12/12/2023
In the November 2023 issue of the European Patent Office (EPO) Official Journal, the EPO has confirmed that it will accelerate “parallel opposition proceedings” in the interest of “legal certainty and procedural efficiency, as well as high quality and uniformity in the European patent system”.
Such “parallel opposition proceedings” take place when an infringement or revocation action relating to a European patent has been instituted before the Unified Patent Court (UPC) or a national court (or competent authority of a contracting state) at the same time as ongoing opposition proceedings before the EPO.
Previously, the practice was for the EPO to accelerate oppositions only if an infringement action was pending before the UPC or national courts or competent authorities.
This change of EPO practice appears to apply to first instance opposition proceedings only. For Appeal Proceedings before the EPO Boards of Appeal, the revised Rules of Procedure provide for acceleration upon request of a party, or of the UPC, a national court, or a competent authority.
When may parallel opposition proceedings be accelerated
Parallel opposition proceedings will be accelerated by the EPO if it is informed by the UPC, national court, or competent authority of the infringement or revocation action.
Alternatively, a party to the parallel opposition proceedings may request acceleration at any time.
Effect of Acceleration
Upon acceleration of the parallel opposition proceedings, the Opposition Division will seek to issue the next procedural action within three months of being informed of the infringement or revocation action, or of the party’s request.
If, at the time of the Opposition Division learning of the infringement or revocation action, the patent proprietor’s response to the notice of opposition has not yet been received, the Opposition Division will seek to issue the next procedural action within three months of receipt of the response.
If oral proceedings have been scheduled, they will be rescheduled to take place at the earliest possible date. If no date for oral proceedings has been set, they will be scheduled to take place at the earliest possible date.
Requests for an extension of time limits, or to postpone oral proceedings, will only be granted in exceptional, duly substantiated cases.
What does all this mean?
This appears to be a positive change in practice which should lead to early legal certainty.
By accelerating opposition proceedings, delays may be reduced. The EPO being more likely to accelerate opposition proceedings may also avoid unnecessary costs of patent litigation and promote consistency in the European patent system.
Some parties may consider using the change in practice tactically, by filing a revocation action at the UPC or a national court or competent authority to force acceleration of opposition proceedings. Previously, requests for the EPO to accelerate opposition proceedings could be made only based on infringement actions, thus, only Patentees could launch actions which resulted in acceleration. While in most cases the relatively high fees for revocation actions at the UPC and some national courts may not be justified, it may be a worthwhile consideration in some circumstances.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
