.

It is important to note that such acceleration may not automatically apply to any appeal proceedings stemming from accelerated opposition proceedings. In this instance, an acceleration request may need to be filed before the Board of Appeal to also accelerate the appeal proceedings.

Forresters have vast amounts of experience relating to EPO opposition as well as alternative offensive and defensive post-grant actions. If you have any questions regarding post-grant proceedings at the EPO, UPC or national courts, please contact your usual Forresters attorney.

Lara Weaver