EPO will accelerate oppositions when there are parallel UPC infringement or revocation proceedings

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The EPO have announced in the November 2023 Official Journal that they will accelerate opposition proceedings when they are informed of infringement or revocation proceedings related to the same patent pending before the UPC or a national court/authority of a member state.

This is a change in practice – previously, the EPO would only accelerate an opposition if infringement proceedings were pending before the UPC or national courts/authorities. We consider this to be good news for all stakeholders.

This change was discussed at the EPO Opposition Matters Conference held on 23-24 November 2023. Here are some interesting takeaways from the discussion:

  • The UPC/national courts will usually inform the EPO that there is an infringement/revocation action pending before it, and so the EPO will usually automatically accelerate the opposition proceedings.
  • Alternatively, a party to the opposition proceedings may request accelerated processing.
  • When opposition proceedings are accelerated, the aim is to issue the next procedural action within 3 months.
  • Where a date for oral proceedings has already been set, they may be rescheduled to take place at the earliest possible date.
  • We understand that this automatic acceleration of opposition proceedings only applies to first instance proceedings, and not necessarily the appeal stage (although, parties with a legitimate interest can still request acceleration of appeal proceedings).

This is clearly good news in terms of legal certainty and providing a harmonised and consistent approach. It reduces the chance of getting divergent or inconsistent decisions at the EPO and UPC, and will reduce delays and possibly costs for the parties involved.
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Lucy Coe

Lucy is a Senior Associate and Patent Attorney at Mewburn Ellis. She works primarily in the computer software, electrical engineering, transport, and mechanical engineering sectors. She is involved with all stages of the patent process, particularly in the drafting and prosecuting of applications in the UK and at the EPO. She also has experience in oppositions and opinion work.

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