EPO OPPOSITION

Behind the statistics of the EPO’s Annual Report

Authors: shiri burema and rené van duijvenbode

It is becoming increasingly popular to oppose the grant of a European patent centrally at the European Patent Office (EPO). While the absolute number of opposed patents remained more or less constant between 2013 and 2016, the EPO Annual Report mentioned an increase of almost 25% in 2017. For 2018 an even further increase is expected, given that 10% more patents were granted in 2017.

NLO’s analysis has revealed that some specific technological areas have become more aware of the benefits of opposition to their patent strategy. Opposition rates in International Patent Classification (IPC) Class F technologies (mechanical engineering, lighting, heating, weapons) have nearly doubled from 8% (2015) to 14% (2016). Also, a 4% growth was seen for the traditionally most popular technological areas for opposition (IPC Classes A (human necessities), B (performing operations, transporting) and C (chemistry, metallurgy)). Over the years opposition remained equally popular for technologies belonging to IPC Classes D (textiles, paper) and E (fixed constructions) (rates hovering around 2%-3%) and G (physics) and H (electricity) (rates hovering around 6%-7%).

Despite this growth in the number of EPO oppositions, there were no new players in terms of nationality. Overall, German parties are mostly involved as patentees and as opponents (respectively 30% and 46% of all cases). The US is the main overseas nationality in EPO opposition: 65% of patentees and 71% of opponents from countries not part of the European Patent Convention (EPC) were US parties. The tendency of taking a proactive approach to opposition is seen for EPC countries, especially German and UK nationalities, which are generally more inclined to file oppositions rather than to get involved as patentees. This is however the other way around for parties outside the EPC territories. Especially US and Asian nationalities were more often dragged into opposition as patentees, but rarely took the initiative to use the centralized invalidation tool before the EPO as opponents. This highlights the necessity to lower the threshold or create awareness on EPO opposition for overseas parties so that they will not miss out on this important tool for retrieving freedom to operate on the European markets. In this light, it seems that in Israel the active use of EPO opposition is gaining traction as opposition rates have almost tripled.

Representatives for opposition

The Hague’s EPO branch as a venue for oral proceedings in opposition has seen its popularity increase by 2% at the cost of the Munich branch. Still, most EPO oppositions involving non-EPC parties are divided between German and UK patent attorneys. Together they account for nearly 90% of all representation in opposition, with UK representatives being slightly more popular for representing patentees and German representatives for opponents. In recent years, there appears to be a shift in the preference of non-EPC opponents to choosing German patent attorneys at the cost of UK representatives. For EPC patentees and opponents, the preference is clear: about 80% appoint a patent attorney from the same country.

The choice of representative for opposition is a delicate issue. Opposition proceedings are complex and require a different set of skills than those demanded in patent prosecution.

The EPO anticipated this and adapted its internal structures to accommodate a department of examiners who specialise in oppositions. On the attorney side, the chances of success and expectation management are maximised by cleverly choosing a representative that is fit to deal with opposition dynamics.

Some patent attorney firms are specialized in either patentee or opponent cases, while others have a balanced experience with both. EPO opposition analysis revealed that Netherlands-based NLO is the highest ranked non-German, non-UK firm for both patentee and opponent representation. In the technology field where most patents are opposed (IPC Class A) NLO is among those firms with the most dedicated patentee and opponent opposition portfolios (Figures 1 and 2, respectively). Most of the specialised firms for oppositions in technologies of IPC Classes B to H were from either the UK or Germany.

Delegate opposition work

As an alternative to representation by an external private practice patent attorney, some companies handle oppositions on their own through in-house patent attorneys. The percentage of in-house representation of companies in opposition is however generally low: at less than one-fifth of patentee cases and one-tenth of opponent cases.

The tendency of companies to represent themselves more often when acting as patentees than as opponents may relate to the need to be in charge of the defence of their own business interests; opposing a third-party patent is a more clear-cut task to outsource to an external patent firm. The significantly low share of in-house representation in oppositions could also be the result of companies realising that, in addition to being time-consuming, oppositions require specific skills, expertise and experience to avoid common pitfalls. These aspects of opposition could be reasons for companies to delegate opposition work to specialised private practices that generally handle far more opposition cases than companies and have a wealth of opposition experience to draw on.

Gaining advantage

In the end, the strongest opposition team may be a combination of in-house and private firm patent attorneys: a company’s detailed knowledge of technology, invention and prior art can be particularly useful when collecting or interpreting prior art and dealing with insufficiency of disclosure objections, while private firms specialising in oppositions have a broad expertise and experience with opposition strategies. Teaming up with experienced external attorneys may give companies an advantage in determining how best to handle an opposition.