EPO opposition: choice of representative by nationality

Our first European Patent Office (EPO) opposition series installment examined the nationalities of opponents and patentees (for further details please see "EPO opposition: popular technologies and opposition behaviour of parties by nationality"). We reported that parties outside European Patent Convention (EPC) territories rarely took the initiative to oppose the grant of a European patent centrally at the EPO. However, opposition is becoming an increasingly important tool for retrieving freedom to operate on the European markets.

Further analysis of which kinds of representative those involved in opposition proceedings are inclined to work with reveals that 78% of EPC patentees appoint a patent attorney from the same country. For EPC opponents, this number is even higher at 80%. Factors such as linguistic and cultural similarities as well as proximity to the representative are clear advantages that may explain these statistics. However, these factors are less applicable to non-EPC patentees and opponents, which are legally obliged to appoint a European representative.

Their preference is clear as Figure 1 shows that in 2016 (as in 2013 to 2015) almost 90% of non-EPC patentees and opponents chose a German or UK representative. While from 2013 to 2015, German representatives were more popular among non-EPC patentees (49%) than UK representatives (40%), this was reversed in 2016 (43% and 46%, respectively). For non-EPC opponents, the situation remained more or less the same in 2016 compared with 2013 to 2015: German representatives were still more frequently chosen than UK representatives (46% and 42%, respectively).

Figure 1. Non-EPC representation in EPO oppositions, 2016

Figure 2 shows which non-EPC nations are typically represented by German and UK representatives. The vast majority of UK patent attorney portfolios of non-EPC patentees and opponents consist of US parties (80%), with Japanese parties having the second-largest share as non-EPC patentees (9%) and Israeli parties as non-EPC opponents (9%). German patent attorney portfolios of non-EPC parties show more variation in terms of patentee and opponent nationality: US parties also have the largest share as non-EPC patentees (49%) and opponents (59%), albeit considerably smaller compared to UK representatives. However, German representatives have a much larger share of Japanese patentees (36%) and Japanese opponents (17%) compared to UK representatives (9% and 2%, respectively) as well as a small share of Korean (4%) and Chinese (3%) patentees and Chinese opponents (4%); for UK representatives, the Korean and Chinese party share is approximately 0%. German and UK patent attorneys have equal shares of Israeli patentees (2%), but Israeli opponents slightly preferred German over UK representation (12% and 9%, respectively).

While UK patent attorney portfolios have a small Mexican opponent contribution (5%), this nationality is absent from German patent attorney portfolios. The preference of non-EPC nationalities for a German or UK patent attorney is more apparent from Figure 3.

Figure 2. German versus UK representation, 2016

Between 2013 and 2015, East Asian countries preferred German over UK representatives. This trend continued in 2016: German attorneys handled patentee opposition proceedings more often than UK attorneys for parties from China (50% and 14%, respectively), Japan (72% and 20%, respectively), Korea (63% and 15%, respectively) and Taiwan (80% and 0%, respectively). This preference was even higher when acting for the opponent: German patent attorneys represented 91% of Chinese, 86% of Japanese, 100% of Korean and 100% of Taiwanese opponents. UK patent attorneys represented only 9% of Chinese and 11% of Japanese opponents (with no Korean or Taiwanese opponents represented).

Representation by UK patent attorneys was higher for Southeast Asian countries – for example, all Malaysian opponents chose a UK representative. Further, Singaporean patentees chose UK representation more often than German representation (60% and 40%, respectively). However, all Singaporean opponents chose German representation when opposing a patent before the EPO.

Between 2013 and 2015, English-speaking non-EPC countries were more inclined to appoint UK over German patent attorneys; this trend continued in 2016. This tendancy of parties from large English-speaking non-EPC countries to appoint a UK representative is clearer when these parties act as patentees than when they act as opponents. German representatives gain in popularity at the expense of UK representatives when filing EPO oppositions for parties from large English-speaking non-EPC countries. Therefore, for these parties, the percentage gap between German and UK representation is narrowed for opponent representation. This trend is clearly visible for US and Australian parties, where German and UK representation was as follows:

• US patentees: 32% and 56%, respectively (24% gap);
• US opponents: 38% and 47%, respectively (9% gap);
• Australian patentees: 46% and 54%, respectively (8% gap); and
• Australian opponents: 36% and 36%, respectively (0% gap).

The most striking example is Canada, where German and UK representation for patentee cases was 25% and 50%, respectively (25% gap), and for opposition cases was 50% and 0%, respectively (50% gap).

Compared with 2013 to 2015, in 2016 the representation preferences for English-speaking non-EPC countries shifted towards German patent attorneys at the expense of  UK representation when filing oppositions – for example, from 2013 to 2016, UK patent attorneys lost approximately one-third of their opposition share from Australian opponents, while German patent attorneys gained two-thirds of theirs; for Canadian opponents, all cases went to German representatives, leaving UK representatives with none; and for US opponents, UK patent attorneys lost a small percentage of their share, while the share of German representatives increased slightly.

Figure 3. Representation for non-EPC patentees and opponents in EPO oppositions, 2016

Regarding other non-EPC countries, German representatives are favoured over UK representatives by Brazilian (75% and 25%, respectively), Israeli (53% and 33%, respectively) and Russian (100% and 0%, respectively) patentees. For opponents from these countries, the German preference remained – for example, 60% of Israeli opponents chose German representation, while 40% were represented by UK patent attorneys. India, Mexico and South Africa were more inclined to choose UK representatives when acting as patentees; however, there was yet another dramatic increase in popularity of German over UK representation when these nationalities acted as opponents. For example, German and UK representation for Indian patentees was 30% and 70%, respectively, and for Indian opponents it was 63% and 0%, respectively. While South Africa only chose UK representatives as patentees, they shifted to appointing only German representatives as opponents.

The data illustrates an emerging trend whereby representation preferences for non-EPC nationalities shift towards German patent attorneys at the expense of UK representation when filing EPO oppositions.

Summary
Most EPO oppositions involving non-EPC parties are divided between German and UK representatives. While most non-EPC patentees and opponents in UK patent attorney portfolios are US parties, German patent attorney portfolios of non-EPC parties show greater variation in terms of nationality: US parties also have the biggest share, but the shares of Japanese, Korean and Chinese patentees and opponents are comparatively much larger. In countries traditionally tied to the United Kingdom such as Canada and Australia, there is a shift towards choosing German over UK representation.

The next installment in our EPO opposition series will address private practice patent firms’ engagement in EPO oppositions, which is an important factor when choosing a representative.