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The European Patent Office Opposition and Appeal Procedures Daljit Khera Directorate Advisor, EPO 27.08.08 PowerPoint Presentation
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The European Patent Office Opposition and Appeal Procedures Daljit Khera Directorate Advisor, EPO 27.08.08. Contents. Overview Opposition Central Limitation or Revocation Appeal. Refusal or withdrawal of application. Validation in designated states. European patent

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Presentation Transcript
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The European Patent OfficeOpposition and Appeal ProceduresDaljit KheraDirectorate Advisor, EPO 27.08.08

contents
Contents
  • Overview
  • Opposition
  • Central Limitation or Revocation
  • Appeal
overview of european patent grant procedure i

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)
slide4

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)

why do we need opposition
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)

how does it work

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
opposition procedure
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
notice of opposition rule 55 epc
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
grounds for opposition article 100 epc
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

the opposition division article 19 epc
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)

examination of the opposition article 101 epc
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
public prior use
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
oral proceedings article 116 epc
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)
possible outcomes
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)

oppositions in 2007
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

central limitation or revocation procedure
Central limitation or revocation procedure

New EPC2000 Procedure

Post-grant Limitation/Revocation (Art. 105a-105c EPC)‏

  • Ad initio effects
  • Central
  • Avoiding opposition
appealable procedure
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

boards of appeal
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.
overview of the appeal procedure

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

need more information
Need more information?

www.epo.org

info@epo.org

Tel. +49(0)89 2399-4636