5.4.023 Any contracting state may make the protection conferred by a European patent granted (or amended or limited) in a language that is not one of its official languages contingent upon your filing a translation into one of its official languages or its prescribed official language. It may also require you to bear some or all of the cost of publishing the translation. The same applies to extension and validation states.
For more details on the legal position in the contracting states, see National law relating to the EPC (Table IV) and the key points of the London Agreement, which can be found on the EPO website at epo.org/law-practice/legal-texts/london-agreement.html.
You should take great care to comply with these requirements, especially those governing time limits for filing translations, so as not to undermine the protection conferred by the patent in the designated contracting states. The same applies to extension and validation states.
Note: all those states which require a translation of the European patent specification have prescribed that, in the event of failure to observe the relevant national provisions, the European patent will be deemed to be void from the beginning.
Notice of opposition is not deemed to have been filed until the opposition fee has been paid.
5.5.002 Opposition may only be filed on the grounds that:
– the patent's subject-matter is not patentable within the terms of Articles 52-57
– the patent does not disclose the invention clearly and completely enough for it to be carried out by a person skilled in the art
– the patent's subject-matter extends beyond the content of the application as filed.
5.5.003 Notice of opposition must be filed in one copy only within the opposition period in a reasoned statement. That means that the opponent must state at least one ground for opposition under Article 100 and indicate the facts, evidence and arguments presented in support of the ground(s). Otherwise the notice of opposition will be rejected as inadmissible. It is advisable to use the EPO opposition form (EPO Form 2300), which provides all the information needed to ensure that an opposition is admissible. This form is available on the EPO website (epo.org).
Notice of opposition may be filed electronically via the EPO Online
Filing software or EPO Online Filing 2.0, but not via the EPO WebForm Filing service (see points 4.4.001-4.4.006). It may also be filed by post, by hand or by fax.
5.5.004 Immediately after receiving the notice of opposition, the EPO will forward it to the proprietor. Then the admissibility of the opposition is checked. Deficiencies in the notice are communicated to the opponent. Deficiencies under Rule 77(1) must be remedied within the opposition period. Other remediable deficiencies must be corrected within a period specified by the EPO (generally two months). If the deficiencies noted are not corrected in due time, the notice of opposition is rejected as inadmissible.
or as evidence must be specified in the notice of opposition and should be filed at the same time. If not filed with the initial notice of opposition, all cited documents will be requested from the opponent within an additional time limit of two months. If the opponent fails to do so in due time, the opposition division may decide not to take any arguments based on them into account.
5.5.005 Immediately after expiry of the opposition period or the period laid down for remedying deficiencies or presenting evidence, the patent proprietor is invited to file observations and, where appropriate, amendments within a period specified by the EPO (generally four months). Amendments are allowed only if they are occasioned by grounds for opposition under Article 100, including grounds not invoked by the opponent.
5.5.006 The EPO communicates notices of opposition and any letters filed
during opposition proceedings to the other parties for information. However, the EPO does not automatically transmit copies of any documents annexed to notices of opposition or to letters which are available for inspection and download in the European Patent Register.
5.5.007 Once these preliminaries have been completed, the opposition division examines whether the grounds for opposition prejudice the maintenance of the European patent. If necessary it will invite the parties to file observations on its or other parties' communications within a period which it specifies.
Upon receipt of a communication sent in this way, the proprietor may file the description, claims and drawings in amended form where necessary. Late-filed proposals for amendment might not be considered.
If oral proceedings have to be arranged at the request of a party or at the instance of the EPO where it considers them expedient, the summonses are issued as soon as possible. Oral proceedings in opposition are held by videoconference.
In a note annexed to the summons, the opposition division lists and explains the points that in its view need to be discussed for the purpose of the decision that has to be taken. The note generally also includes the opposition division's provisional and non-binding opinion on the positions adopted by the parties, and in particular on amendments to the patent filed by its proprietor. At the same time, the opposition division fixes a final date for filing written submissions or amendments in preparation for the oral proceedings. New facts and evidence presented after that date might not be considered, unless admitted on the grounds that the subject of the proceedings has changed.
5.5.008 If the opposition division finds that the grounds for opposition Art. 101 prejudice the maintenance of the European patent, it revokes the R. 81 patent. If it finds that the grounds do not prejudice the GL D-VIII maintenance of the patent as granted, it rejects the opposition.
5.5.009 If the opposition division finds that the patent can be maintained in Art. 101(3)(a) amended form, it delivers an interlocutory decision stating that, R. 82 with the amendments made by the proprietor, the patent and the GL D-VI, 7.2
invention to which it relates meet the requirements of the EPC. A separate appeal is allowed against such an interlocutory decision.
5.5.010 Once the interlocutory decision under point 5.5.009 becomes final, R. 82(2) the proprietor is given three months in which to pay the fee for GL D-VI, 7.2.3
publishing a new specification and file a translation of any amended claims in the two official languages other than the language of the proceedings.
If the proprietor has filed handwritten amendments during oral R. 82(2) proceedings, they will be invited to file the amended text in a form GL D-VI, 7.2.3 compliant with Rule 49(8) within the above-mentioned three-month period.
5.5.011 If these acts are not performed in due time, they may still be validly R. 82(3) performed within two months of notification of a communication pointing out the failure to observe the time limit, provided that a surcharge is paid within this period.
If either of the acts is not performed within this period either, the patent is revoked.
5.5.012 The contracting states make the amended text subject to the same Art. 65 translation requirements as the patent specification (see point 5.4.023).
5.6.001 As patent proprietor you may request the revocation or limitation of Art. 105a your own patent. You can file the request at any time after grant, R. 93 after opposition proceedings or even after expiry of the patent. GL D-X, 2.1. However, a request for revocation or limitation filed while opposition proceedings in respect of the European patent are pending is deemed not to have been filed, since the opposition proceedings have precedence. In case of revocation, the requester will be informed that the request will be handled in the pending opposition proceedings without payment of a fee. Subsequently, the Article 105a proceedings will be terminated. If a revocation request is pending at the time of filing an opposition, the revocation procedure will be continued for reasons of procedural efficiency. If limitation proceedings are pending at the time of filing an opposition, the limitation proceedings are terminated and the limitation fee is reimbursed. Opposition proceedings will be continued.
5.6.002 Requests must be filed direct with the EPO. Requests may be filed electronically via the EPO Online Filing software or EPO Online Filing 2.0, but not via the EPO Web-Form Filing service (see points 4.4.001-4.4.006). They may also be filed by post, by hand and by fax. The general provisions for filing a European patent application
ff) and the need for professional representation for non-resident patent proprietors apply (see points 4.1.023-4.1.024). Furthermore, the request is deemed to be filed only when the limitation or revocation fee is paid.
