KRAMER BARSKE SCHMIDTCHEN PATENTA HANDLING OF PATENT APPLICATIONS UNDER THE EPC Dr. Ulla Allgayer Patent Attorney European Patent Attorney Munich, Germany March 2005 Radeckestr. 43, 81245 Munich, Germany, Tel +49-89-88 999 00, Fax +49-89-88 999 0-11, office@patenta.de
TABLE OF CONTENTS Introduction 1. The European Patent Organisation 1.1 Position of the European Patent Organisation in the Patent World 1.2 Position of the Patent Granting Procedure under the EPC 1.3 Contracting States 2. Course of the Application Procedure 2.1. Filing of the Application 2.1.1 Applicant 2.1.2 Language 2.1.3 Claiming Priority 2.2 Examination of the Patent Application 2.2.1 Overview of the Examination Stage 2.2.2 The Search Stage 2.2.3 The Substantive Examination Stage 2.2.4 Subject of the Examination under the EPC 2.2.5 Claim Drafting 2.3 Final Stage of the Examination and Grant of a Patent 2.4 Appeal 3. Third party observations 4. Opposition 4.1 Task of Opposition Proceedings 4.2 Requirements of an Opposition 4.3 Course of the Opposition Proceedings 4.4 Trap situation 4.5 Appeal 4.6 Third parties
1 Introduction What is the Europe of intellectual property like? This question can not be answered easily by pointing to a political or geographical map of Europe, at least not as regards patent protection. For trademarks and designs there is now the possibility of achieving a Community Design or a Community Trademark. The territory covered with these protective rights coincides with the European Community and fully corresponds to the political Europe. The patent world, or better the Patent Europe, is, however, different. Obtaining patent protection for the entire European Community with a single patent is still not possible. Similarly, there is no patent certificate which protects an invention by a single patent covering the geographical Europe. The applicants still have to seek for national patent certificates. The possibilities for obtaining national patent protection in the European countries range from national patent applications to the PCT way. In general, a patent can be obtained using the national way, i.e. filing a national patent application with the national Patent Office in the state of interest. Alternatively, the PCT-way may be chosen wherein the respective states are designated or elected states. Finally, there is the possibility of filing a European Patent Application. This is a kind of regional patent application under the head of the European Patent Organisation and governed by the European Patent Convention. It s exact nature will be explained below. The common feature of all ways is the result: The patent protection achieved is always national patent protection, even when filing an application via the European way, i.e. an EP application. Which way is the best for the Applicant is hardly to determine in advance and to generalize. If the client is e.g. sure about seeking patent protection in only few countries in Europe, e.g. less than four, the cheapest way might be filing national applications. In this case the applicant has to deal with several quite different national patent laws and examination procedures. A unification of the examination stage and the widely recognized examination and search quality might be a pro for using the EP-way. The PCT way, finally, favours those who want to gain time.
