Patent Law

EPO Oppositions & Appeals

By Gary Odom and Jordan Kuhn

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 Of these, the patent was revoked in about 37% of cases, was maintained in amended form in about 32% of cases, and maintained as granted (i.e. the opposition was rejected) in about 31% of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.

Full post as published by The Patent Prospector on May 05, 2008 (boomark / email).