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May 5, 2008

EPO Oppositions & Appeals

From HLBBshaw: "After grant of a European patent, there is a nine-month window in which a person may file centrally at the EPO a notice of opposition to the patent, alleging that the patent was wrongly granted. Oppositions are relatively common because they represent an economically attractive way of removing an IP obstacle to a planned commercial activity over a substantial market place."

From: 2006 Statistics for EPO Oppositions and Appeals - Update

In 2005 and 2006, oppositions were filed against 5.4% of granted patents, in 2006 (2,990). There were 2,641 opposition cases decided in 2006. Of these, the patent was revoked in about 37% of cases, was maintained in amended form in about 32% of cases, and maintained as granted (i.e. the opposition was rejected) in about 31% of cases.

There are four subject matter divisions in the Technical Boards of Appeal:
o Mechanics
o Chemistry
o Physics and
o Electricity

The number of new appeal cases filed with the EPO Boards of Appeal increased by 19%, from 1,684 in 2005 to 2,003 in 2006. Of the new cases filed in 2006, the vast majority (1,967) were with the Technical Boards of Appeal, of which 43% related to ex partes proceedings, about 56% related to inter partes proceedings and about 1% related to Patent Convention Treaty (PCT) protests.

The distribution of new appeal cases in 2006 between the various Technical Boards of Appeal was as follows:
o 32% Mechanical
o 36% Chemical
o 12% Physical and
o 20% Electrical

About 58% of substantively reviewed ex parte appeals were successful (in whole or in part) and about 42% were dismissed. For about half of the successful appeals, grant of patent was ordered, and for the other half resumption of examination was ordered.

Over 76% of inter partes cases (703 in total) were settled in 2006 after substantive legal review (as opposed to mere issues of admissibility). Of these, about 60% were successful (in whole or in part), with:
o maintenance of the patent as granted ordered in about 3% of cases
o maintenance of the patent in amended form ordered in about 27% of cases
o revocation of the patent ordered in about 20% of cases, and
o resumption of opposition proceedings ordered in about 10% of cases.

A look back over the last 5 years' statistics does not reveal any significant changes in the activity of the Opposition Division or the Boards of Appeal, or in the outcome of their decisions.

Read the report.

Posted by Patent Hawk at May 5, 2008 4:47 PM | International

Comments

If the procedure is the same now as it was ten years ago, the EPO Technical Boards of Appeal hear appeals de novo. They give no deference or presumption to the decision of the Opposition Division. This gives opposers a second bite at the apple.

Not to mention that, in my experience, they rule from the bench. And there is no further appeal available, at least in a realistic sense.

It is a dicey procedure for a patentee.

Posted by: pikkumatti at May 6, 2008 5:56 AM

Someone, please enlighten me. Why do so many people think that the U.S. should have an opposition system? Why would this be better than the current inter partes and ex parte reexamination system? If something is wrong with reexmination, why not change reexamination? Would an opposition system in the U.S. be no more useful than the current reexamination systems?

Posted by: The Mad Prosecutor at May 6, 2008 6:11 AM

Someone, please enlighten me. Why do so many people think that the U.S. should have an opposition system? Why would this be better than the current inter partes and ex parte reexamination system? If something is wrong with reexmination, why not change reexamination? Would an opposition system in the U.S. be no more useful than the current reexamination systems?

Posted by: The Mad Prosecutor at May 6, 2008 6:12 AM

Mad

I like the idea of pre-grant input from the public. Maybe not an inter partes fight, but at least a chance to file PA, which they can now do, but without any official status.

The application ought to be first examined for non-art rejections -- 101, 112, essentially. If it passes the initial examination it ought to be published for "opposition" for, say, 90 days. Only this is not an inter partes contest, it just gives the public the opportunity to submit art BEFORE examination on PA begins. After the 90 day period, the application is examined for 102 and 103.

This would make life a whole lot easier for the examiners as it would put some of the search burden on the applicant's competitors, where it belongs. After all, they are the ones who benefit from a rejection.

Also, after issue, the patent should be exposed to re-examination and invalidity defenses based on prior art for only a limited time, say 5 years. Like TMs, patents should eventually be entitled to a period of incontestability. 20 years of uncertainty is just nuts.

Posted by: Babel Boy at May 6, 2008 8:14 AM

Mad P, I think that the only reason that the EPO opposition division gets as much business as it does is because of the economies of scale. The opposer has a silver bullet, in opposition, to knock out (or limit) the patent for all of Europe.

OTOH, if only one jurisdiction were involved, then I'd guess most potential opposers would merely wait for the demand letter & litigation.

P.S. Having incontestable patents is insanity.

Posted by: pikkumatti at May 6, 2008 12:36 PM

There are now 34 member States at the EPO. An opposition at the EPO wipes out the patent, in all 34 jurisdictions. There is no appeal from an EPO Decision to revoke the patent. The EPO is not immune from political pressure. Like the USPTO, it currently sees too many trivial patent claims. SO: maybe it's good to oppose? BUT: a failed opposition gives a European patent a presumption of validity, and owners of European patents save their opposed property by amending down to a narrower (but still potent) claim. Answer me this: why are 70% of oppositions at the EPO filed by Germans. That's for me to know, and you to find out.

Posted by: MaxDrei at May 7, 2008 1:41 PM