The European Patent Office Boards of Appeal’s latest report (for 2015) reveals some interesting trends which can have a bearing on the decision to file an appeal in a particular case and are worth a read.
The full report can be found here.
We have selected a few highlights.
New appeals are relatively steady at just under 2,400 in number. However, the split between examination procedure and opposition procedure appeals is shifting with oppositions now accounting for just under 64% of new appeals compared to 52% in 2013. The total number of pending appeals continues to rise slowly, standing at just under 7,900.
Examination division appeals
The electrical division, split by the EPO into physics and electricity, accounts for two thirds of all examination level appeals. There are 2,700 electrical appeals pending compared to just 293 in the mechanical division. The backlog is particularly acute in the electricity sub-division. Perhaps this is not surprising as this division handles software and business method related inventions.
How long will it take?
The average length for a decision for an ex-parte appeal (all application appeals are ex-parte) has risen from 36 months in 2014 to 38 months in 2015. We suspect that this masks a big discrepancy according to technical subject matter and anecdotally we expect decisions in the electrical field to take four or more years. The statistics do not offer any insight on this split but do show an increase in the number of cases that have been pending for over two years (3,786, up from 3,633 in 2014 for both examination and opposition appeals). Digging deeper, the number of appeals pending for more than three years is up more sharply: 2,136 to 1,840 and the number pending for four years stands at 822 compared to 560 in 2014.
Will I win?
Although each case must be considered on its merits, it is interesting to note that 56.4% of examination appeals decided in 2015 were dismissed, as opposed to 53.5% in 2014. Of the successful cases, 24.6% were granted and the remaining 19% remitted back to the examination division. Bear in mind that these figures will include cases in which amendments were offered during the appeal process.
Opposition division appeals
The figures show that appeals from decisions of the opposition division have risen steadily over the last couple of years but the technical split is very different from examination division appeals. Of the 1,523 opposition appeals filed in 2015, 692 were in the mechanical division field, 614 in chemistry and the remaining 217 in the electrical division’s field. The number of cases pending is very approximately three times the number filed in all technical disciplines.
How long will it take?
Inter partes proceedings are decided a little more quickly than ex parte proceedings with the average length to a decision rising to 34 months in 2015 from 33 months in 2014. Again, there is no data on the split between subject matter areas
Will I win?
In contrast to ex parte hearings, the appellant is wholly or partially successful in 57.5% of cases (down from 60.6% in 2014). This would appear to be a powerful incentive to lodge an appeal and many parties view the first instance proceedings before the opposition division as something of a trial run. However, only 23.2% of cases result in the patent being maintained as granted (3.3%) or revoked (19.9%). In the remaining cases, the patent is either maintained in amended form (24.8%) or opposition proceedings are resumed (9.5%).
The Enlarged Board of Appeal
Decisions by the Enlarged Board are rare. Since the coming into force of EPC 2000, referrals to the Enlarged Board can either come from within the European Patent Organisation (the Boards of Appeal or the President) or via a petition for review from an applicant or opponent. 2015 saw just a single referral and 8 petitions for review. Petitions are markedly down on previous years, perhaps parties are realising that they are very rarely accepted. Overall, the figures show that 4 referrals were decided in 2015 with only 1 pending. 10 petitions for review were decided with 22 pending but one suspects that the vast majority of these were dismissed without the case being taken by the Enlarged Board.
The figures show that from 2015 to 2016 the number of Chairmen of Boards of Appeal has fallen from 27 to 22, the number of technically qualified members has fallen from 105 to 97 and the number of legally qualified members has fallen from 27 to 23. This must be a cause for some concern and a 10% drop in Appeal Board members at a time when the backlog of cases waiting to be heard is rising can only lead to a greater increase in the backlog and more uncertainty for the parties concerned.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.