Refresher: Opposition
Ohh, I wanted to publish this a long time ago, but I still didn’t have time to properly finish it to the extent I planned to. However, I believe this summary is still quite useful.
A few notes regarding opposition
Opposition is possible after grant (not after limitation, not after amendments after opposition).
Third party observations under Art.115 EPC can be filed during opposition.
Grounds for opposition under Art.100 EPC:
(a) not patentable (Art.52-57): not new, not inventive, not an invention etc.
(b) not sufficiently disclosed (Art.83)
(c) extends beyond the content of the appl. as filed - Art. 61(1)(b), Art.76(1) and 123(2) EPC
Not grounds for example:
clarity,
unity,
wrong priority, or
entitlement issues
For opposition, Further Processing does not apply, since Art.121 only applies for applicants. In opposition none of the parties is an applicant.
For filing the opposition, Re-establishment can apply for proprietors (but always check the specific situation, e.g. if there is a loss), but not for opponents (this is different when an opponent files an appeal, since according to G 1/86 opponents may use re-establishment when filing the statement of grounds of appeal).
If no opposition is filed within the 9-month period, the patent can only be attacked in revocation proceedings before a national court under Art.138(1) EPC.
Make sure to check Art.114(1) and (2) EPC, both are important in this topic.
Note that Art.114(1) can only be applied if there is an admissible opposition pending.
Steps of opposition
Step 1: is it deemed filed?
Not deemed filed e.g. if fee not paid, not signed, not in official language (or no translation), missing authorisation, non-allowed way of filing is used (e.g. Web-form filing).
The opposition fee can only be paid within the 9 months!
If not filed in EPO official language, or if Art.14(4) applies, translation not filed within 1 month or within the opp. period, there is no remedy. Fee will be refunded and new opposition must be filed (if still possible).
If deemed not filed –> opposition fee is refunded automatically, as there is no legal basis for payment
If deemed not filed –> it will be treated as third party observations
If e.g. missing signature, missing authorisation, used non-allowed ways of filing –> EPO invites to remedy
Read more: GL D-IV 1.2.1
Step 2: is it admissible?
If inadmissible, opp. fee is not refunded.
Two types of deficiencies: major or minor
Major deficiencies –> must be remedied within the 9-month opp. period! R.77(1) EPC
e.g. patent not sufficiently identified, no statement of grounds, no statement of extent, no indication of facts, evidence and arguments*, opponent not sufficiently identified (complete name and address missing).
*Based on a note in Hoekstra reference book: the evidence itself can be filed after the opp. period, but must be indicated.
Minor deficiencies –> must be remedied within the period set by the EPO (extendible under R.132(2) EPC)
e.g. incomplete name or address of opponent, patent can be identified but some info like title is missing, opponent outside contracting state and has not appointed representative**.
**Note that when the authorisation is missing, the opposition is deemed not filed, but if representative is not appointed, it is a minor deficiency that can be corrected after the invitation of the EPO. So, don’t try to find logic, but try to find a place in your reference book where you can quickly check the certain issues.
Step 3: Examination of opposition
This step includes possible amendments, usually also oral proceedings.
3 possible outcomes:
opposition rejected
patent revoked
patent maintained in amended form
Possible step 4: Appeal (if one of the parties appeals)
Relevant G decisions:
G 3/97 (identical to G 4/97): Strawman in opposition proceedings
Headnote 1(a), r.3.2: An opposition is not inadmissible purely because the person named as opponent is acting on behalf of a third party.
Headnote 1(c), r.4.1: The action of the opponent on behalf of the patent proprietor renders the opposition inadmissible.
Headnote 1(c), r.4.2.1: However, if a person not entitled to act as a professional representative before the EPO files an opposition in his own name on behalf of a client, the opposition is inadmissible.
Headnote 1(d), r.4.2.2: A professional representative is allowed to file an opposition in his own name on behalf of a client.
G 3/99: Joint opposition
Headnote 1: An opposition filed by jointly two or more persons is admissible if only one fee has been paid.
