2005 Statistics for EPO oppositions and appeals

1. Background

1.1 Every year, the European Patent Office (EPO) publishes its statistics for appellate and opposition activities in the EPO. This paper summarises the latest available statistics, covering the year 2005.

2. Opposition statistics

2.1 First Instance Organisational and Procedural Context

2.1.1 After grant of a European patent, there is file centrally at the EPO a notice of opposition to the patent, alleging that the patent was wrongly granted.

2.1.2 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. English is the language of the proceedings in by far the majority of cases. Oppositions in which multiple opponents file opposition against a patent are not uncommon.

2.1.3 Oppositions are examined and decided (at first instance) by an “Opposition Division”. Opposition Divisions usually comprise three members all of whom are technically qualified; occasionally, the Division is augmented by a legally qualified member. The EPO Opposition Division initially examines the opposition to see whether it is formally admissible. If it is, the Opposition Division then conducts a substantive examination of the opposition, based on the arguments of the opponent(s) and the patentee, the text of the granted patent and its prosecution history.

2.2 2004 and 2005 First Instance Case Statistics

2.2.1 In 2005, oppositions were filed against 5.4% of granted patents, compared with a rate of 5.3% in 2004. Fewer oppositions were filed in 2005 (2960) than in 2004 (3100), reflecting a slight decrease in the number of patents granted over the same period.

2.2.2 There were 2,330 opposition cases decided at first instance in 2005, compared with 1980 settled in 2004. Of these, the patent was revoked in about 38% of cases, was maintained in amended form in about 32% of cases, and the opposition was rejected in about 30% of cases.

3. Appeal board statistics

3.1 Appellate Level Organisational and Procedural Context

3.1.1 The EPO Boards of Appeal consist of the Technical Boards of Appeal, the Legal Board of Appeal, the Disciplinary Board of Appeal and the Enlarged Board of Appeal.

3.1.2 There are four subject matter divisions in the Technical Boards of Appeal:-

  • Mechanics
  • Chemistry
  • Physics and
  • Electricity

3.1.3 These hear appeals against decisions of the examining division (ex partes proceedings) as well those of Opposition Divisions.

3.1.4 In 2005, two new Chemical Boards of Appeal were added, so that now the number of boards for each subject area is as follows:-

  • 7 Mechanics
  • 10 Chemistry
  • 3 Physics and
  • 4 Electricity

3.1.5 The Enlarged Board of Appeal decides important points of law, but is a closed jurisdiction in that it may only address (i) points of law referred to it by the other boards of appeal and (ii) points of law referred to it by the President of the EPO.

3.1.6 As of 31 December, there were 138 Boards of Appeal chairmen and members. Of the members, 88 were technically qualified and 25 were legally qualified. Chairmen of Technical Boards of Appeal can be expected to be technically qualified. Technical Boards of Appeal usually comprise three members, of whom one is legally qualified and rarely five members of which usually two will be legally qualified.

3.2 2004 and 2005 Appeal Case Statistics

3.2.1 Numbers of cases, types, distribution and language

3.2.1.1 The number of new appeal cases filed with the EPO Boards of Appeal increased by 9.8%, from 1533 in 2004 to 1684 in 2005.

3.2.1.2 Of the new cases filed in 2005, the vast majority (1625) were with the Technical Boards of Appeal, of which 40% related to ex partes proceedings, about 58% related to inter partes proceedings and about 2% related to Patent Convention Treaty (PCT) protestss.

3.2.1.3 The distribution of new appeal cases in 2005 between the various

Technical Boards of Appeal was as follows:-

  • 33% Mechanical
  • 38% Chemical
  • 11% Physical and
  • 18% Electrical

3.2.1.4 One new case was referred to the Enlarged Board of Appeal in 2005.

3.2.1.5 In 2005, the EPO Boards of Appeal collectively decided 1,499 cases. Again, the great majority of cases, 1432 in total, were decided by the Technical Boards of Appeal.

3.2.1.6 About 37% of these related to ex partes proceedings, about 61% related to inter partes proceedings and about 2% related to PCT protests.

3.2.1.7 The distribution of decided appeal cases between the various Technical Boards of Appeal in 2005 was as follows:-

  • 35% Mechanical
  • 39% Chemical
  • 12% Physical and
  • 14% Electrical

3.2.1.8 The Enlarged Board of Appeal decided 4 cases in 2005.

3.2.1.9 English was the language of the proceedings used in the majority (68%) of appeal proceedings and PCT protests filed in 2005. German and French were used in 26% and 6% of cases, respectively.

3.2.2 Duration and Outcome

3.2.2.1 The average duration of ex partes technical proceedings decided before the EPO in 2005 was 24 months.

3.2.2.2 Over 68% of ex parte cases (357 in total) were actually decided after substantive legal review, i.e. not terminated through rejection of the appeal as inadmissible or through withdrawal of the appeal or patent/patent application.

3.2.2.3 About 62% of substantively reviewed ex parte appeals were successful (in whole or in part) and about 38% were dismissed. For about half of the successful appeals, grant of patent was ordered, and for the other half resumption of examination was ordered.

3.2.2.4 When appeals by the patentee and appeals by the opponent are considered together, the average duration of inter partes proceedings that were decided before the Technical Boards of Appeal in 2005 was 31 months.

3.2.2.5 Over 83% of inter partes cases (721 in total) were settled after substantive legal review (as opposed to mere issues of admissibility). Of these, about 63% were successful (in whole or in part), with:-

  • maintenance of the patent as granted ordered in about 3% of cases
  • maintenance of the patent in amended form ordered in about 28% of cases
  • revocation of the patent ordered in about 20% of cases, and
  • resumption of opposition proceedings ordered in about 12% of cases.

No statistics are available for the outcome of the 37% of appeals which were unsuccessful, the results of which depend, inter alia, on which party was the appellant.

For more information on this topic, please contact Jon Broughton at HLBBshaw in Epping, Essex, UK. E-mail: jon.broughton@hlbbshaw.com. Visit the website at www.hlbbshaw.com.

The information contained in this alert is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

 

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