CASELAW-EPO - reviews of EPO Boards of Appeal decisions

Some general considerations about the results in 2023 of appeals after opposition procedures at the EPO

chat_bubble 14 comments access_time 6 minutes

Overal Figures

A total of 1171 published decisions of the boards after appeal in opposition have been looked at in 2023.

In total 1051 final decisions on opposition (rejection, revocation, maintenance in amended form) have been taken.

A total of 120 decisions of remittal, whereby those resulting from SPV committed by an OD, have been taken into account.

From the final decisions in opposition after appeal the following figures arise

  • the patent was revoked in 46,4% of the cases,
  • maintained in amended form in 33,3% of the cases
  • only 20,3% of granted patents survived untouched an opposition after appeal.

We are thus, after appeal, far from the proportion of 1/3, 1/3, 1/3 after opposition which used to be common in earlier years. Nearly 80% of opposed patents come out “maimed” after appeal.

Claiming that in the absence of an appeal, the decision of the OD has simply been confirmed is a rather biased presentation of the situation, as 60% of decisions of the OD are set aside by a board (see below).

Tho above figure is also to be put in relation to the fact that the EPO has set up directorates specialised in opposition.

Prior art searches

In only 6% of the cases did the opponents come up with prior art which could truly not be available in the search documentation of the EPO.

Those documents relate for example to public prior uses, catalogues, PhD dissertations or presentation at conferences.

Examples of documents not found, but present in the search files, relate to documents being classified in the same classification unit as that of the patent opposed, or in classes indicated as searched by the search division. Prior art under Art 54(3), sometimes from the same applicant or the same inventor, also come under this category. Less frequent is the case of documents already used in examination which led to revocation or maintenance in amended form in opposition.

Confirmation of decisions of the OD by a BA

What is also noticeable is that 60% of decisions of ODs have been set aside by the boards of appeal.

Some figures stick out:

  • In 32,3% of the cases, the decision of maintenance of the OD was changed into revocation.
  • In 16,7% of the cases, the decision of maintenance of the OD was confirmed but in a different form, in general more restricted, rarely broader.
  • In 16,0% of the cases, the decision of rejection of the opposition of the OD was changed in revocation.
  • In 7,5% of the cases, the decision of rejection of the opposition of the OD was changed in maintenance in amended form, i.e. more limited.
  • In 7,5% of the cases, the decision of rejection of the opposition of the OD was changed in remittal for further prosecution. This occurs when the decision on sufficiency, added matter or lack of N is set aside by a board. In very few cases, but all avoidable, the OD committed a SPV.

Those changes represent 80%% of the cases in which the decision of a DO has been set aside by a board.

The result of oppositions after appeal is an indicator, not an absolute measure

As oppositions are not evenly distributed over all technical domains, it does not allow to make a direct assessment of the overall quality of the work delivered by the EPO, but represents nevertheless a good indicator.

The technical areas in which oppositions occur has also changed over the years. Oppositions occur in competitive areas, either due to new emerging technologies or in which competitors want to keep or increase their slice of the market. In those areas, or for instance for SMEs, it is important to obtain patents with a very high presumption of validity.  

If patents which appear important for parties are not resisting oppositions very well, it allows to have doubts about the validity of patents which are not opposed.

One could however consider that the patents which are not opposed are not important and their quality does not really matter. Banking on oppositions to weed out dodgy patents should not be an incitation to grant as many patents as possible, although this brings renewal fees.

The problem is that an ED does not know whether a patent will be very valuable for the applicant or if it will be opposed later. Examination procedures have been set up to weed out patent applications which are not fulfilling the basic criteria for patentability and in order to deliver patents with a high presumption of validity. The temporary monopoly that goes with a granted patent should only be awarded if the patent represents a real contribution to the existing prior art. Granted, but potentially invalid patents represent an unncessary threat.

All those non-opposed patents can nevertheless be used for claiming infringement by a proprietor. If a patent can easily be considered invalid or at least end up having a limited scope, possibly escaping infringement, the usefulness of a granted patent is quite relative, but the threat is real.

When opponents do only turn up in 6% of the cases with prior art which was not available in EPO search files, some questions might reasonably be raised about the extent or even the quality of the search and examination. 

When 60% of decisions of the ODs are set aside by a board, some questions might reasonably be raised about the quality of the of the work delivered by ODs, which are presently grouped in specialised directorates.   

Influence of the granting process in procedures other than oppositions, for instance before the UPC

The above figures do not necessarily bode well for patents allegedly infringed at the UPC, as they might actually end up being invalid or with a more limited scope.

