Written by: Caleb Gilliam-Scott
The European Patent Office (EPO) has announced accelerated opposition proceedings in cases where it is informed of parallel infringement or revocation proceedings before the Unified Patent Court or a national court. This initiative aims to ensure prompt resolution, enhancing legal certainty and procedural efficiency within the European patent system. Key measures include expedited issuance of procedural actions, quick summons to oral proceedings, and rescheduling of proceedings where necessary. The acceleration measures apply immediately and to pending cases, emphasizing the importance of cooperation among all involved parties.
As outlined recently in the Official Journal, (OJ EPO 2023, A99), the EPO will promptly process oppositions if notified of parallel proceedings. This move is expected to streamline the resolution of disputes, and allow the UPC to stay proceedings until such time as a decision of the Opposition Division (OD) is reached, thereby avoiding such circumstances as the UPC ruling on a patent which is later revoked.
Under these new measures, ODs will strive to issue procedural actions promptly, with a particular emphasis on expediting summons to oral proceedings. The goal is to facilitate a swift final decision in such cases while adhering to the legal framework of the European Patent Convention (EPC) and the parties’ right to be heard.
The applicable acceleration measures vary depending on what point in the procedure the EPO is informed of the parallel court proceedings. If notification occurs during the nine month opposition period following grant, the proprietor will have a reduced time frame of only three months (compared to the usual four) to comment on the opposition. Summons will be issued within the minimally allowable period prescribed by the EPC of two months of receipt of the proprietor’s reply, which is significantly compacted from the more typical time frame of at least six months.
In cases where notification is received after the opposition period but before the proprietor’s reply, summons to oral proceedings will be issued within two months of receiving the reply. Similarly, if notification is received after the proprietor’s reply but before summons are issued, oral proceedings will be scheduled for the same two month minimally allowable period.
One of the more interesting changes is that if summons have already been sent, oral proceedings will be rescheduled to the earliest possible date if a considerable time saving can be made. It remains to be seen how frequently such a measure could be effectively employed when one considers the administrative burdens of rescheduling oppositions involving multiple opponents.
In any event, the new measures also mean that after the oral decision of the OD has been pronounced, the decision and minutes will be issued within one month, thereby ensuring a timely conclusion of the first instance procedure.
However, veterans of the EPO opposition procedure will know that a decision of the OD is not necessarily the end of the story, and that second instance appeal proceedings can be available, further prolonging the time to a final decision.
The UPC is already empowered under Article 10(4) of the Rules of Procedure of the Boards of Appeal to request of its own motion acceleration of second instance appeal proceedings without giving specific reasons. However, whether the UPC will make regular use of this provision remains to be seen, particularly in view of the fact that recent applications for a stay of proceedings in the UPC whilst awaiting the outcome of parallel opposition proceedings have been denied, for example in Central Division (Paris) Case 263/2023 and Central Division (Munich) Case 80/2023.
Indeed, in the 80/2023 case, the court considered that UPCA Member States, all of which are also EPC Member States, established the UPC in full knowledge of the possibility of parallel proceedings. Whilst a stay of proceedings also seems contrary to one of the defining principles of the UPC that cases will be heard within a year, the granting of a stay would avoid conflicting outcomes, which is arguably the more defining principle at the heart of the establishment of the UPC: to provide a unified and harmonised forum for patent disputes. Hopefully, the developing jurisprudence of the UPC will determine whether a stay of proceedings remains a viable measure: notably, the order in 263/2023 has been appealed to the UPC Court of Appeal.
In summary, the EPO’s initiative to accelerate opposition proceedings in cases of parallel court actions, particularly in the UPC, marks a significant step towards enhancing the effectiveness, responsiveness, and harmonisation of the European patent system, ultimately benefitting inventors, rights holders, and the general public alike. As to whether the UPC will actually grant a stay of proceedings on the basis of an accelerated opposition is less clear, and requires further case law.