2 To give assistance and guidelines how to select the appropriate way and to give an idea how European patent (granting) procedures work, an overview of the European Patent System, emphasizing the handling of patent applications under the EPC will be given in the following. It will be discussed what is the nature of a European Patent Application and how is it handled. 1. The European Patent Organisation 1.1 Position of the European Patent Organisation in the Patent World The member States of the European Patent Organisation, especially the founding States 1, had the desire to harmonize the material patent law and the granting procedure. Therefore, they reached agreement on establishing a European Patent Organisation with effect of 1977. The overall goal was to facilitate the granting procedure. The task of the European Patent Organisation is to provide for a single procedure for the grant of patents in all member states and to establish a certain standard governing patents so granted. The European Patent Organisation found a place as a particular arrangement according to Article 19 Paris Convention and at the same time a regional patent treaty according to Article 45 PCT. This means that a European patent application has the same effect, in each of the states for which it is granted, as a national patent granted by that state. Therefore, this is the basis that patent protection can be achieved in the contracting states via the European way on the one hand, and that a PCT application might designate the European Patent Organisation. 1.2 Position of the Patent Granting Procedure As mentioned above, the initial goal was to harmonize the granting procedure in at least some of the European countries. Therefore, the European Patent Organisation has the 1 BE,CH, DE, FR, GB, LU, NL
3 European Patent Office (EPO) as one of its organs, which is responsible for and handling the granting procedure. To balance the parties interests, the founding states decided that the European Patent Organisation has it s seat in Munich, Germany, and that the European Patent Office, as the organ mastering the workload, is also set up in Munich and has a branch office in The Hague (NL). In the meantime, further suboffices in Vienna (AT) and Berlin (DE) were established, wherein the Berlin suboffice formally belongs to the office in The Hague. Based on an application and after positive substantive examination, a European Patent can be granted centrally by the EPO. Therefore, the patent granting procedure can be regarded the administrative core of a European Patent. This core phase in governed by the EPC (European Patent Convention), i.e. the Articles, and the corresponding Implementing Regulations to the EPC. ( the Rules ). If a gap is determined in these regulations, the general rules of procedure of the contracting states have to be taken into account. This administrative core phase is embedded in a pre-administrative phase and a postadministrative phase after grant. The pre-administrative phase is only partly governed by the EPC. Most of it is left to national regulations. This refers e.g. to questions of inventor s rights for not yet filed applications or the application by persons not having the right to a European patent. The post-administrative phase comprises the important questions of infringement, nullity, and the European patent as an object of property. Therefore, in praxis the postadministrative phase is far more important than the pre-administrative phase. There is a provision in the EPC relating to the scope of protection of a European Patent (Art. 69 EPC). In the Protocol to Art. 69 signed by the member states some guidelines are given how to interpret a European Patent as regards the scope of protection. Nevertheless, this question is deliberately only incompletely regulated by the EPC. The determination of nullity and infringement as well as the procedural rules for these proceedings are part of the national laws.
4 1.3 Contracting States When the European Patent Convention (EPC) entered into force in 1977, seven states had ratified the EPC, namely: Belgium, France, Germany, the Netherlands, Luxembourg, Switzerland and Great Britain. Sweden joined yet before the opening of the European Patent Office in Munich in June 1978. The community of contracting states grew in the meantime to 30. Today patent protection can be obtained via the EP-way for the following states: Austria (AT), Belgium (BE), Bulgaria (BG), Switzerland (CH), Cyprus (CY), Germany (DE), Denmark (DK), Estonia (EE), Spain (ES), Finland (FI), France (FR), United Kingdom (GB), Hellenic Republic (GR), Hungary (HU), Ireland (IE), Iceland (IS), Italy (IT), Liechtenstein (LI), Lithuania (LT), Luxembourg (LU), Monaco (MC), Netherlands (NL), Poland (PL), Portugal (PT), Romania (RO), Sweden (SE), Slovenia (SI), Slovakia (SK) and Turkey (TR). Further, for Albania (AL), Bosnia and Herzegovina (BA), Croatia (HR), Latvia (LV), the former Yugoslav Republic of Macedonia (MK) and Serbia and Montenegro (YU) extension agreements exist, such that a European Patent can be extended to these states. Obviously, the contracting states of the EPC do not coincide with the territory of the European Community which has nowadays 25 member states. For example, Switzerland, Iceland and Turkey are at present not members of the European Community. On the other hand, Malta, which is a member of the European Community, is not yet a contracting state of the EPC. The geographical Europe is also not the basis for the patent Europe: Turkey, having at least a part of it s territory outside the strict geographical definition of Europe, is a contracting state. Also the oversee territories of France (Réunion, Martinique and Guadeloupe and la Guyane) can be covered by a European Patent. Norway, however, has not yet become a member of the EPC: Even though there are considerations that the European Community could become a contracting state, i.e. a European Patent could be applied for jointly in respect of all of
5 the states of the European Community and jointly having effect for all of the states, this is still an open question and can probably not be expected to be solved in the short term. Summarizing the unitary granting procedure under the EPC can be used to obtain patent protection in up to 30 contracting states plus 5 extension states. Of course, the applicant is not obliged to apply for a patent in all of the contracting states. The grant of a European Patent may be requested for one or more of the contracting states. 2. Course of the Application Procedure 2.1 Filing of the Application 2.1.1 Applicant The Applicant of a European patent application can be any natural or legal person, i.e. company. Also groups of Applicants are possible. These can even designate different states. If questions as to the person of the applicant arise, e.g. whether it is an entity which can bear rights and is, therefore, allowed to be an applicant, this question has to be determined according to national law and therefore, strictly speaking, belongs to the preadministrative stage of the application. 2.1.2 Language The application has to be filed in one of the official languages of the EPO, which are English, French and German. Exceptions exist only for applicants having their seat or residence in one of the contracting states of the EPC having a language other than one of the official languages of the EPO as an official language. However, also in this case, a translation in one of the official languages of the EPO has to be filed. This also applies when entering the regional European phase of a PCT application. If the international application is originally not in one of the official languages of the EPO, a translation of the application has to be filed when entering the regional phase.
