The number of oppositions proceedings at the European Patent Office is on the rise – with numbers for 2017 exceeding anything that has previously been seen. But while some may point to this indicating a decline in the quality of grants at the office, the actual explanation looks to be a lot more prosaic: the EPO is granting more patents than ever before, and the number of oppositions is rising in line with this.
At UK patent attorney firm Haseltine Lake they keep a close eye on EPO oppositions – and produce a quarterly newsletter about the subject. Following is a summary put together by partner James Ward of recent developments.
In 2017 the number of EP patents opposed was 30% higher than in 2016. In total, 3,570 EP patents were opposed in 2017, compared to 2,743 EP patents in 2016.
This increase follows extraordinary increases in EP patent grants in 2016 and 2017. There were 105,609 EP patents granted in 2017, up from 95,943 in 2016 and 68,403 in 2015.
Typically, if EP patents are opposed, they are opposed at the end of the nine-month EPO opposition term. The number of EP patents opposed each quarter correlates well with the number of patents granted nine months (three quarter-years) earlier. After a fall in the first quarter of 2017, patent grants increased again in the subsequent quarters of that year. This suggests we may see a further increase in oppositions filed in 2018.
Opposed patents, opposed patentees
The patents opposed in 2017 belonged to about 1,700 patentees. Around two-thirds of those patentees each had only one patent opposed, only about one-third had two or more opposed. Some patentees had many patents opposed, with 750 opposed patents – 20% of all patents opposed in 2017 – belonging to the 40 most-opposed patentees.
Some patents attracted multiple oppositions, with six patents each receiving 10 or more oppositions.
Opposed patents, technical fields
Each patent is classified according to the International Patent Classification (IPC), often being assigned to more than one IPC category (subclass, main group, subgroup). The patent will, however, have a lead or first IPC category which we take to be the most overall relevant for the invention concerned. Considering lead IPC subclasses, the patents opposed in 2017 were spread across about 400 subclasses. Around 850 opposed patents – almost 25% of all opposed patents – belonged to the top 10 lead subclasses:
Medical, dental, or toilet preparations
Stents, implants, prostheses etc.
Microorganisms or Enzymes;
Containers for storage or transport of articles
Compositions of macromolecular compounds
Shaping or joining of plastics
Acyclic or carbocyclic compounds
The patents opposed in 2017 were subject to around 4,500 oppositions, an average of 1.25 oppositions per opposed patent.
The oppositions were filed by about 1,700 opponents. Around 1,000 opponents each filed only one opposition. The 30 most active opponents filed just short of 1,000 oppositions, which was more than 20% of all oppositions filed in 2017.
“Straw man” opponents
Some opponents are “straw man” opponents, ie parties that file oppositions on behalf of others. In general, this is not considered to offend against EPO rules, though it is not always permissible.
There are many reasons why the other parties, the principals, might wish to conceal their identities and act through “straw men”. For instance, a principal may wish to conceal its interest in a particular patent or technology from a competitor (which might be the patent proprietor, another opponent or an interested party who may be watching the EPO register for opposition cases). A principal may wish to avoid direct and public confrontation with the patent proprietor in order to preserve an existing trading relationship or some other form of ongoing commercial collaboration or negotiation.
Of course it is not possible to identify “hidden” straw men but it seems that approaching 200 more or less overt straw men (eg, individual patent attorneys, patent attorney firms, law firms) were opponents in 2017 and filed over 400 oppositions - not far short of 10% of all 2017 oppositions.
Outcomes of opposition proceedings
According to the EPO annual report for 2017, 4,072 opposition cases were decided in the first instance in that year. According to the report, the first instance outcomes in 2017 were: patent upheld as granted – 31%, patent revoked – 27%, patent maintained in amended form – 42%.
First-instance opposition decisions are not the whole story, since they are often appealed. A total of over 3,100 opposition proceedings were finally settled in 2017 - either as the outcome after appeal or, if no appeal was entered, when the first instance decision became legally binding. There were six cases in which oppositions were deemed not filed, two in which oppositions were found to be inadmissible and 234 cases in which opposition proceedings were terminated without a decision (eg, oppositions withdrawn).
For cases decided on the merits in 2017, the final outcomes were: patent upheld as granted – 24%; patent revoked – 37%; and patent maintained in amended form – 39%.