The chances of success for a nullity attack, before the UPC, be it directly or as counter-claim for nullity, are thus comparatively high.  This conclusion might be relativised if it turns out that the interpretation of claims and of the EPC varies between the UPC and the EPO and the UPC ends up to be more favorable to patent holders than the EPO. It remains that in case of an opposition, the last word lies with the EPO abd its boards of appeal.

When it comes to decide for a PI or a stay of the procedure before the UPC in case of a concomitant opposition before the EPO, it is important to realise that in 2023, 60% of decisions of ODs were set aside by the boards.

A granted patent has certainly a high presumption of validity, but the above figures allow to express some reasonable doubts about their actual validity.

Waiting for a final decision of a board appears necessary in order to properly assess the validity of a granted European patent, with unitary effect or not. For the preceding years, the figure of decisions set aside by a board of appeal was lower, but of the same order of magnitude.

Garanties that undue damages can be recovered might appear necessary if a decision of the UPC on infringement is taken before the end of the procedure of appeal after opposition against the same patent at the EPO and the latter is revoked or so limited that infringement can be denied.

In any case, the justification for a higher basic fee in case of a nullity action before the UPC, be it directly or a counter-claim, has to be put into question. It gives patent holders an undue advantage, but this might have been wanted by the promoters of the UPC banking on the strong validity of patents granted by the EPO. There are however legitimate questions to be raised about this validity.

Although it should be avoided, the risk of conflicting decisions as to the validity of patents between the EPO and the UPC is nevertheless high in view of the above figures should the UPC decide very quickly which is actually one ot its aims.

Oppositions are still a viable alternative or a good complement to actions before the UPC

In any case, it remains that filing an opposition at the EPO remains cheaper than filing for nullity at the UPC. The reach of decisions of the EPO is also much wider than that of the UPC. If a patent is limited or revoked after appeal at the EPO, any decision of the UPC in matters of infringement might become obsolete and will inevitably lead to complications if damages for infringement or by a PI have been awarded by the UPC and cashed by the proprietor.

That it takes more time at the EPO to come to a final decision is due to the inherent time limits and periods set in the EPC. This aspect is not necessarily seen as negative by some opponents, especially in the pharmaceutical sector. In any case, it is by no means waiting for Godot, to quote one of the strongest supporters of the UPC. See the corresponding publication on this blog.

What has been said for procedures before the UPC applies mutatis mutandis for procedures before national courts in non-UPC countries or opted-out European patents.

Final comments

To come to the above conclusions, there is no need to hack into some database at the EPO. Any interested person can arrive at the same conclusions by simply looking at published decisions of the boards of appeal and, if necessity arises, at the corresponding entries in the public register.

Be it for a blog, or for quoting up-to-date decisions when training professionals or future professionals,  it is necessary to look at decisions of the boards of appeal of the EPO. The above conclusions are no more than a by-product of those activities.  

Share this post

Comments

14 replies on “Some general considerations about the results in 2023 of appeals after opposition procedures at the EPO”

Anonymoussays:

In addition the high reimbursable costs may break an SME‘s neck if they lose a nullity action at the UPC

Avatar photoDaniel X. Thomassays:

@ Anonymous 1,

When dealing with an application, the EPO is not allowed to take into account that it has been filed by a SME.

It is however clear that a SME, having in general a little number of patents in its portfolio, is more at risk when it comes to assert a patent in an infringement case and there is a counter-claim for nullity.

Conversely, a SME can be confronted at the UPC with a claim for infringement on the basis of a patent the validity of which can be questioned. This can happen, even if it is staying within the boundaries of its home country, or even if it does only export in a very limited number of other countries. Being flooded under a lot of claims for infringement can also break the neck of a SME as it immobilises important financial resources. This can lead SMEs to be amenable to accept to pay unjustified licence fees.

The reimbursable costs at the UPC are submitted to a ceiling when the economic viability of a party is at stake.
This ceiling has been set up in order to minimise the impact on SMEs.
It is however not a real protection.

Whilst setting up the RoP of the UPC, it had been envisaged to create a kind of litigation insurance for SMEs. This idea has not been pursued and instead, ceilings of recoverable costs were introduced.

In all fora I have been participating and in which the relation between SMEs and UPC were discussed, the SMEs always expressed a feeling of fear as they might not be in a position to afford litigation at the UPC, be it as claimant or as defendant. The various measures foreseen, like the ceiling for recoverable costs, were not removing their aversion to the UPC.

Anonymoussays:

“When 60% of decisions of the ODs are set aside by a board, some questions might reasonably be raised about the quality of the of the work delivered by ODs, which are presently grouped in specialised directorates.”

– It’s not necessarily about the quality of work delivered by the OD, but is evidence of a difference in approach between the ODs and the BoA. Whether the ODs or the BoA are applying the EPC most appropriately is a matter for discussion.

