EPO accelerates oppositions for infringement and revocation to aid legal certainty and ease scheduling

The European Patent Office is accelerating opposition proceedings for infringement and revocation in an effort to streamline cases before the Unified Patent Court, national courts and the EPO.

The news was shared by EPO President António Campinos in a letter to Sir Robin Jacob, former appeal court judge and the Sir Hugh Laddie Chair in Intellectual Property Law at the Institute of Brand and Innovation Law (IBIL), University College London, following discussions at this year’s European Judges’ Forum, of which Sir Robin is President.

In the letter, which Sir Robin has shared with CIPA, the President recognised the additional complexity that the UPC had brought to the European Patent System and the importance for patent judges and lawyers of a more harmonised approach.

He wrote: “From now on, the EPO will accelerate opposition proceedings when being informed not only of infringement actions but also of revocation proceedings pending before the UPC or a national court/authority of a member state. This applies in relation to both European patents and Unitary Patents and irrespective of an explicit request. The acceleration by the EPO is in the interest of legal certainty, procedural efficiency and quality in the European patent system, for the benefit of all stakeholders.

“Please find attached the notice informing about this revised practice. It will be published in the Official Journal of November 2023.”

The notice, dated 7 November 2023 and included in the November 2023 EPO Official Journal, states:

1. Infringement or revocation proceedings relating to a European patent or a European patent with unitary effect (“Unitary Patent”) may take place before the Unified Patent Court or a national court or competent authority of a contracting state in parallel to opposition proceedings before the EPO (“parallel opposition proceedings”). In such cases, concluding the EPO parallel opposition proceedings swiftly fosters legal certainty and procedural efficiency, as well as high quality and uniformity in the European patent system. This is in the interest of parties to the proceedings, the authorities and courts involved, as well as the public.
2. The EPO will therefore accelerate its processing of parallel opposition proceedings if it is informed by the Unified Patent Court or a national court or competent authority of a contracting state that an infringement or revocation action relating to a European patent or a Unitary Patent has been instituted before it. In the absence of such information, a party to the parallel opposition proceedings may request accelerated processing at any time.
3. Where parallel opposition proceedings are accelerated, the opposition division will make every effort to issue the next procedural action (e.g. communication, summons to oral proceedings) within three months of receipt of such information or the party’s request. If the information or request is received before the patent proprietor’s response to the notice of opposition, the opposition division will make every effort to issue the next procedural action within three months of receipt of the latter. If applicable, oral proceedings will be (re)scheduled to take place at the earliest possible date. Requests from the parties to extend time limits over and above the normal period or to postpone oral proceedings will only be granted in exceptional, duly substantiated cases.

Date published: 27 November 2023