Introduction to European Invention Patent Opposition Procedure

Introduction to European Invention Patent Opposition Procedure

After a European patent is granted, anyone may file an opposition request to the patent within 9 months from the grant of the European patent.

This procedure allows third parties to avoid patent invalidation or revocation proceedings. The European patent opposition procedure can lead to the rejection of the patent and may lead to the narrowing of the scope of claim protection. The opposition decision is valid in all countries where the European patent is valid.

Objection requester:

• anyone. and can be submitted anonymously or under the name of a strawman.

Reasons for objection request:

• According to Article 100 of the European Patent Convention, oppositions may be filed on the following grounds:
  • The subject matter of the European patent is not patentable (is excluded from patentability or because it lacks novelty or inventive step);
  • The European patent does not disclose the invention in a sufficiently clear and complete manner to enable a person skilled in the art to practice the invention;
  • The subject matter of a European patent extends beyond the content of the application filed.

Objection procedure:

• After receiving the objection request from the objection requester, the EPO will convey the objection notice to the patentee, who has four months to submit a reply to the objection. The patentee may submit a request for extension of time limit.
• If there are more than one opposition requests for the same patent, the EPO will consolidate all the objections. For example, combine the comparative documents cited by different objection petitioners. At this stage, the patentee may file a main request and one or more auxiliary requests.
• Even if the patentee does not submit a reply, the EPO will review the case as scheduled. If the opposition petitioner or patentee requests oral proceedings, the EPO Opposition Division will set a hearing date.
• During the hearing, the objection requester may interview the right holder on specific issues. All requests from the patentee will be made in the order of the patentee. The hearing will only examine claim 1 of each request. For example, if claim 1 of the main request lacks novelty, the EPO Opposition Division will study claim 1 of the first auxiliary request. It is not possible to make new requests at the hearing. The objection requester needs to respond to each request.
• When a requested claim 1 is deemed to be patentable, novel and inventive and does not go beyond the scope stated in the original patent application, the patent claim will be retained.
• If none of the claims are considered patentable, novel and inventive, the patent is revoked.
• After the hearing, the objection requester shall not submit any further comments or objection requests. Therefore, both the opposition petitioner and the patentee will have access to the decision immediately at the hearing. The EPO Opposition Division will subsequently issue a written decision to the patentee and opposition requester.