Acceleration of opposition proceedings
We recently reported that the European Patent Office (EPO) would accelerate its processing of parallel opposition proceedings. This acceleration occurs when the EPO is informed by the Unified Patent Court (UPC), a national court, or competent authority of a contracting EPC member state that an infringement or revocation action relating to a European or Unitary Patent has been brought before it. The EPO has now issued guidance on how the timing of when it is informed of the parallel action will impact how the opposition proceedings are accelerated.
The new measures will take immediate effect and will also be applied to pending opposition proceedings.
The EPO's process for accelerating its proceedings is explained with reference to the following five scenarios of when the notification of parallel proceedings takes place:
- During the opposition period - After the opposition period expires, the EPO will invite the proprietor to comment on the opposition within three months (instead of the usual four months). The EPO will then issue a summons to oral proceedings within two months of receipt of the proprietor's reply, setting the minimum period of two months until the hearing date (unless the parties agree to a shorter period).
- After expiry of the opposition period but before the proprietor's reply to the opposition - The EPO will issue a summons to oral proceedings within two months of receipt of the proprietor's reply, again setting the minimum period of two months until the hearing date (unless the parties agree to a shorter period).
- After the proprietor has replied but before a summons has been issued - The EPO will issue a summons to oral proceedings within two months of receipt of the information on parallel proceedings, again setting the minimum period of two months until the hearing date (unless the parties agree to a shorter period).
- After a summons has been sent - The EPO will reschedule oral proceedings to the earliest possible date (provided that the time saving is significant).
- After the decision has been pronounced at the Oral Proceedings - The Opposition Division will issue its written decision and the minutes within one month of the hearing.
If you'd like to discuss how these measures may affect an existing opposition, or how they may impact future opposition strategy, please get in touch.
Signatures
Applicants will be pleased to know that following a Decision of the President of the EPO, electronic signatures will be permitted on documents used as evidence to support a request for the EPO to register a transfer of rights or a licence. This includes a text string signature and a normal digital signature. This much welcomed simplification of procedure comes into effect from 1 April 2024.