Challenging a patent before the European Patent Office (EPO) is an essential step to ensure a fair and competitive market as well as to maintain the integrity and quality of patents in the market. Patent challenges take place in the following procedures before the EPO:
Third-Party Observations
When
Observations can be submitted at any time while proceedings are pending, either in examination before a patent is granted or before the oral proceedings in opposition or appeal.
How
Provide written observations on why the patent should not be granted, based on lack of novelty, inventive step, sufficiency of disclosure, patentability, and unallowable amendments. Clarity can only be used as a ground in examination proceedings.
Outcome
While third-party observations do not directly result in a decision, they can influence the examination, opposition, or appeal process, potentially leading to the rejection of the patent (application) or restriction of the claimed scope.
Opposition (First Instance)
When
File an opposition within nine months of the patent’s grant.
How
Submit a written notice detailing the grounds for opposition, such as lack of novelty, inventive step, insufficient disclosure, or unallowable amendments. Be aware that clarity is not a ground of opposition, unlike for third-party observations in examination. We suggest consulting a European Patent Attorney to prepare and file an opposition before the EPO.
Outcome
The EPO will review the opposition and decide whether to maintain, amend, or revoke the patent.
Appeal (Second Instance)
When
If dissatisfied with the opposition decision and if you are adversely affected by it, you can file an appeal within two months of the notification of the opposition decision and further substantiate it within four months.
How
Submit a notice of appeal and a written statement explaining the grounds of appeal.
Outcome
The EPO’s Boards of Appeal will reassess the case, potentially overturning, modifying the original decision, or remitting it back to the first instance.