EPO doubles down on opposition acceleration commitment

Accelerated EPO oppositions.  The perennial topic of anguish, anger, anxiety, annoyance, etc amongst patent attorneys and litigators, alike.  With the Unified Patent Court (UPC), a new dimension arrives.  Patent litigation strategists are not just plotting out their timelines of national proceedings v EPO, but also the UPC.  

The UPC forecasted this issue and made provision in its Rules of Procedure.  Rule 298 provides for the Court of its own motion or at a request of a party requesting that EPO opposition or amendment proceedings (including any appeal) be accelerated at the EPO.  Rule 295 also gives the power to the UPC to stay their proceedings pending the EPO.  So, very similar to the national courts of most EPC contracting states.  

Cue, Kat Friend, Sir Robin Jacob (UCL).  Robin - who is the only robin that the IPKat is on friendly, non-prey terms with - shared news from the EPO that their practice will now double down on acceleration of opposition proceedings for both infringement and revocation.  

The first document passed to this Kat was a letter from EPO President Antonio Campinos.  The letter with the subject line "Revised practice for accelerating EPO opposition proceedings"  states as follows:

"The impressions from this year’s European Judges’ Forum in Venice, successfully conducted under your experienced presidency, are still very fresh. The discussions once more showed that the aim of further harmonisation in the European patent system and the interplay between UPC, national and EPO proceedings are of great interest for patent judges and lawyers alike. In this regard, I would like to inform you and your Association about a revision of the EPO’s practice to accelerate oppositions, as mentioned by my services during the Venice Symposium.

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, which replaces the notice dated 24 April 2023 and will be published this month, then reads as follows:

"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."

But we all know what comes next.  The timing.  Following the EPO streamlining in 2016, the normal time to an opposition decision went from around 22 months to 17 months (after all appeals were exhausted, the time could take 4+ years).  With the doubling down on acceleration at the EPO and competition with the UPC, the question remains: what does EPO acceleration look like in the UPC-era?

And, Sir Robin reminds you, if you want to join in on the debate as to the role of the EPO in the era of the UPC, UCL's IBIL is hosting "EPO and UPC:  Friends or Foe?" on 29 November.  Details here.