Opposition: Proprietors requests


Posts: 4
Joined: Fri Feb 27, 2009 8:55 pm
Location: Århus, Denmark

Opposition: Proprietors requests

Post by jensjep » Tue Oct 27, 2009 6:11 pm

During Opposition Proceedings, after summons to oral proceedings, the proprietor could file written submissions and/or amendments under R116 EPC, typically no later than 1 month before the oral proceedings. The written submissions are typically accompanied by claims according to a Main Request and one or more Auxiliary Requests.

But how does the proprietor do that online? The EP(Oppo) form allows for a lot of different requests and document attachment, but I can't seem to find any options that clearly are to be used for the above-mentioned task.
How does the proprietor request that the patent is maintained as granted?
How does the proprietor request that the patent is maintained as amended according to one or more of e.g. the Auxiliary Requests?
How does the proprietor attach amended claim sets, i.e. Main Request and one or more Auxiliary Requests?

Maybe it's there, but it's not clear and unambigious. Should he use "Other Request" and "Other Document" ??

Jens Jeppesen

Posts: 154
Joined: Mon Oct 13, 2003 1:44 pm
Location: Munich

Re: Opposition: Proprietors requests

Post by twesthues » Tue Oct 27, 2009 8:36 pm

Dear Jens,

so far, users have not had a problem with the submissions you describe. The attachment options change once the role of the respective party is identified i.e. if you select 'other actions' and under Names a natural or legal proprietor - you'll see that under the documents options (see also user guide page 238 - http://docs.epoline.org/onlinefilingdoc ... 090323.pdf )

a) As proprietor of the patent
- Reply to notice(s) of opposition -OR-
- Reply to an examination report in opposition proceedings
- Main request document
- Separate auxiliary request document
- Other documents

If you cannot identify any suitable attachment option, there is always - the 'Other documents' -> <other document> at the bottom of the available list where you'll be asked to define the title of the document yourself - so anything can be attached.

Regarding the request to maintain, well these requests are partially redundant depending on the reply of the proprietor or their representatives, if amendments are filed, it is clear that this is in connection with an implicit request to maintain in an amended form. If however, it is still desired to make this request explicit, you can of course use the free text 'other request' for this.

Ultimatively, whatever attachment option is used and whatever means of expressing the desired request is used, it has no impact on the legal status of the submission or its content, at least for the time being.

I hope this helps,
at your service for the EPO Online Services Team!