The European Patent Office (EPO) has announced that from 1 July 2016, post-grant oppositions will be reformed so that they become significantly faster and more efficient.¹ The effect of these changes is that in straightforward cases, the decision in a first instance opposition will be issued within 15 months of the close of the opposition period (which is nine months after the date the European patent was granted).

This is a significant acceleration of the previously notoriously slow opposition procedure. It will be of strategic importance to patentees and their competitors alike, especially against the background of the impending introduction of the Unified Patent Court, and the concerns expressed by national courts in Europe about the significant lack of commercial certainty imposed by the hitherto lengthy EPO opposition procedure.

• The EPO’s pre-July 2016 opposition procedure has been roundly criticised by courts across Europe for its lengthy and open-ended process. “Normal” cases take an average of between four to eight years through to final determination (including appeals). As most European countries stay national litigation pending resolution of an EPO opposition – including the key issue of infringement, which is the exclusive prerogative of the national courts, not the EPO – this can have a chilling effect on business.
• These reforms demonstrate the EPO’s wish to reconfigure its procedures preparatory to the introduction of the Unified Patent Court sometime in 2017, so that the EPO opposition timelines broadly conform with the UPC litigation ones.
• Patent proprietors and their competitors should now be recalibrating their European patent litigation strategies, including in countries such as England and the Republic of Ireland that do not always stay national litigation pending the result of an EPO opposition. This truncated timeline offers significant strategic opportunities and threats, although it remains to be seen whether the EPO can deliver this faster opposition process, or how easily a determined party can derail it in practice. Nonetheless, these reforms show the EPO as being determined to offer a competing route to central revocation of a European patent, to that offered by the forthcoming Unified Patent Court.
• While not in itself conclusive, this change in EPO opposition timelines will also change the balance of discretionary factors that the English courts consider when deciding whether or not to order a stay of English national litigation. Broadly, it will be likely to tip the balance towards the grant of a stay. This is because often the most compelling argument in favour of a stay is whether the EPO opposition will finish significantly earlier than, or not much later than, a national trial.

The commercial imperative – the need for certainty and speed Historically, the EPO opposition process is lengthy and drawn out with frequent delays. It can often take between four and eight years before the opposition procedure and all possible appeals are exhausted. The record currently stands at 14 years.² Even if there is a successful request to accelerate the EPO opposition proceedings because there are pending patent infringement proceedings,³ it can still take up to three years for a final EPO decision (a wait of 15 to 24 months is typical).

The EPO’s opposition process has been a victim of its own success. But its delays have attracted significant judicial criticism from national courts. In IPCOM GmbH & Co KG v. HTC Europe Co Limited⁴ – the leading English case on whether to grant a stay pending resolution of an EPO opposition – Lord Justice Floyd, in giving the unanimous Court of Appeal judgment, held that:

“A procedure which allows disputes over patent rights to take in excess of a decade cannot meet the needs of industry, particularly in rapidly moving areas of technology. Although such a procedure may technically comply with Article 6 of the European Convention on Human Rights, which guarantees a trial before an independent tribunal within a reasonable time, the opportunity for successive appeals and remittals means that there is in practice no final determination of the parties' rights for many years. Given their procedures, the Boards have a difficult task in seeking to achieve justice and finality.”

A major concern about EPO oppositions is that while there are clear deadlines for beginning them (they must be launched within nine months of grant), there are no provisions regulating when they must end. One important reason for the drawn-out nature of oppositions is the EPO's serial approach to decision making. Where there are a variety of grounds of opposition, the EPO’s practice is to decide the issues in a given order; if a ground succeeds, it is then rare for the Opposition Division (OD) to go on and decide all the other grounds of opposition, as is common in national courts. The inevitable consequence is further delay. If the OD's decision is overturned on appeal, the Technical Board of Appeal will normally have to remit the case back to the OD for it to consider the next issue in the sequence, and so on.

The slow speed of EPO oppositions is particularly troubling for the patentees of patents with shorter life spans. For example, the latest high-tech products are frequently overtaken by more sophisticated alternatives within a few years of appearing on the market, and the value of any corresponding patent rights may be equally short-lived.

