• What is needed for an opposition?

    THE OPPONENT

    An opponent needs no locus standi to file; "any person" may file an opposition.

    The opposition needs to identify the opponent, and thus cannot be anonymously filed. For this reason, an opposition cannot be filed by an agent or representative acting for an undisclosed principal, but anonymity can nevertheless be achieved by filing the opposition in the name of a mere "straw man". A straw man should not be used to circumvent some legal reason restraining the "real" opponent from opposing in his own name. However, the EPO has no power to investigate the bona fides of an opponent in the absence of evidence that he is illegitimately acting for another, named, party.

    CONTENTS OF THE OPPOSITION

    The opposition needs to set forth fully the opponent's case, including "an indication of the facts, evidence and arguments". It therefore needs to present a prima facie reasoned case for invalidity.

    The only possible grounds are that :

    • the invention is unpatentable (either because of the prior art, or because it is inherently unpatentable on the grounds that it relates to non-statutory subject-matter such as a "method for doing business")
    • the invention is insufficiently described; or
    • matter has been added to the patent application since filing

    Copies of citations relied upon need not be filed with the opposition, but must be filed when requested by the EPO. Any such documents not in English, French or German must be translated into one of these on request by the EPO. The opposition itself should be in one of these three languages, or in another European language if a translation is subsequently filed. Non-European languages are inadmissible. Witness statements need not be filed with the opposition.

    EVIDENCE OF PRIOR USE

    Many oppositions fail because prior use is insufficiently supported by evidence. To successfully plead prior use typically requires :

    • a description of what was used;
    • a description of the dates and circumstances of the use;
    • evidence of availability - typically delivery notes, perhaps supported by brochures, invoices or publicity;
    • testimony (for example by affidavit) setting out the circumstances - this may be filed after the opposition