EPO (Challenges) Flashcards
What are the rules around requesting central limitation?
EPO
Can only be requested by the EP proprietor.
Cannot be requested if there pending opposition proceedings, and if opposition proceedings start during limitation proceedings then the latter is terminated and any fees are refunded.
It must be requested in writing. If there is more than one proprietor, the requester needs to show that he is entitled to act on behalf of the others. The limitation fee must also be paid. Copies of the proposed amendments must obviously be provided.
There is no substantive examination of the amendments, but they’re examined to ensure that they’re actually a limitation and also that they do not add matter. If the amendments have issues, the Examiner will give two months for filing a correction.
What happens if you use central limitation but the claims have already been restricted in some of the national states?
EPO
It depends on legal specifics of the country in question, but generally countries will accept the narrowest claims.
For example, if there are national proceedings that have limited the patent, they may override their limitation if central limitation is more restrictive. However, they won’t do this if their own claims are more restrictive.
What must be done if a central limitation request is accepted?
EPO
A printing fee must be paid and claim translations into the other EPO languages must be filed, all within 3 months.
There is a 2 month grace period with a surcharge.
Failure to act by the end of the grace period results in the request being rejected.
When does central limitation take effect?
EPO
From the publication of the mention of the decision on limitation in the EP bulletin.
What are the differences between the procedures for central revocation and central limitation?
EPO
They’re generally the same. There’s obviously no examination element to it.
How does a patent owner limit or revoke the patent if there are pending opposition proceedings?
EPO
Limitation: just submit your limited claims as a main request.
Revocation: declare that you no longer approve the text as granted and don’t fight the opposition.
Can the 9-month opposition window be extended?
EPO
No.
What are the grounds for opposition?
EPO
Patentability, sufficiency and added matter.
What is the opposition procedure?
EPO
The opponent files the notice of opposition with the opposition fee. The notice is not deemed to have been received until the fee is paid. The notice of opposition must set out the facts, evidence and arguments on which the opposition relies (i.e., the grounds), and must identify the opposed claims.
The proprietor has 4 months to submit observations in response. The opponent and proprietor can respond to each other’s observations after that but no formal deadlines set. The EPO then issues a preliminary and non-binding opinion.
Then come oral proceedings (parties have to request it, or the EPO can call oral proceedings unilaterally - NB technically oppositions do not have to end in oral proceedings, but they basically always do).
The decision can be appealed (by either party).
What can be appealed?
EPO
Any decision made by the EPO except those made by the search division.
How does one appeal a decision?
EPO
They file a notice of appeal within 2 months of the written decision with the fee. It is deemed to not have been filed until the fee is paid.
Then within 4 months of said decision a written statement setting out the facts, evidence and arguments relied upon (i.e., the grounds of the appeal) must be filed. The statement must set out why the decision should be reversed.
The division who is being challenged will get to look at the appeal first to see if it changes their mind. If not then it gets passed to the Board of Appeal.
What happens if a Board of Appeal revokes a granted patent?
EPO
The national patents are all revoked. Revocation is retroactive to grant.
What is a petition for review?
EPO
A decision of a Board of Appeal can be referred to an Enlarged Board of Appeal by a party to the case only if there was something wrong with the Board of Appeal (for example, a member of the board had a personal interest or there were no oral proceedings despite a party requesting it, etc.). It’s not for contesting points of law.
NB a petition for review can only be made if the objection was raised during the original appeal proceedings (assuming it was possible to in the first place) but was dismissed.
A petition for review must be filed within 2 months of the decision.
If successful, the Enlarged Board of Appeal can reopen the appeal proceedings and change the members of the Board of Appeal.
