European Patents just outside of their 9 month Opposition Period can still be Opposed under the EPO COVID-19 extensions

European Patents just outside of their 9 month Opposition Period can still be Opposed under the EPO

The background:

It is common-place to await the end of the EPO 9 month Opposition period before using any recently granted EP patent in an enforcement, letter before action or negotiation regarding the monopoly rights under that patent. This is to ensure that any potential infringer does not oppose the Patent. An opposed EPO patent is not equally enforceable across EP states as a non-opposed patent, with the opposition potentially causing delays in litigation and restrictions on preliminary injunctions, at a financial and commercial cost.

The change:

The EPO issued a Notice dated 15th March 2020 concerning the disruptions due to the COVID-19 outbreak, providing for an automatic extension to certain “periods” expiring on or after that date for all parties and their representatives.  In principle, this extension is given to enable parties to safeguard continuation of their IP rights at the EPO in the light of the coronavirus pandemic.
Not all deadlines are extended under the Notice. Parties and their representatives will need to check exactly which deadlines are extended. Interestingly, a deadline which is extended at the EPO under the 15 March 2020 Notice (confirmed by Legal Division members at the EPO) is the Opposition deadline of European Patents. This deadline is set as “Within nine months from the publication of the mention of the grant of the European patent …….”. This nine month period for any European Patent, if expiring on or after 15 March 2020, remains open as long as the EPO Notice is extended. The original EPO Notice has been extended once, with the extension currently expiring 4 May 2020.
Thus, while the EPO Notice of 15 March 2020 is generally in favour of patent applicants, the extension of the Opposition deadline is against them. 

The consequences:

If you have, or have rights under, a European patent where the nine-month from grant opposition period expired on or after 15 March 2020, this opposition period remains open until (at least currently) the 4 May 2020. You may wish to consider holding back on any action which could put a potential infringer on “notice” of the patent until after the EPO extension periods are finalised and the patent can no longer be opposed. In contrast, if you were undecided, unaware or unable to oppose a European patent of interest by it original opposition deadline, now may be the time to reconsider (or reconsider an approach/licence request from the patent owner).
Be aware of your options, and use them wisely.
The EPO website on coronavirus is continually updated and can be found here.
Please contact Kristina Cornish or your usual Kilburn & Strode advisor if you have any questions on this subject.

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