CLR IV C Opposition procedure

1.
Legal character of opposition proceedings and applicable principles
2.
Filing and admissibility requirements
2.1.
Entitlement to file an opposition
2.1.1
General
2.1.2
Examination at any stage in the proceedings of entitlement to oppose
2.1.3
Filing of opposition by patent proprietor or inventor
2.1.4
Filing of opposition on behalf of a third party – straw man
2.1.5
Repeated filing of an opposition by the same person
2.1.6
Filing of multiple oppositions by different persons
2.1.7
Filing a joint opposition – multiple opponents
a)
Payment of a single opposition fee
b)
Representation, legal status and composition of a multiple opponent
2.2.
Formal requirements for opposition and filing in due time
2.2.1
Introduction
2.2.2
Opposition period
2.2.3
Payment of opposition fee
2.2.4
Identity of opponent and correction of opponent's name
2.2.5
Title of invention
2.2.6
Statement of extent of opposition
2.2.7
Statement of grounds for opposition
2.2.8
Indication of facts, evidence and arguments – substantiation of grounds for opposition
a)
Principles
b)
Sufficient substantiation of grounds for opposition
c)
Insufficient substantiation of grounds for opposition
d)
Alleged public prior use
e)
Non-patent literature or oral disclosure
2.2.9
Other requirements for notice of opposition
2.3.
Procedural aspects of examination of admissibility
2.3.1
Formalities officers' powers in opposition proceedings
2.3.2
Admissibility of opposition to be checked at every stage
2.3.3
Rejection of opposition as inadmissible
3.
Substantive examination of opposition
3.1.
Introduction
3.2.
Extent of opposition
3.3.
Scope of examination of grounds for opposition
3.4.
Fresh grounds for opposition
3.4.1
General
3.4.2
Objections of lack of novelty and lack of inventive step
3.4.3
Grounds raised against amended claims
3.4.4
Scope of examination of new grounds for opposition by opposition division
3.4.5
Examination of fresh facts and evidence related to a fresh ground
3.4.6
Opportunity to comment on new grounds for opposition
4.
Late submissions
4.1.
Discretionary decision
4.2.
Sufficient reasoning
4.3.
Concept of "in due time"
4.4.
Documents cited in the patent specification or search report
4.5.
Criteria for exercise of discretion
4.5.1
Different approaches
4.5.2
Review of discretionary decisions by the boards
4.5.3
Prima facie relevance
4.5.4
Submission contrary to fair and expedient procedure
4.5.5
Abuse of proceedings
4.6.
Party entitled to rely on earlier decision
4.7.
Late submissions of new arguments
4.7.1
New arguments – definition
4.7.2
Late submissions of new arguments in opposition proceedings
5.
Amendments in opposition proceedings
5.1.
Admissibility of amendments
5.1.1
Principles
5.1.2
Amendments occasioned by national prior rights
5.1.3
Time frame for filing amendments
5.1.4
Amending a non-opposed sub-claim
5.1.5
Filing of new dependent or independent claims
a)
Filing new dependent claims (sub-claims)
b)
Filing new independent claims
5.1.6
Applicability of Rule 43(2) EPC in opposition proceedings
5.1.7
Applicability of Rule 137(5) EPC in opposition proceedings
5.1.8
Amendments intended to remedy a lack of clarity
5.1.9
Removal of error (in claim) in opposition proceedings – Rule 139 EPC
5.2.
Scope of examination of amendments
5.2.1
General
5.2.2
Extent of power to examine amended claims for compliance with Article 84 EPC
5.3.
Proprietor's approval of amended text of the patent
6.
Right to be heard in opposition proceedings
6.1.
Principle of equal treatment
6.2.
Invitation to file observations under Article 101(1) EPC
6.3.
Invitation to file observations under Rule 82(1) EPC
6.4.
EPO communication concerning submissions by the other party – adequate opportunity to reply
6.5.
Opportunity to present comments
6.6.
Change in composition of opposition division during opposition proceedings
7.
Acceleration of opposition proceedings in the case of pending infringement proceedings
8.
Decisions of opposition division
8.1.
Revocation of a European patent for failure to fulfil formal requirements – by way of decision
8.2.
Interlocutory decisions
8.2.1
General
8.2.2
Maintenance of European patent as amended
 

Source: http://www.epo.org/law-practice/legal-texts/html/caselaw/2019/e/clr_iv_c.htm

Date retrieved: 17 May 2021

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