6 The official language of the EPO in which the application is filed is used as the language of the proceedings before the EPO concerning the patent application or the patent. Especially for oversea s applicants this has the advantage that the application can be filed in the English language and that no further translation costs arise at this stage. During the examination stage, all correspondence is in this language and, therefore, communications from the EPO or replies to the EPO drafted in the English language do not have to be translated into English. 2.1.3 Claiming Priority A Paris Convention priority can be claimed. It is obligatory to submit the priority claim at the filing date. Even though the EPC has it s own priority regulations, the provisions mainly correspond to those of the Paris Convention. Accordingly, the priority of several applications can be claimed, for example. At present, resulting from a recent decision 2 of a Board of Appeal of the EPO, there is a strong discussion, whether the regulations of the EPC provide for claiming a single priority more than once for applications filed in the same state (EP-application) for the same invention. In the respective case, the patent proprietor filed two EP applications claiming identical priorities at two subsequent days. The description and figures of the applications were identical, the claims were directed to a method and a device in the earlier application and to only the device in the later application. The Board held the later application not validly claiming the priority, because the priority was already claimed once for the earlier application, and therefore considered the second application lacking novelty with respect to the first application. Even though this is only the opinion of one single Board of Appeal of the EPO, there is at present uncertainty as to multiple priority claims to a single first filing. Therefore, it is recommendable, in case of doubt, to originally file all subject matter in one single 2 T0998/99-3.3.2, L Oréal
7 application and to split this possibly at a later stage by filing of a divisional application if necessary. A certified copy of the priority document and a translation of the priority application into one of the languages of the EPO, where applicable, have to be filed at later stage. 2.2 Examination of the Patent Application 2.2.1 Overview of the Examination Stage The nature of the patent granting procedure under the EPC is a procedure with deferred substantive examination. Nevertheless, it is similar to proceedings with immediate substantive examination, because the term for requesting substantive examination is rather short, as will be shown below. After receiving the application the EPO carries out an examination on filing and an examination as to formal requirements. After passing this stage and (officially) receiving a filing date, the application enters the search stage. The Search Divisions of the EPO are responsible for the search which serves for revealing prior art relevant for the determination of novelty and inventive step of the invention. The search is mainly based on documents, especially patent literature, complemented by non patent literature as journal articles, scientific publications etc. After completing the search the result is published. The publication is either together with the publication of the application after 18 months after the priority date, when the search is already finalized at that time, or separately. For applications claiming priority of a first filing, the publications of the application after 18 months and the publication of the Search Report are usually separately. Within 6 months after publication of the Search Report, the applicant has to file a request for Substantive Examination or to confirm his will to enter the substantive examination stage, if the request has already been filed and the fee been paid earlier.
