EPO opposition: popular technologies and opposition behaviour of parties by nationality

The European Patent Office (EPO) Annual Report 2016 showed a 40% increase in granted patents relative to 2015. The effects of this leap in productivity on parties' opposition behaviour were anticipated in 2017 given the nine-month opposition filing term. According to the EPO Annual Report 2017, the absolute number of opposed patents increased by almost 25% in 2017, having remained more or less constant between 2013 and 2016. Given the 10% rise in granted patents in 2017 relative to 2016 (an increase of almost 55% relative to 2015), the absolute number of oppositions is expected to increase further in 2018. Opposition is thus becoming an increasingly important tool for parties to secure their freedom to operate.

This report is the first of a series of five reviews that analyses data from the public EPO registers on filed oppositions in 2016 and follow-up trends relative to 2015 and earlier (for further information please see “EPO opposition: key players, key fields and the key to change”). The first report in our series focuses on the technologies and nationalities of parties involved in opposition. The second part will discuss the choices of representative made by parties. The third and fourth parts will cover the engagement in opposition of patent firms in private practice and the core technologies of their opposition portfolio. Finally, the fifth part will highlight the share of in-house IP departments of companies in opposition.

Technologies and nationalities
From 2015 to 2016, it seems that more technological areas became aware of the benefits of opposition to their patent strategy.

While opposition is traditionally most popular for International Patent Classification Classes A (human necessities), B (performing operations, transporting) and C (chemistry, metallurgy), which altogether accounted (at about equal contributions) for 68% of total oppositions in 2016 and 72% in 2015, opposition seemingly becomes more important in Class F technologies (mechanical engineering, lighting, heating, weapons), whose opposition rates nearly doubled from 8% in 2015 to 14% in 2016.

There was little change in the opposition rate from 2015 to 2016 for the remaining classes (D (textiles, paper) and E (fixed constructions), which hover around 2% to 3%, and G (physics) and H (electricity), which hover around 6% to 7%).

From 2015 to 2016 the nationalities of parties that are typically involved in EPO opposition as patentees and opponents remained more or less the same. Opposition appears to have been used by the same types of party, at least in terms of nationality. Figure 1 illustrates that in 2016 German parties continued to account for nearly one-third of cases as patentees (30%) and for nearly half of the oppositions filed (46%).

While the number of oppositions with US and German proprietors in 2016 was relatively proximate (22% versus 30%), for their participation as opponents in opposition, the 10% share of US parties was dwarfed by a 46% share of German parties – US parties do not appear to have discovered the benefits of centralised invalidation through EPO opposition.

EPC and non-EPC countries
As in 2013 to 2015, the 2016 data suggests that non-European Patent Convention (EPC) countries are most often involved in EPO opposition because it is filed against them, rather than through active involvement as an opponent.

This is reflected by the fact that 34% of patentees and only 13% of opponents involved in 2016 oppositions were parties from non-EPC countries – numbers which have remained more or less constant from 2013. The data shows no increased awareness or lowered threshold for parties from non-EPC countries to participate in EPO opposition.

Figures 2 and 3 expand the patentee-opponent ratio for the top five EPC member states that account for most 2016 oppositions and for the non-EPC nationalities that account for more than 0.2% of total 2016 oppositions, respectively.

Besides Switzerland, the top five EPC member states are more inclined to oppose, rather than defend. As in 2013 to 2015, such a proactive approach to opposition is particularly prevalent for German and UK parties, with patentee-opponent ratios of 30% to 46% and 4% to 8% in 2016, respectively.

However, for most non-EPC countries, opposition is still an underdeveloped tool – nearly all of them are predominantly involved passively as patentees, rather than by filing oppositions.

The US and Japanese parties are the most striking examples of the patentee-opponent imbalance in terms of absolute numbers, with ratios of 22% to 9% and 7% to 1%, respectively.

For Japan, the relative patentee-opponent imbalance is also particularly large – Japanese parties are seven times more often involved in an opposition as a patentee than as an active opponent.

This appears typical for Asian countries. The relative patentee-opponent imbalances of Korea, China and Singapore are such that they act 33, nearly three and six times more often as patentees than opponents, respectively. Israel and Mexico seem to be the only non-EPC countries to have discovered the use of opposition as a central invalidation tool, actively opposing more than twice and nearly four times as much as defending, respectively.

Figure 4 further illustrates the major nationalities of non-EPC patentees and opponents involved in 2016 EPO oppositions. As in 2013 to 2015, by far the most non-EPC parties are from the United States, accounting for 65% of the non-EPC patentees and an even higher 71% of the non-EPC opponents in 2016.

Among non-EPC countries, the active use of EPO opposition gained traction in Israel (3.6% in 2013 to 2015, which almost tripled to 9% in 2016) and 2016 has welcomed Mexican parties as opponents (new entry in 2016 at 2%).

Further, Asian nationalities are more often dragged into opposition, rather than using it as a tool themselves: Japanese, Korean and Chinese parties accounted for 21.4%, 2.9% and 2.4% of non-EPC patentees, respectively; but for 8.8%, 0.2% (not shown) and 2.2% of non-EPC opponents, respectively. As in 2013 to 2015, it seems that Asian businesses did not exploit the benefits of using centralised invalidation at the EPO in 2016.

While these statistics show little variation compared with 2013 to 2015, Chinese participation as patentees almost halved in 2016 – from 4.3% to 2.4%. This decrease is unexpected and contradicts the 18.6% increase in the number of patents granted to Chinese parties from 2014 to 2015 (EPO Annual Report 2015); with a nine-month opposition period, participation should have been greater in 2016. Perhaps there were more grants to Chinese parties in technological areas that are less prone to opposition.

Non-EPC countries are legally obliged to appoint a European representative – a choice that can be highly revealing. Our next report will dive deeper into this issue.

Summary
From 2016 to 2017 the absolute number of EPO oppositions grew; however, in 2016 there were no new players in terms of nationality. While US and Japanese parties were often involved as patentees, they rarely took the initiative to use the centralised invalidation tool before the EPO as opponents. Further, while other Asian countries discovered Europe as a site for retrieving intellectual property, few parties were obtaining freedom to operate in the European markets through centralised opposition.