8.7.3 Procedure in opposition proceedings 

Rule 82(2), third sentence, provides for one exception to the principle that a decision determining the final text of the patent may be based only on formally compliant documents. It exempts patent proprietors from having to file documents compliant with the requirements of Art. 2(7) of the decision of the President of the EPO dated 25 November 2022 (OJ EPO 2022, A113) at oral proceedings in opposition before an interlocutory decision on the documents forming the basis for maintaining the patent can be taken. The proprietor may choose instead to submit a formally compliant version of the amended text within the time limit under Rule 82(2) (OJ EPO 2016, A22). Proprietors will nevertheless be encouraged to file compliant documents during oral opposition proceedings.

In contrast, in written opposition proceedings, an interlocutory decision to maintain the patent as amended may be issued only on the basis of formally compliant documents since the invitation under Rule 82(2) applies only to documents filed during oral proceedings.

If the interlocutory decision issued by the opposition division at oral proceedings was based on documents which do not comply with Art. 2(7) of the decision of the President of the EPO dated 25 November 2022, i.e. which contain handwritten amendments, the opposition division will ask the proprietor in the invitation under Rule 82(2) to file a formally compliant version of the amended text. The invitation will specify the formally deficient amended paragraphs and/or claims for which replacement paragraphs and/or claims need to be filed. The same applies where a decision of the boards of appeal remits the case to the department of first instance with the order to maintain the patent on the basis of amended documents with handwritten amendments.

In reply to the invitation from the opposition division under Rule 82(2), the proprietor will have to submit replacement paragraphs and/or claims which contain a formally compliant verbatim reproduction of the text as determined by the interlocutory decision (or the decision of the board of appeal). Any discrepancy between the text of the formally deficient paragraphs (and/or claims) specified in the invitation under Rule 82(2) and the text of the replacement paragraphs (and/or claims) will trigger a communication under Rule 82(3). A communication under Rule 82(3) will also be sent if the proprietor does not reply at all or not in time, if the replacement paragraphs and/or claims are incomplete or if the replacement paragraphs and/or claims are again formally deficient.

If a formally compliant version of the verbatim text of the specified amended paragraphs (and/or claims) is not submitted within two months of notification of the communication under Rule 82(3), the patent will be revoked.