8 During this term the applicant must also make a decision regarding the contracting states. It is necessary to pay the designation fees for those states for which protection is sought. A maximum of seven designation fees validly designates all 30 contracting states of the EPC. If designations fees have already been paid earlier, the applicant can add more states by paying more fees within the 6 months period. A valid designation can be withdrawn. It is, however, not possible to change a valid designation to another state. When complying with these requirements, the application enters the substantive examination stage which is handled by the Examining Divisions of the EPO and results in the positive case in the grant of a patent or in the negative case in the rejection of the application. Originally the duties of the Munich office of the EPO and the office in The Hague were strictly separated. In particular, the Search Divisions of the EPO were exclusively in the branch at The Hague and the Examining Divisions traditionally in the Munich office. Therefore, search and substantive examination were carried out by different persons. With effect for all applications filed from 1 july 2005, the EPO completes the so called BEST-project (Bring Examination and Search Together). Therefore, all applications filed on or after1 july are either treated in Munich or The Hague and are in the responsibility of a group of persons handling both search and examination. 2.2.2 The Search Stage A European Search Report is drawn up for all applications, except they are withdrawn before completing the search. For international applications entering the regional European phase, the International Search Report takes the place of the European Search Report. Therefore, when entering the regional EP phase, the contracting states for which protection is sought have to be designated. Nevertheless, a supplementary search report is drawn up for international applications, except for applications for which one of the Austrian Patent Office, the Swedish Patent Office, the Spanish Patent Office or the EPO itself has issued the international search report. For international applications for which specific patent authorities, inter alia the
9 Chinese Patent Office, have issued the international search report, the search fee is reduced. The search report so far contains a listing of the relevant documents, indicating the important passages of the document, and their categorization with respect to the claims: X stands for documents which are considered particularly relevant if taken alone(with respect to novelty and/or inventive step, Y for documents which are considered particularly relevant if combined with another document of category Y, i.e. regarding inventive step, A for documents relating to technological background and not hindering patentability, O for documents relating to non written disclosures, P for documents which are filed earlier than the application but published after the filing (or priority) date of the application, D for documents cited in the application, T for documents relating to the basic principle or the theory of the application, E for documents which is relevant for novelty of the application and are published after the filing/priority date of the application and L for documents cited for other reasons. After introduction of the BEST program, the search report will be a so called extended European search report and contain an opinion on whether the application and the invention meet the requirements of the EPC, especially with respect to novelty and inventive step. Therefore, the extended European search report will comprise the contents of a first official action of the EPO, without the requirement to respond. After receipt of the search report the applicant may amend the application (including claims) on his own volition. This is not obligatory but may speed up examination. Especially in the future, when receiving extended European search reports, it seems advisable to treat this similarly to an office action. If no voluntary response is filed to a negative extended European search report, the first office action can be expected to refer simply to the search report and to invite the applicant to deal with the deficiencies mentioned therein. This procedure, in which the first office action refers to a search report without giving new hints or arguments, is exercised by the EPO for international applications for which
10 the EPO acts as preliminary examination authority or international search authority. For these applications, extended (international) search reports are already issued. If problems during the search stage arise, these are mainly related to a determination of the search examiner as to unity of the invention. If the application is considered not fulfilling the requirements of unity, i.e. contains more than one invention or group of inventions, the search examiner invites the applicant to pay (an) additional search fee(s) for the second and subsequent invention(s). If the applicant wishes to maintain the possibility of prosecuting the inventions concerned, it is necessary to pay the additional search fee. The determination of the search examiner can only be disputed under substantive examination. If the examiner then reaches a different conclusion, the additional search fee is refunded. There exists a possibility of speeding up the search stage if the case is important for the client: The EPO provides a PACE program, under which a request for accelerated search can be filed. The request is free of charge and need not be reasoned. 