Ensuring certainty

Changes to oppositions aim to bring early certainty to European patents

The so-called ‘Brexit’ may have thrown the future of the EU’s unitary patent system into question, and put European patent reform on the backburner, but at the European Patent Office (EPO), several schemes have been undertaken to improve the current European patent system.

Under the Early Certainty from Search initiative, the EPO strives to have search reports available six months after filing, and reduce the time to grant. Dutifully handling patents across Europe, the EPO, independent of the EU, deals with dozens of different European countries in three languages and, like any patent office, is constantly fighting backlogs. With a new high of 160,022 direct patent applications in 2015 and only 68,421 granted, the Early Certainty initiative aims to change that.

Through schemes such as Early Certainty from Search, the EPO has challenged established patent traditions, hoping to “benefit companies and inventors seeking patent protection in Europe”, according to EPO statements.

“The search report and the written opinion is often the first indication of how inventive your application is. Our clients use the search report to make decisions on filing further applications outside the EPO,” says Sander van Rijnswou, associate partner and European patent attorney at DeltaPatents, which has offices in Eindhoven and Leiden in the Netherlands.

The latest changes to come have chiefly to do with the EPO’s opposition procedure. They went into effect on 1 July and aim to make a significant dent in the overall duration of straightforward opposition cases, taking them from anywhere between 19 and 27 months, to just 15 months.

“The new opposition systems are designed to deal with patent validity questions quickly and efficiently,” says van Rijnswou. “There is a desire at the EPO to limit the time a case remains undecided.”

In its outline, the EPO opposition system remains largely the same under the Early Certainty initiative. Once a patent is granted, it can be opposed within nine months. If the opposition division is convinced the patent should not have been granted, the patent will be revoked or maintained in amended form. “About 70 percent of opposed patents are either revoked or amended, so opposition is a cost effective way of limiting the scope of a patent throughout Europe,” says van Rijnswou.

As in the old opposition regime, if an opposition is admissible, the proprietor will be informed and invited to comment on the notice of opposition after the nine-month opposition window has expired. In the new opposition regime, the opposition division starts preparing for oral proceedings immediately after the reply of the proprietor. For standard cases, the total internal processing time between receiving the reply of the proprietor and issuing the summons to oral proceedings should be at most five months.

The patent owner’s comments are forwarded to the opponent, but for the sole purpose of providing further information. Opponents are still allowed to reply to the patent owner’s comments and these will be taken into account in further proceedings, but opponents are not required to do so. According to van Rijnswou, the new rules may change how the parties approach the opposition. “Although an opponent is allowed to respond to the patentee’s reply, he is not given a time limit to do it in. So, if he wants to have his comments considered by the opposition division before they draft their preliminary opinion, he had better file his comments quickly.”

The opposition division may then have to summon both parties for oral proceedings, even if oral proceedings were not requested in the opposition. Under the new arrangements, parties will be summoned to oral proceedings at least six months in advance, giving them more time to prepare compelling and convincing arguments.

These new and streamlined procedures, combined with the optimisation of handling times, are intended to reduce the duration of opposition cases. Benoît Battistelli, president of the EPO, recently said that although the backlog of opposition files awaiting first action has already fallen by nearly 75 percent over the last year, more needed to be done.

Battistelli explained: “To steer us further towards attaining this 15 month target, the workflow of the opposition procedure has already been revised within the current legal framework as of 1 July this year. The streamlined opposition procedure simplifies opposition proceedings and is now set to deliver decisions faster, while giving parties more time to react to summons and prepare for oral proceedings.”

How should both patent owners and opponents approach oppositions under the revised procedure? Van Rijnswou says time and efficiency will be key, so it is “vital that patent owners and opponents get their side of the argument into the proceedings so that the division will consider it in the best light”.

He sees a point of concern though. “The EPO indicated that it will no longer automatically grant time extensions. This means that the patentee has only four months to formulate a response to the opposition, compared to the extended period of six months we had earlier. In that time the cited documents must be analysed, the case discussed with the client, and a response formulated. Tight planning will be important.”

Despite the challenges, van Rijnswou is keen to stress the advantages of the opposition system, which, absent the now uncertain Unified Patent Court, remains the only venue in which to knock-out a multi-jurisdictional European patent in a single procedure.
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