Can a patentee ever relax?
10 November 2015 by Edward Clarke
A client asks: if a European patent is maintained after opposition, and that decision is subsequently appealed, what are the chances that the patent will be revoked on appeal?
Helpfully, the European Patent Office provides a slew of statistics about how it is being used, on its website (http://www.epo.org/about-us/annual-reports-statistics.html). If stats are your thing, they make for pretty interesting reading. Did you know that more European patent applications originate from Switzerland than the UK, for example? Indeed, the Swiss are apparently the most inventive nation in the world, per capita, if filing European applications is a measure of that: they file twice as many per head than their nearest competitor, Finland. UK firms are rather further down the list; something for our captains of industry to consider, perhaps.
Back to the question at hand, though. What are the chances of having an application revoked on appeal when the application was upheld after opposition? Sadly the EPO’s stats do not allow us to answer this question directly, because the appeal numbers are not set out in such detail.
What we can see is that when opposition decisions were appealed, 41% of those appeals were allowed “at least in part”; 27% were dismissed; and 32% were “settled otherwise”.
We think where a case was “settled otherwise” it means that either the parties got around a table or the case was remitted back to the examination division for further consideration. If so, then the best we can probably say is that a majority of patents which are maintained in some form after opposition remain in force to some extent after appeal.
Put another way, it looks as though the most common outcome is that an opposed patent ends up with a final scope narrower than initially granted, but is maintained nonetheless. The only clean number appears to be the 27% of appeals which were dismissed, presumably outright.
Simple arithmetic therefore suggests that once your European application has been granted, and a third party has filed an opposition, the risk that it will be revoked in its entirety after the appeal process has played out is about 8%. That seems like a strong number for patentees. Only 4-5% of granted patents are opposed in the first place, which means that on average a granted European patent is likely to stay that way.
We had to tell our client that the chances are of having an already-upheld patent revoked on appeal are rather less than clear-cut: about 50:50.
Statistics can only take us so far, though. Only a small number of patents are opposed, and only about 50% of opposition decisions are subsequently appealed. More importantly: every case is different, and is decided on its merit - hopefully! - rather than by a toss of a coin. Applicants can put themselves in good stead by doing a thorough search before filing, and by instructing a firm of top quality attorneys!
If you would like to discuss any of the matters raised in this blog post, or any other aspect of intellectual property, please do drop us a line or give us a call.
(All figures taken or inferred from the EPO’s 2014 annual report.)