2.2.3 The Substantive Examination Stage After filing the request for substantive examination, the examining divisions of the EPO are competent for handling the application. The examining divisions each are composed of three examiners, one of them is mainly responsible for the application. Speeding up the examination stage is also possible under the PACE program of the EPO. A request which is free of charge can be filed at any time during the procedure. It is not obligatory to give a reason. Usually, the examination is carried out in writing. The EPO gives its opinion and the applicant has the possibility to respond. Usually a 4 months term is set for response. The applicant can file amendments within the original disclosure, especially amendments to the claims. Some examiners are willing to arrange a so called personal interview with the representative and/or the applicant to speed up the granting procedure. This is a personal
11 meeting of the examiner and the representative of the applicant in a rather informal atmosphere. Only the examiner handling the application discusses the case with the representative. Often all open points can be discussed such that the application is ready for grant afterwards. Whether the examiner agrees to an informal interview lies within his discretion. There is no legal basis for such an interview. If during examination problems occur which can not be directly solved in writing or by the informal interview, the applicant has the right to oral proceedings, if requested. This is a hearing before the entire examination division, i.e. all three examiners. As the two examiners who have not handled the application personally so far, may have a different opinion than the primary examiner, there is also a chance to proceed to grant, even if the primary examiner s opinion is originally negative. The topics discussed during substantive examination are mainly novelty, inventive step, clarity and unity. If the application is amended during substantive examination, inadmissible broadening might also be subject of the discussion. 2.2.4 Subject of the Examination under the EPC The application is examined as to all requirements of the EPC, especially technicity, novelty and inventive step. E.g. pure business methods or mathematical methods are excluded from patent protection by the EPC. All pre-published prior art, made available to the public by written description or orally, by use or in any other way can be used for challenging novelty and inventive step of an invention. Regarding novelty, further the content of a European patent application filed earlier than the application to be examined (or bearing an earlier priority date) and which is published after that date is considered belonging to the state of the art, independent of whether the applicants are identical or not. The examination as to inventive step is carried out using the so called problem solution approach. This means, in a first step the so called closest prior art is determined. The closest prior art is a document, which is considered to be the most related to the invention, e.g. because it has the most features in common with the invention or because
12 it is from the same technical field. The closest prior art document has nothing to do with the actual way the inventor took for arriving at the invention. In a next step, the differences of the invention to the closest prior art are identified and their technical effect is evaluated. Based on this, an objective object is determined, which is an artificial object resulting from the comparison of the closest prior art and the invention. Finally, it is determined whether it is obvious for a skilled person to arrive at the inventive solution bearing in mind this object. For example, if a second prior art document addresses this object and employs corresponding features, usually no inventive activity is present. This approach takes into account two questions: Whether the skilled person could combine two documents and whether the skilled person would combine these documents. If e.g. technical aspects hinder the combination of two documents or the transfer of a specific aspect of one device to another, the first question has to be answered negatively. If on the other hand the teachings of the documents are e.g. incompatible in that they lead in different directions or in that they clearly describe a feature which would have to be transferred as negative, this is an indication that the skilled person would not have combined the documents. Sometimes during substantive examination problems occur when the claims have to be amended. The EPO usually handles the requirement that all amendments must be supported by the original description very strictly. Often this results in literal support being required. Therefore, carefully preparing a detailed application with regard to original disclosure is essential because it is very hard if not impossible to correct deficiencies of original disclosure later. 2.2.5 Claim Drafting European style claims may contain multiple dependencies. In fact it is even very favorable to have multiple dependent claims, because all possible feature combinations are originally disclosed. Therefore, problems as to original disclosure and inadmissible broadening of the application, because a respective feature combination is not originally disclosed, can be avoided. Additionally, even if a multiple dependent claim is dependent on another multiple dependent claims, it still counts as one single claim as regards claim fees which are due for every claim above 10. Finally, in European understanding having only few enhances clarity.
