Eight days – the longest ever opposition hearing at the EPO?

The EPO Opposition Division just issued its decision on European Patent 2 188 302 following an eight-day hearing. We asked the EPO whether this might qualify as one of their longest ever opposition hearings, if not the longest. Unfortunately, the EPO doesn’t keep statistics on this particular metric, so instead we’ve had to settle for this being the longest Opposition Division hearing in the collective memory of Mewburn attorneys.

This unusually long opposition hearing took place in two parts, all by videoconference. The Mewburn team led by Katherine Green and comprising Sean Constable, Rhiannon Wescott and Simon Kiddle, defended Genentech’s patent against 11 opponents.

The hearing was originally scheduled for five days in June 2021. By the fifth day the Division had decided that the claims of Genentech’s Main Request had basis in the application as filed, and defined an invention that was sufficiently disclosed and novel. However, there was not enough time remaining to discuss inventive step. The Division therefore adjourned the hearing until June 2022, summoning the parties to a further three days of discussion, after which the Division decided that the invention of the Main Request was not obvious.

The decision itself is very thoroughly reasoned, running to 126 pages! One of the interesting aspects of the reasoning was that the Division decided that the invention was a non-obvious “problem invention”. This is notable because so-called “problem inventions” seem to have fallen out of favour at the EPO in recent years.

The videoconference format of the hearing worked well. In fact, very large hearings tend to run particularly smoothly by videoconference as compared with in-person hearings. The EPO’s current pilot project, resulting from the Covid-19 pandemic and under which all Opposition Division hearings run by videoconference, is due to carry on until 31 December 2022. This means that the EPO is likely to announce later this month what will happen in 2023 – and possibly beyond.