LSIPR Webinar: Greater scrutiny for late-filed EPO documents, says HGF
Late-filed documents will come under greater scrutiny in light of changes to the European Patent Office’s (EPO) opposition procedure.
That was one of the key points discussed during a joint webinar between LSIPR and HGF yesterday, March 21.
The webinar, which focused on updates and trends in opposition and appeal practice before the EPO, discussed the streamlining of the opposition procedure by the EPO, the changes as a result of the procedure, and provided some practical tips in view of the changes.
The streamlining will mainly be achieved via a significant shortening of the written proceedings phase of opposition practice. The average pendency time for opposition has decreased from 27 months to 15 months under the changes.
Catherine Coombes, patent director at HGF, and Chris Moore, partner at HGF, were on hand to provide their views on the changes.
This will mainly be achieved by a significant shortening of the written proceedings phase of opposition practice. According to Moore, the streamlined opposition procedure could result in opposition divisions being stricter in allowing late-filed documents and late-filed requests into the proceedings.
“I think it’s certainly the case that late-filed documents will come under greater and greater scrutiny,” explained Moore.
“I’ve had six or seven oral proceedings in the past couple of months, some of which have required late-filed documents and the analysis on their prima facie usefulness seems to be taken at a very early stage by the Opposition Division.”
He thinks the trend is going to be towards analysing those documents in a lot more depth, moving forward.
Between 2014 and 2017, granted patents increased from 64,619 to 105,635 at the EPO. In conjunction with this, oppositions also increased from 3,157 to 4,072 within the same timeframe.
Moore added that it is “essential” that patentees consider when and why they are going to file auxiliary requests, which are requests that parties may submit in addition as an alternative to their main request.
He said that you have to be more prepared when filing an auxiliary request, and that you won’t be able to turn up with “a few back pocket requests” on the day. “Certainly in opposition proceedings, it is increasingly unlikely that the Opposition Division is going to indulge you with that,” he commented.
“In appeal proceedings, the Board of Appeal may have a greater degree of leeway, but I would expect that the rules of procedure are going to become ever more used to stop people from filing those late-filed requests.”
When it comes to multiparty oppositions, you are at an advantage if you receive first opponent status, added Coombes.
“The first opponent gets to speak first in every matter so they get to control to a greater extent how the opponents are going to argue the cases.”
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