13 If an apparatus is claimed, reference signs in parentheses which do not limit the scope of the claim have to be inserted. Further, the EPO usually requires using the so called two-part form. Those features known in combination from a single prior art document, preferably the closest prior art, are placed in the preamble, the remaining features in the characterizing clause. The preamble and the characterizing clause are separated by characterized in that. This usually does not have an impact on the scope of protection. The splitting in the preamble and the characterizing clause may change during substantive examination, especially if new relevant prior art is revealed. For fulfilling clarity requirements, the EPC obliges the applicant to use only one independent claim of a particular category (apparatus, method, use). There are few exceptional circumstances in which it is allowed to use more than one independent claim in a specific category, e.g. if a plurality of interrelated products are claimed. Therefore, as there is no prosecution estoppel as e.g. in the US, it is better to use multiple dependent claims than several independent claims, repeating different feature combinations of identical features. Functional features in the claims are usually allowable. Especially for chemical claims, the Enlarged Board of Appeal of the EPO confirmed in recent decisions 3 that the use of a disclaimer, is allowable, however only for restoring novelty by delimiting a claim against not pre-published state of the art or an accidental anticipation or for disclaiming subject matter which is excluded from patentability for non technical reasons, e.g. because it is a medical treatment method. A disclaimer, however, which becomes relevant for the assessment of inventive step, is not allowable. A claim amendment must not be refused for the sole reason that neither the disclaimer nor the subject matter excluded by it from the scope of the claim have a basis in the application as filed. 3 G 1/03 and G 2/03
14 2.3 Final Stage of the Examination and Grant of a Patent When the examining division comes to the conclusion that an application is ready for grant, a communication under Rule 51(4) EPC is issued. This precedes the grant of a European Patent and informs the applicant of the version intended for grant. If the applicant agrees to the proposed text, he has to file translations of the claims in the two official languages of the EPO which are not the language of the proceedings and pay the fee for grant and printing within a non-extendable term of two to four months set by the EPO. In case of minor amendments, a request for amendment can be filed at the same time and otherwise the approval to the version intended for grant be stated. In this case, the grant procedure usually continues without delay. If major amendments are necessary, the translations of the claims in the amended version have to be filed and the amendment has to be reasoned. If the examining division agrees, the procedure continues without delay. Otherwise, the substantive examination will be reopened. In general, there is no room for appeal to a grant decision which is issued after fulfilling these requirements, because the applicant is deemed to approve the text intended for grant by filing the translations of the claims and complying with the other formal requirements. Therefore, a requirement for appeal, namely gravament, is not given. After grant of the European patent, which will be published in the European Patent Bulletin, the applicant has to validate the patent in the designated states, otherwise the patent is not enforceable there. The term differs between 3 and 12 months, depending on the state. Most states require a translation of the full patent specification which will be published being filed with the national patent offices and a publication fee being paid in this period. The unitary European grant procedure, i.e. the administrative procedure ends with the grant of the European patent, unless an opposition is filed.
15 2.4 Appeal When an application is refused, the applicant has the possibility for appeal. This is handled by the Boards of Appeal of the EPO, which are independent of the Examining Divisions. Usually, a written procedure precedes oral proceedings before the Board, which consists of two technically qualified members and one legally qualified member. The decision is given orally at the end of the oral proceedings. Sometimes the case can already be completely solved in writing. 3. Third party observations In the examination stage of a European patent, the proceedings are carried out between the applicant and the EPO. Even though an application is published after grant and file inspection is possible after that date, a third party has not the possibility of becoming party of the proceedings. However, following the publication of a European patent application, any person may present observations concerning the patentability of the invention, e.g. by filing additional prior art. It is not obligatory to reveal the third party s identity. The observations may be filed at any time in the proceedings. The observations are communicated to the applicant for the patent who may comment on them. Of course, also the examiner may take advantage of new prior art documents. As the third party does not be a party to the proceedings, there is no possibility to get involved in the discussion. If the patent applicant and the examiner agree on minor relevance of the prior art submitted, the third party has not the right to comment again.
