EPO Extends Acceleration of Oppositions to Cases with Co-pending UPC or National Revocation Actions

The EPO has recently modified its approach to acceleration of EPO opposition proceedings in cases where there is a co-pending action before the Unified Patent Court (UPC) or a national court of a member state.

In particular, the EPO previously provided for acceleration of oppositions if there was a co-pending infringement action before the UPC or a national court of a member state, but did not specifically provide for acceleration based on a co-pending revocation action. The EPO has now said that it will accelerate oppositions if there is an infringement action or revocation action pending before the Unified Patent Court (UPC) or a national court of a member state. The EPO will accelerate the oppositions if they are informed of the UPC/national action by the court in question or at the request of one of the parties to the opposition.

The timelines for an accelerated procedure remain unchanged – the EPO will aim to issue the next procedural action within 3 months of initiation of acceleration or, if the patentee’s response to the opposition has not yet been received, within 3 months of receipt of the patentee’s response. In addition, oral proceedings will be (re)scheduled to take place as soon as possible. Requests from parties to extend deadlines or postpone oral proceedings will only be granted exceptionally and if properly substantiated.

In practice, the changes to the EPO’s approach will result in acceleration being extended to the relatively small number of EPO oppositions where there is a co-pending revocation action but no corresponding claim for infringement. The previous practice of the EPO in not providing a specific framework for acceleration of such cases had attracted criticism, since there did not seem to be any justification for treating such cases differently from those with a co-pending infringement action.

Although the current changes only relate to acceleration of first instance opposition proceedings, the acceleration of appeals is also possible (see Article 10 of the Rules of Procedure of the Boards of Appeal). We would expect the Boards of Appeal to take into account the modified approach for acceleration of first instance proceedings when deciding whether or not to accelerate an appeal.