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Guidelines for Examination

 
 
Table of Contents - Guidelines for Examination
Part D Guidelines for Opposition and Limitation/Revocation Procedures

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
2.1
Technically qualified examiners
2.2
Legally qualified examiners
2.3
Chairman
3.
Allocation of duties and appointment of members of the Opposition Division
4.
Tasks of the Opposition Divisions
4.1
Examination of oppositions
4.2
Decision concerning the awarding of costs by the Opposition Division
4.3
Ancillary 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
3.1
Form of the opposition
3.2
Notices of opposition filed electronically
3.3
Notices of opposition filed by fax
3.4
Signature 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
1.1
Forwarding of the notice of opposition to the formalities officer
1.2
Examination for deficiencies in the notice of opposition
1.2.1
Deficiencies which, if not remedied, lead to the opposition being deemed not to have been filed
1.2.2
Deficiencies which, if not remedied, lead to the opposition being rejected as inadmissible
1.2.2.1
Deficiencies under Rule 77(1)
1.2.2.2
Deficiencies under Rule 77(2)
1.3
Issue of communications by the formalities officer as a result of examination for deficiencies
1.3.1
Communication 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
1.3.2
Communication 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
1.3.3
Extent of the formalities officer's obligation to issue the above communications
1.4
Subsequent procedure in the event of deficiencies which may no longer be remedied
1.4.1
Deficiencies which may no longer be remedied, as a result of which the opposition is deemed not to have been filed
1.4.2
Deficiencies which may no longer be remedied in accordance with Rule 77(1) and (2), resulting in the opposition being rejected as inadmissible
1.5
Notifications to and observations by the proprietor
1.6
Subsequent procedure
2.
Activity of the Opposition Division
3.
Rejection of the opposition as inadmissible by the Opposition Division, the proprietor of the patent not being a party
4.
Termination of opposition proceedings in the event of inadmissible opposition
5.
Preparation of substantive examination
5.1
Inadmissibility at a later stage
5.2
Invitation to the proprietor of the patent to submit comments and communication of opposition to the other parties concerned by the formalities officer
5.3
Filing of amended documents in reply to the notice of opposition
5.4
Communication of observations from one of the parties to the other parties
5.5
Decision concerning the admissibility of an opposition, the proprietor of the patent being a party
5.6
Examination 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
2.1
Extent to which the patent is opposed
2.2
Examination 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
6.1
Basis of this ground for opposition
6.2
Distinction 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 proprietor
2.1
Basis for the examination
2.2
Revocation of the patent
3.
Invitation to file observations
3.1
Examiners' communications
3.2
Summons to oral proceedings
4.
Communications from the Opposition Division to the proprietor of the patent
4.1
Communications from the Opposition Division; reasoned statement
4.2
Invitation to file amended documents
5.
Additional search
6.
Examination of the opposition during oral proceedings
7.
Preparation of the decision
7.1
General remarks
7.2
Preparation of a decision to maintain a European patent in amended form
7.2.1
Procedural requirements
7.2.2
Decision on the documents on the basis of which the patent is to be maintained
7.2.3
Request for publishing fee and translations
Chapter VII – Details and special features of the proceedings
1.
Sequence of proceedings
1.1
Basic principle
1.2
Exceptions
2.
Request for documents
3.
Unity of the European patent
3.1
Basic principle
3.2
Factors affecting the unity of the European patent
4.
Procedure where the proprietor is not entitled
4.1
Stay of proceedings
4.2
Continuation of proceedings
4.3
Interruption of time limits
4.4
Department responsible
5.
Continuation of the opposition proceedings in the cases covered by Rule 84
5.1
Continuation in the case of surrender or lapse of the patent
5.2
Continuation on the death or legal incapacity of the opponent
5.3
Continuation 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
1.1
General remarks
1.2
Revocation of the European patent
1.2.1
Revocation on substantive grounds
1.2.2
Revocation for failure to pay the prescribed fee for publishing or to file a translation
1.2.3
Revocation for failure to notify the appointment of a new representative
1.2.4
Revocation in the event of requirements not being met until after expiry of time limits
1.2.5
Revocation of the patent in the event that the proprietor no longer wishes the patent to be maintained as granted
1.3
Rejection of the opposition
1.4
Maintenance of the European patent as amended
1.4.1
Taking of a final decision
1.4.2
Statement in the decision of the amended form of the European patent
2.
Other decisions
2.1
Decision on the inadmissibility of an opposition or intervention
2.2
Decisions which do not terminate proceedings
2.3
Decision on a notified loss of rights at the request of the person concerned
2.4
Decision on re-establishment of rights
2.5
Decision on closure of the opposition proceedings
Chapter IX – Costs
1.
Charging of costs
1.1
General principle
1.2
Decisions on the apportionment of costs
1.3
Costs to be taken into consideration
1.4
Principle of equity
2.
Procedure for the fixing of costs
2.1
Fixing of costs by the Opposition Division
2.2
Appeal 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
2.1
Deficiencies which lead to the request being deemed not to have been filed
2.2
Deficiencies which, if not remedied, lead to the request being rejected as inadmissible
3.
Decision on request for revocation
4.
Substantive examination (limitation)
4.1
Department responsible
4.2
Basis for the examination
4.3
Scope of the examination
4.4
Further stages of the examination
4.5
Third-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
7.1
Precedence of opposition proceedings
7.2
Filing of opposition after decision on limitation
8.
Legal status of decisions
9.
Withdrawal of the request
10.
Different sets of claims
10.1
Limitation results in the claims becoming different in different Contracting States
10.2
Limitation is different for different Contracting States because the claims as granted were different for different Contracting States
11.
Multiple requests