16 Therefore, if an application should be attacked, it is more recommendable to await the grant of a patent and to file an opposition, in which the opponent becomes party. If the prior art was submitted earlier as third party observations, and a patent was nevertheless granted, it might be considered less strong and convincing than if it is filed during opposition for the first time. 4. Opposition 4.1 Task of Opposition proceedings Generally the unitary administrative stage of a European patent application ends with the grant of a patent. Therefore, the patent is split up in several national patents. However within a nine months opposition period after grant there is the possibility of attacking a patent with effect for all designated states by means of an opposition. Therefore, in comparison to national nullity proceedings, which would have to be conducted for all designated states separately, a comparatively cheap possibility for challenging a patent s validity is given. It is especially envisaged to give competitors the possibility of using information which is not in the usual search databases of a patent office, e.g. company journals, prospectuses, literature in exotic languages etc. 4.2 Requirements for an Opposition Subject of an opposition is the patent as granted in the language of the proceedings of the EPO. The language of the proceedings remains also the language of the proceedings for the opposition. The opposition can be filed on any one of three grounds for opposition: the subject matter of the European patent is not patentable (mainly novelty and inventive step)
17 the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a skilled person the subject matter of the European patent extends beyond the content of the application as originally filed. It is a two sided procedure which is conducted only if an opposition is admissibly filed. For about 6% to 10% of granted European patents oppositions are filed. A patent proprietor himself must not file an opposition. However, an opposition filed by a third party acting before the EPO as third party but being instructed by the patent proprietor is considered admissible. However, if it is intended to obviate the law, this is not possible. The position of the opponent is not transferable. Only a complete successor of an opponent may continue the proceedings instead of the opponent. The patent, however, can be transferred during opposition proceedings. In this case, the new patent proprietor becomes party of the proceedings. 4.3 Course of Opposition Proceedings Oppositions are handled by the Opposition Divisions of the EPO. An opposition division usually consists of three members, namely three technical examiners. At least two of them shall not have taken part in the proceedings for grant of the patent. It is present practice of the EPO that the primary examiner of the grant procedure is a member of the opposition division for that patent. However, there is the intention to split granting and opposition proceedings completely in the future, resulting in that different examiners will examine the application during grant and in opposition proceedings. The opposition is firstly examined as to formalities and admissibility. Further, the opposition which has to contain a reasoned statement as to facts and arguments of the opposition is communicated to the patent proprietor. If a plurality of oppositions is filed, the other opponents will also receive copies of these oppositions. In this case, all oppositions are dealt with in single opposition proceedings.
18 Subsequently, the patent proprietor has the right to comment on the oppositions and to file amendments if necessary. It is also possible to file main and auxiliary requests. The proceedings are carried out in writing at that stage. Sometimes, there will be further exchanges of opinions. About 1 to 1,5 years after filing of the opposition, oral proceedings are arranged. These take place either in Munich or The Hague before the opposition division. Depending on the number of oppositions filed, these proceedings last between several hours to two days for extremely difficult cases or cases in which many oppositions have been filed. During these proceedings, all aspects of the opposition are discussed. The decision is announced at the end of the proceedings. Generally, the examination of a case under opposition is similar to the examination stage. In opposition proceedings the parties bear their own costs, independent of the result of the opposition. 4.4 Trap Situation Apart of the requirements which are already examined in the granting procedure, any amendments filed during opposition must fulfill the requirement, that they must not contain subject matter which extends the protection conferred. If during substantive examination an amendment to the original application is filed which is attacked by an opponent based on inadmissible broadening of the original application, the patent proprietor might find himself in a situation, in which he has to remove the feature from the claim which is considered extending beyond the content of the application as originally filed, because the opposition division estimates the case differently from the examining division. On the other hand, he is not allowed to remove that feature, because this would result in an inadmissible broadening of the claims of the granted patent. The way of the EPO to solve this situation is the revocation of the patent, if this trap situation cannot be overcome, which is very dramatical for the patent proprietor.
19 Therefore, amendments during substantive examination have to be carefully checked as to original disclosure. 4.5 Appeal With respect to the first instance decision, it is possible for both parties to file appeal. The appeal stage is handled by the boards of appeal and provides a full reconsideration of the case as to facts and arguments. The composition of the board of appeal is normally two technically qualified members and one legally qualified member. If only one party files an appeal, the other party(ies) become(s) member of the appeal proceedings. However, in this case the restriction of a reformation in peius limits the extent of the revision of the decision. 4.6 Third parties At any time during the opposition proceedings, a third party may file observations. However, the party does not become party of the proceedings. Therefore, it is generally not possible to become party of opposition proceedings, when the opposition period has lapsed and an opposition has not been filed. If however, a third party can prove that proceedings for infringement of the same patent have been instituted against him and opposition proceedings are pending, he may intervene in the opposition proceedings. He has to give notice within three months from institution of the infringement proceedings. This also applies for persons having instituted proceedings for a court ruling that he is not infringing the patent. Joining the opposition proceedings by this intervention is still possible in the appeal stage.