EPO opposition: private practice patent firm’s core technologies

The third part of our European Patent Office (EPO) opposition series ranked the top private patent firms by the total number of oppositions handled in 2016 and highlighted the ratio of cases where a firm acted as a representative of a patentee or an opponent (for further details please see “EPO opposition: private practice patent firm's engagement”).

The fourth installment dives deeper by ranking private practice patent firms by the number of patentee and opponent cases handled in 2016 (Figures 1 and 2, respectively), alongside the core technologies of patentees and opponents in each firm’s opposition portfolio, as shown by the coloured subdivisions which correspond to International Patent Classification (IPC) Classes A to H (Figures 1 and 2). For clarity and brevity, representation of patentees or opponents in more than 0.5% of the total number of oppositions in 2016 was used as a cut-off criterion.

As with the top five for total EPO oppositions, German patent firms also dominated the top five for representing opponents (in both instances, four out of five patent firms were German and one was from the United Kingdom). However, UK firms gained a foothold in the top five for representing patentees (two out of five patent firms were German and three were from the United Kingdom).

The top ten patent firms reflected a similar trend. For total EPO oppositions, the share of UK and German firms was equal (five from Germany and five from the United Kingdom). However, when representing patentees, UK firms tipped the balance (six firms from the United Kingdom and four from Germany), while for representing opponents, German firms came out on top (six firms from Germany and four from the United Kingdom). Thus, the breakdown of the total EPO oppositions into contributions from patentee and opponent representation supports the convention that UK firms are more active in defending and German firms more active in opposing patents.

German firm Hoffmann Eitle, which ranked first for total EPO oppositions in 2016, handled the most patentee as well as the most opponent cases; its share of opponent cases was considerably larger than the rest – a testament to German firms’ tradition of opposing patents.

Dehns was the highest-placed UK firm for total EPO oppositions (fifth) and placed first in terms of representing patentee cases (a position it shared with Hoffmann Eitle) – a testament to UK firms’ tradition of defending patents. Regarding opponent cases, Elkington and Fife was the highest-placed UK firm (fourth). However, Dehns and Elkington and Fife were not listed in the opponent and patentee rankings, respectively, as their case numbers did not surpass the 0.5% cut-off criterion.

NLO was the highest placed non-German, non-UK firm in both the patentee and opponent rankings (15th and 13th, respectively). It was also the only non-German, non-UK firm to surpass the 0.5% cut-off criterion for patentee cases.

Core technologies of patent firms in EPO oppositions
Regarding core technologies, the data suggests that some firms are generalists (ie, having portfolios covering a broad range of IPC classes), while others are specialists (ie, having portfolios dominated by a particular IPC class).

All IPC classes (A to H) were covered for patentee representation in opposition by German firms Hoffmann Eitle and Grünecker. However, no firm covered every class with respect to opponent cases – Hoffmann Eitle and UK firm Boult Wade Tennant came close, but each was missing a class (IPC Classes E and H, respectively).

The specialist firms whose portfolios comprised mostly IPC Class A for patentee representation were UK firm Olswang and Dutch firm NLO, and Elkington and Fife, NLO, Irish firm FRKelly and UK firm HGF Limited for opponent representation.

IPC Class A is an important technology field for oppositions: most patents subject to EPO oppositions in 2016 belonged to IPC Class A. Therefore, the percentage shares of patent firms of total patentee and opponent oppositions in IPC Class A (Figures 3 and 4, respectively) have been emphasised, using firms which covered more than 2% of total patentee or opponent oppositions in IPC Class A as a cut-off criterion.

Olswang handled the most IPC Class A patentee oppositions (by a significantly margin), followed by Hoffmann Eitle and Boult Wade Tennant; NLO ranked fourth. Elkington and Fife handled the most opponent oppositions in IPC Class A, closely followed by Hoffmann Eitle (second) and, by a larger difference, UK firm D Young & Co (third); NLO ranked seventh and retained its position as the highest placed non-German, non-UK firm for IPC Class A oppositions, both for patentee and opponent representation.

The firms with specialised opposition portfolios in IPC Classes B to H were all from Germany or the United Kingdom. Those with the most dedicated opposition portfolios in IPC Classes B, D and E were all German, in terms of both patentee and opponent representation. Firms with comparatively large shares of IPC Classes B, D and E in patentee oppositions included:

• Hoffmann Eitle (IPC Classes B, D and E);
• Grünecker (IPC Classes B, D and E);
• Meissner Bolte (IPC Class B); and
• dompatent (IPC Classes D and E).

Regarding opponent representation, firms with comparatively large shares of IPC Classes B, D and E included:

• Hemmerich (entirely IPC Class B);
• Cohausz & Florack (IPC Class B);
• Grünecker (IPC Class B);
• Dreiss (IPC Class D);
• Boehmert & Boehmert (IPC Class D); and
• Manitz Finsterwald (IPC Class E).

While UK firms had the most dedicated opposition portfolios in IPC Classes F, G and H for patentee oppositions, German firms handled more opponent oppositions for the same technologies. While Dehns represented a large share of patentees in oppositions involving technologies in IPC Classes F and G, German firms represented a larger share of opponents in oppositions involving these technologies, including Eisenführ & Speiser, BRP Renaud and Thul in IPC Class F and Vossius, Lorenz Seidler Gossel and Manitz Finsterwald in IPC Class G (UK firm Potter Clarkson was a strong contender in terms of opponent representation in the latter class).

UK firm Kilburn & Strode had a particularly dedicated patentee portfolio involving technologies in IPC Class H, with Hoffmann Eitle and Grünecker also having a considerable share. However, opponent representation in IPC Class H oppositions was handled mostly by German firms, those with large portfolio shares including:

• Eisenführ & Speiser;
• Grünecker;
• Dreiss;
• Isarpatent; and
• Mitscherlich.

More UK firms specialised in IPC Class C technologies in opposition than German firms – for example, the most dedicated portfolios representing patentees in this class were handled by UK firm Mewburn Ellis and German firms Vossius and Maiwald, while UK firms Potter Clarkson and Carpmaels & Ransford specialised in representing opponents in IPC Class C.

Summary
The 2016 EPO opposition data confirmed the tendency for UK firms to represent patentees and German firms to represent opponents in oppositions. Netherlands-based NLO was the highest ranked non-German, non-UK firm for both patentee and opponent representation (15th and 13th, respectively) and is among the firms with the most dedicated patentee and opponent opposition portfolios in IPC Class A technologies (fourth and seventh, respectively). Most of the specialised firms for oppositions in technologies of IPC Classes B to H were from either the United Kingdom or Germany.

Besides private practice firm performance, the share of in-house IP departments of companies in EPO oppositions can be revealing and will be the focus of our final EPO opposition series installment.