Headnote 2: it has to be clear throughout the procedure who belongs to the group of common opponents or common appellants. If either a common opponent or appellant (including the common representative) intends to withdraw from the proceedings, the EPO shall be notified accordingly by the common representative or by a new common representative determined under Rule 100(1) EPC in order for the withdrawal to take effect.
G 9/91: Extent of opposition
Subject-matters of claims depending on an independent claim which falls in opposition or appeal proceedings, may be examined as to their patentability even if they have not been explicitly opposed, provided their validity is prima facie in doubt on the basis of already available information.
(If an independent claim is not indicated in the notice of opposition, that claim (and all its dependent claims) is not part of the opposition and also not of a subsequent opposition appeal.)
Zsofia's summary:
An opposition is not limited to the
- grounds
- facts and evidence given in the notice of opposition (Art.114(1) EPC) says this)
An opposition is limited to the extent of the opposition given in the notice of opposition.
(The extent of the opposition indicates the claims the opponent attacks.)
G 10/91: Examination of grounds for opposition
In principle, the Opposition Division shall examine only such grounds for opposition, which have been properly submitted and substantiated.
Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee.
G 3/14: Examination of amended claims on clarity
In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.
Guidelines D-V 5: "According to G 3/14, the amendment of one claim or part of a patent cannot lead to a re-examination of other parts of the patent which have not been amended. Thus the deletion of an independent claim with its dependent claims or the deletion of a dependent claim leaving the independent claims and other dependent claims intact does not permit examination of the remaining claims for compliance with Art. 84.
A claim amended during opposition proceedings is not subject to examination for compliance with Art. 84 if it results from
(i) inserting a complete dependent claim as granted into an independent claim;
(ii) combining one of several alternative embodiments of the dependent claim as granted with the independent claim as granted;
(iii) deleting wording from a granted claim (whether independent or dependent), whereby its scope is narrowed but a pre-existing lack of compliance with Art. 84 is left intact (as exemplified by T 301/87); or
(iv) deleting optional features from a granted claim (whether independent or dependent).
However, an amended claim is to be examined for compliance with Art. 84:
(v) if features are taken from the description and inserted into a granted claim by way of amendment; or
(vi) if a feature from a dependent claim as granted is introduced into an independent claim as granted and this feature was previously connected with other features of that dependent claim and an alleged lack of compliance with Art. 84 is introduced by the amendment."
(Also see Art.101(3) EPC and the notes under it in your EPC ref. book)
Art.105 Intervention of the assumed infringer
G 1/94: Intervention of the assumed infringer under Article 105 EPC is admissible during pending appeal proceedings and may be based on any ground for opposition under Article 100 EPC.
G 4/91: In order for there to be a possibility of intervention, opposition proceedings must be in progress when the notice of intervention is filed.
A notice of intervention cannot be filed in the two-month period for filing an appeal, unless one of the parties to the opposition proceedings files an appeal.
G 3/04:
- Status of intervener
A valid intervener only acquires the status of an opponent, irrespective of whether the intervention occurs during the proceedings before the opposition division or at the appeal stage see under Art.108. This means that an intervener in proceedings before the opposition division, where all the opponents have withdrawn their oppositions, can continue the proceedings alone and, if need be, file an appeal, since he has the same status as an opponent under Article 99 EPC. For the same reason, if an appeal is filed by someone other than him, he is a party as of right.
- Continuation of proceedings after withdrawal of sole appeal
After withdrawal of the sole appeal, the appeal proceedings may not be continued with a third party who intervened during the appeal proceedings. (Zsofia's comment: because he didn't appeal.)
- When a party intervenes in the appeal stage, no appeal fee has to be paid, because the intervener does not acquire the status of the appellant.
Other notes regarding the intervention:
Candidates often forget that there are two possibilities (see Art.105(1)(a) and (b) EPC to file a notice of intervention. If there is no infringement procedure, you can still use Art.105(1)(b) EPC).
T195/93: Warning letter is not enough to intervene under Art.105
Intervention may be based on any ground for opposition under Article 100 EPC.
Assumed infringer has to pay opposition fee and will become an opponent.
Time limit for intervention: 3 months R.89(1) EPC and GL D-VII, 6