Part D
Guidelines for Opposition and Limitation/Revocation Procedures

Contents

Chapter I – General remarks

1.The meaning of opposition

2.Opposition after surrender or lapse

3.Territorial effect of the opposition

4.Entitlement to oppose

5.Intervention of the assumed infringer

6.Parties to opposition proceedings

7.Representation

8.Information to the public

Chapter II – The opposition division

1.Administrative structure

2.Composition

2.1Technically qualified examiners

2.2Legally qualified examiners

2.3Chair

3.Allocation of duties and appointment of members of the opposition division

4.Tasks of the opposition divisions

4.1Examination of oppositions

4.2Decision concerning the awarding of costs by the opposition division

4.3Ancillary proceedings

5.Allocation of tasks to members

6.Duties and powers of members

7.Allocation of individual duties

Chapter III – Opposition

1.Time allowed for filing notice of opposition

2.Opposition fee

3.Submission in writing

3.1Form of the opposition

3.2Notices of opposition filed electronically

3.3Notices of opposition filed by fax

3.4Signature of the notice of opposition

4.Derogations from language requirements

5.Grounds for opposition

6.Content of the notice of opposition

Chapter IV – Procedure up to substantive examination

1.Examination for deficiencies in the notice of opposition and communications from the formalities officer arising from this examination

1.1Forwarding of the notice of opposition to the formalities officer

1.2Examination for deficiencies in the notice of opposition

1.2.1Deficiencies which, if not remedied, lead to the opposition being deemed not to have been filed

1.2.2Deficiencies which, if not remedied, lead to the opposition being rejected as inadmissible

1.2.2.1Deficiencies under Rule 77(1)

1.2.2.2Deficiencies under Rule 77(2)

1.3Issue of communications by the formalities officer as a result of examination for deficiencies

1.3.1Communication in the event of deficiencies as described in D‑IV, 1.2.1 which, if not remedied, will lead to the opposition being deemed not to have been filed

1.3.2Communication in the event of deficiencies as described in D‑IV, 1.2.2 which, if not remedied, will lead to rejection of the opposition as inadmissible

1.3.3Extent of the formalities officer's obligation to issue the above communications

1.4Subsequent procedure in the event of deficiencies which may no longer be remedied

1.4.1Deficiencies which may no longer be remedied, as a result of which the opposition is deemed not to have been filed

1.4.2Deficiencies which may no longer be remedied in accordance with Rule 77(1) and (2), resulting in the opposition being rejected as inadmissible

1.5Notifications to and observations by the patent proprietor

1.6Subsequent procedure

2.Activity of the opposition division

3.Rejection of the opposition as inadmissible by the opposition division, the patent proprietor not being a party

4.Termination of opposition proceedings in the event of inadmissible opposition

5.Preparation of substantive examination

5.1Inadmissibility at a later stage

5.2Invitation to the patent proprietor to submit comments and communication of opposition to the other parties concerned by the formalities officer

5.3Filing of amended documents in reply to the notice of opposition

5.4Communication of observations from one of the parties to the other parties

5.5Decision concerning the admissibility of an opposition, the patent proprietor being a party

5.6Examination of the admissibility of an intervention and preparations in the event of an intervention

Chapter V – Substantive examination of opposition

1.Beginning of the examination of the opposition

2.Extent of the examination

2.1Extent to which the patent is opposed

2.2Examination of the grounds for opposition

3.Non-patentability pursuant to Art. 52 to 57

4.Insufficient disclosure of the invention

5.Clarity of claims

6.Subject-matter of the European patent extending beyond the original disclosure

6.1Basis of this ground for opposition

6.2Distinction between allowable and unallowable amendments

Chapter VI – Procedure for the examination of the opposition

1.General remarks

2.Adherence to the text of the European patent submitted or approved by the patent proprietor

2.1Basis for the examination

2.2Revocation of the patent

3.Invitation to file observations

3.1Opposition division's communications

3.2Summons to oral proceedings

4.Communications from the opposition division to the patent proprietor

4.1Communications from the opposition division; reasoned statement

4.2Invitation to file amended documents

5.Additional search

6.Examination of the opposition during oral proceedings

7.Preparation of the decision

7.1General remarks

7.2Preparation of a decision to maintain a European patent in amended form

7.2.1Procedural requirements

7.2.2Decision on the documents on the basis of which the patent is to be maintained

7.2.3Request for publishing fee, translations and a formally compliant version of amended text passages

8.Request to adjourn opposition proceedings

Chapter VII – Details and special features of the proceedings

1.Sequence of proceedings

1.1Basic principle

1.2Exceptions

2.Request for documents

3.Unity of the European patent

3.1Basic principle

3.2Factors affecting the unity of the European patent

4.Procedure where the patent proprietor is not entitled

4.1Stay of proceedings

4.1.1Date of the stay of proceedings

4.1.2Legal character and effect of the stay of proceedings

4.2Continuation of proceedings

4.2.1Continuation after a final decision

4.2.2Continuation regardless of the stage reached in national proceedings

4.3Interruption of time limits

4.4Department responsible

5.Continuation of the opposition proceedings in the cases covered by Rule 84

5.1Continuation in the case of surrender or lapse of the patent

5.2Continuation on the death or legal incapacity of the opponent

5.3Continuation after the opposition has been withdrawn

6.Intervention of the assumed infringer

7.Publication of a new specification of the patent

8.Transitional provisions for Art. 54(4) EPC 1973 and Art. 54(5)

Chapter VIII – Decisions of the opposition division

1.Final decisions on an admissible opposition

1.1General remarks

1.2Revocation of the European patent

1.2.1Revocation on substantive grounds

1.2.2Revocation for failure to pay the prescribed fee for publishing, to file a translation or to file a formally compliant version of amended text passages

1.2.3Revocation for failure to notify the appointment of a new representative

1.2.4Revocation in the event of requirements not being met until after expiry of time limits

1.2.5Revocation of the patent in the event that the patent proprietor no longer wishes the patent to be maintained as granted

1.3Rejection of the opposition

1.4Maintenance of the European patent as amended

1.4.1Taking of a final decision

1.4.2Statement in the decision of the amended form of the European patent

2.Other decisions

2.1Decision on the inadmissibility of an opposition or intervention

2.2Decisions which do not terminate proceedings

2.3Decision on a notified loss of rights at the request of the person concerned

2.4Decision on re-establishment of rights

2.5Decision on closure of the opposition proceedings

Chapter IX – Costs

1.Charging of costs

1.1General principle

1.2Decisions on the apportionment of costs

1.3Costs to be taken into consideration

1.4Principle of equity

2.Procedure for the fixing of costs

2.1Fixing of costs by the opposition division

2.2Appeal against the fixing of costs by the opposition division

3.Enforcement of the fixing of costs

Chapter X – Limitation and revocation procedure

1.Introduction

2.Examination for deficiencies in the request

2.1Deficiencies which lead to the request being deemed not to have been filed

2.2Deficiencies which, if not remedied, lead to the request being rejected as inadmissible

3.Decision on request for revocation

4.Substantive examination (limitation)

4.1Department responsible

4.2Basis for the examination

4.3Scope of the examination

4.4Further stages of the examination

4.5Third-party observations during the examination

5.Formal procedure for limitation when the request is allowable

6.Rejection of the request

7.Relation to opposition proceedings

7.1Precedence of opposition proceedings

7.2Filing of opposition after decision on limitation

8.Legal status of decisions

9.Withdrawal of the request

10.Different sets of claims

10.1Limitation results in the claims becoming different in different contracting states

10.2Limitation is different for different contracting states because the claims as granted were different for different contracting states

11.Multiple requests