The ability to clear the path of third-party rights, or to take swift enforcement action in the early life of a patent, may be critical in fast-moving and competitive industries. Delays of four to six years while the EPO decides whether a patent is valid are not commercially viable. For many companies, a swift decision by a national court may be preferable to achieve some degree of certainty in a key market. A slower but more cost-effective central attack at the EPO can be simultaneously pursued in the hope of achieving a pan-European decision at a later date.

The new procedure in more detail The EPO’s streamlined new opposition procedure in effect from 1 July 2016, is intended to simplify opposition proceedings and deliver decisions faster. It is also intended to give the parties more time to react to the summons for oral proceedings, and to prepare for the full opposition hearing.

The principal features of the new procedure are as follows:

• When filing their formal pleadings, both the opponent and the proprietor must file all relevant documents, even if available in the EPO documentation; translations of any documents not in an EPO official language; and, wherever possible, a copy of any further evidence indicated in them.
• The parties are obliged to identify in their pleadings the facts, evidence, and arguments they propose to rely on in support of their assertions as to the grounds of opposition.
• The proprietor’s reply is due within four months, and must include any proposed amendments to the patent. The OD will immediately communicate these to the opponent on receipt.
• The normal period for replying to communications from the OD is four months for communications raising matters of substance and two months for other communications. Extensions of time will only be granted in exceptional cases with duly substantiated requests.
• If evidence is submitted out of time, the OD will ignore it unless it is of prima facie relevance, i.e., would affect the outcome of the decision to be taken.
• If oral proceedings are requested by the parties or deemed expedient by the OD, then the date will be fixed when the summons is issued. This date will be not earlier than six months after the summons is sent. At the same time, the OD will set out the issues which it considers must be discussed at the oral proceedings, together with the OD’s provisional and non-binding opinion on (i) the positions adopted by the parties, and in particular on (ii) any amendments filed by the proprietor.
• While the topics dealt with at the oral proceedings are intended to be those specified in writing by the OD, it will not be confined to those issues alone, provided a party’s submissions are relevant. But, importantly, if new facts or evidence are submitted for the first time at the oral proceedings, they will be regarded as late-filed and will only be considered if they are of prima facie relevance.

Comment This streamlined opposition procedure is intended to give legal certainty to the parties and the public in a timely and effective manner. While these changes are to be welcomed, it remains to be seen how in practice these reforms will play out and whether they will deliver on the promise of faster justice.

While the desire of the EPO to speed up the opposition procedure should be commended, it appears to be largely at the expense of the patent proprietors. The reduced time to a first instance decision appears in part to be being achieved by limiting the time available for patent proprietors to respond to the opposition. They previously had four months to reply to an opposition, with a two-month extension generally available upon request and additional further extensions often being granted; this will not be the case under the new procedure, where extensions to the initial four-month period will be available only “in exceptional cases with duly substantiated requests”. Moreover, there is a notable distinction between the nine months an opponent has to prepare their opposition case and the now four months given to patent proprietors to marshal their fully reasoned and evidenced response to the opposition.

These changes only deal with the first instance part of the opposition process. To that extent, they leave untouched aspects of the overall opposition process which have significant potential to create delay. They do not affect the appeals procedure, which is still governed by the 2007 Rules of Procedure of the Boards of Appeal. Those rules, and the current state of appeal backlogs, mean that most appeal proceedings will continue to add another three or four years to the total opposition procedure time. Nor do they prima facie change the serial nature of EPO decision making, something identified by national courts as a serious cause of delay.

1. EPO Official Journal May 2016, Article A42, 31 May 2016
2. This was the opposition in the Hepatitis B virus litigation between Biogen Inc. and Medeva plc. The judge in the English part of this litigation characterised this delay as “disturbing”.
3. See T290/90 SAVIO [1992] OJEPO 368.
4. IPCOM GmbH & Co KG v. HTC Europe Co Limited, Court of Appeal, [2013] EWCA Civ 1496.

Client Alert 2016-158