Oppositions & Appeal proceedings

Oppositions

Even after it has been granted, the validity of your European patent can be challenged centrally at the European Patent Office (EPO) by third parties. During these formal proceedings you present your case to a panel of three technically skilled examiners from the EPO who will look at the case from an EPO (technical) perspective and consider submissions from you and the party (or parties) attacking your patent.

It is important to understand that formal opposition, in which contending parties are involved, is very different from examination proceedings, where both the examiner and the applicant are willing to look for allowable subject-matter. During opposition each argument is challenged and scrutinised by the other party and the element of surprise can be a valuable asset to both sides.

A wide range of strategies

In the nine months after your European patent has been granted there is a chance that a competitor could file a notice of opposition and request revocation or substantial amendment of your patent. Of the patents opposed at the European Patent Office in this way, 30% are revoked, and a further 40% are reduced in scope during the course of the opposition (EPO Annual Reports). This leaves only 30% of opposed patents unscathed by the process. To help you navigate this period, NLO’s patent attorneys can help you defend your patent and assess the potential risks of limitation of your patent to your business.

                                                            Opposition numbers NLO

Strawman in oppositions

NLO can act as a 'strawman', an entity instructed to oppose a European patent for a party that wishes to remain anonymous. The entity files an application in its own name while acting for the party that wishes to remain anonymous. 

Besides anonymity, there are many advantages to using NLO as a straw man in an opposition. Why is it useful? 

• To prevent activities from coming to the owner's attention (secrecy of strategy).
• To avoid disrupting a friendly relationship with the owner. Avoiding direct conflicts. 
• Strategic flexibility: allows multiple oppositions to be filed against the same patent with different arguments.

Appeal

An appeal in opposition prompts a review of the decision given by the opposition division and thereby provides the losing party an opportunity to challenge that decision.

During examination the examiner refuses to grant a patent, and launching an appeal is the last resort for the applicant to obtain a grant (apart from filing a divisional application and starting all over again at a substantial cost).

The Board of Appeal
The Board of Appeal has its own set of Rules of Procedure, which put strict requirements on how appeal proceedings must be pursued. For example, the grounds of appeal must contain the appellant’s complete case, and late-filed submissions are only very reluctantly allowed in the procedure. Therefore, appellants should draft their submissions with great care. It is at the Board’s discretion to accept any new submission during the appeal proceedings. Many written and unwritten rules of appeal proceedings need to be considered, and failing to abide by them could be devastating for the appellant, who may lose more than necessary.

Appeal in Opposition proceedings
The Rules of Procedure are applied particularly stringently in opposition appeals, when several parties with opposing interests are involved. It requires extensive experience to carefully navigate the balance between successfully representing the appealing party without giving the other side leverage to undermine your case, while at the same time adhering to the stringent rules of procedure.

Appeal in Examination proceedings
Also in examination, it is highly recommended to follow the Rules of Procedure. The Board of Appeal is typically strict as regards late filing during oral proceedings. This is especially true when a submission brings about a new case or (auxiliary) claim sets are presented that could have been filed and defended before the examiner.

Online hearings
Since Covid, videoconference (ViCo) has become the method of choice for most opposition hearings. Our attorneys have access to high tech equipment on every office. Personal hearings still take place. NLO is ideally situated for personal hearings because of its strategic position with headquarters in The Hague and a satellite office in Munich, close to the technical Boards of Appeal.