EPO Stays Examination and Opposition Proceedings Relating to Prior Use in Light of Enlarged Board Referral G1/23

As reported recently, the issue of anticipation by prior use has been referred to the Enlarged Board of Appeal. The referral is pending as case G1/23.

The EPO has now issued a notice in which it immediately stays all cases currently in examination or opposition in which the decision depends entirely on the outcome of the referral to Enlarged Board. This is a standard practice that allows time for the law to be reviewed without risking depriving applicants of their rights, either via refusal of their application or the grant of an invalid patent. However, as Enlarged Board referrals typically require one or two years to resolve, it also introduces a significant delay.

The EPO will notify parties in cases affected by the stay and will withdraw any communications on those cases which set time limits for response. However, in practice, for cases on which there is no outstanding communication from the EPO, the application of the stay may only become apparent when the examiner next considers the application/opposition.