November 2023 Oppositions (and then appeals of the opposition decisions) are a mainstay of the work of the European Patent Office (EPO), allowing third party scrutiny of granted patents prior to, and often in place of, litigation. There are now more circumstances in which the opposition timetable can be accelerated – we say this is good news.
Change in acceleration practice
Recent changes to EPO opposition acceleration practice, published earlier this month, further expand the integration of EPO oppositions with post grant actions in court, whether at the Unified Patent Court or in a national court.
Historically, the duration of the procedure from filing an opposition at the EPO to a decision was problematic; in some states, notably, the UK, litigation would continue if there were parallel opposition and litigation proceedings and reaching a decision in the opposition seemed too far off – the litigation would go ahead without waiting. To help mitigate this, as practitioners will know, accelerated processing of oppositions was previously available though just for the case of infringement actions (see e.g. EPO Guidelines for Examination, E, VII, 5).
The EPO President, via letter dated 16 November 2023 (an official announcement will appear in the EPO Journal of November 2023), has announced that the EPO will accelerate opposition proceedings when being informed both of infringement actions and also of revocation proceedings pending before the UPC or a national court/authority of a member state.
Acceleration can be invoked by the court advising the EPO of the infringement or revocation action, or on request of a party to the action.
Effect of change in practice
The effect of acceleration will be the EPO aiming to provide a substantive communication within 3 months, e.g. a communication on the merits or a summons to oral proceedings. As for accelerated examination, requests for extension to time limits will likely be refused in an accelerated opposition. Under acceleration, Oral Proceedings may be rescheduled to an earlier date.
The revised practice should reduce delays for litigants and is to be welcomed; it applies in relation to both European patents and Unitary Patents.