Avatar photoDaniel X. Thomassays:

@ Anonymous 2,

It is clear that a bord can have a different approach than that of an OD. This is part of the game, but too much is simply too much.

What is noticeable is the high number of decisions set aside by the boards. A proportion of 20% or even 30% of different opinions would be acceptable, but not 60%. After all, the EPC is the same for the boards and for the ODs, and on substantive matters there is a vast body of case law. The net result is that there are lots of discrepancies, and this problem is necessarily linked with the way OD work.

Opposition is an inter partes procedure and it turns out that, when a board sets aside the decision of the OD, it takes into account the point of view of the other party. I have thus to disagree with your statement. The number of decisions of ODs confirmed by a board is relatively low. This is the problem.

What would you hold from a judicial system in which 60% of decisions of the lower instance would be set aside by the appellate instance?
I doubt that you would consider the actions of the lower instance as being of good quality. This is independent of the possibility of having in specific cases a difference in the weighting of the different arguments.

Anonymoussays:

Out of Curiosity, how many revocations by the Board of Appeal are linked to simply the withdraw the appeal or disapprove text as allowable by the patentee. This would terminate the proceeding with a decision of revocation.

Avatar photoDaniel X. Thomassays:

@ Anonymous 3,

Cases in which the proprietor has withdrawn the appeal or has disapproved the “text as allowable by the patentee” have been looked at in detail.

My observation is the following: withdrawal of the appeal or disapproval of the text is the consequence of a very negative communication of the board pursuant Art 15(1) RPBA. In other words, when proprietor realises that its granted patent is not worth a penny, he stops the costs and “gives up” the patent, which in general should not have been granted or maintained. Only those cases have been taken into account.

Here is one example of disapproval:

https://www.epo.org/law-practice/case-law-appeals/recent/t200043eu1.html
ISR/EPO 3X 1A-REJO-Oppo 1 appeal-BA-In com Art 15(1) BA considers cl1 as granted lack IS over D5=US6174442 (Not in ISR)-negative on AR-Prop withdraw approval-REVO-
Here the rejection of the opposition has ended with revocation of the patent following examination as to the merits by the board.

Here is one example of withdrawal of the appeal:

https://www.epo.org/en/boards-of-appeal/decisions/t192674eu1
Divisional EP09788918/2 299 938-ESR 2A-As granted cl1 and 8 Pb Art 76(1)-Pb Maint AR1-Prop O1 and O3 (out of 4 opponents) appeal-BA-AR4aap=AR1op-Com 15(1)21 some features of cl1 as granted Pb Art 76(1); cl 8 as granted Pb Art 76(1); AR1-3 NA inter alia Pb Art 76(1); AR4 NA-AR4a Pb N-Prop withdrew appeal during OP-only AR4a left-Cl1 AR4a ack N over E4=US 2007/0073387 (Not in ESR)-REVO-
Here the maintenance according to AR1 has ended with revocation of the patent following examination as to the merits by the board.

When the decision of the OD is not confirmed following examination as to the merits by the board, the case, the case is counted as decision of the OD set aside.

It is actually irrelevant whether this occurs after a full decision or just the content of the communication under Art 15(1) RPBA.
In both cases, the board has examined the merits of the case and the patent hs ceased to exist. .

The overall figures published in the blog are based on analyses as exemplified above.

The figures related to communications under Art 15(1) RPBA for the four quarters of 2023 are respectively: 29, 27, 35, 31. In a total of 122 cases the proprietor has withdrawn the appeal or the approval of any requests ever filed. This represents 11,6% of final decisions.

Anonymoussays:

Dear Daniel,
I would point out some aspects which make your stats less reliable as they might look at first glance.
To start with, not all granted patents are opposed. Actually, the opposition rate has been decreasing significantly over the years. So, third parties seem to agree with an overwhelming majority of the grant decisions.
Furthermore not all opposition decisions are the subject of an appeal. In many cases, the “losing” party simply accepts the decision.
Moreover, some 40% of appeals do not lead to a published decision, because the appeal was not validly filed (essentially no arguments, no fee paid).
Altogether, the number of cases you have studied (1171) is almost infinitesimal compared with the number of grants published (around 1%). As a result, extrapolating the quality of the work at the EPO from your figures (based in my opinion on a clearly non-representative sample) is in my opinion unfair.

Avatar photoDaniel X. Thomassays:

@ Anonymous 4,

As you address me with my Christian name, you seem to know me or pretend to know me. When I address people with their Christian name, or their pseudo, I know them personally. Hiding behind anonymity is not fair, to take one of your words.

If you had read carefully what I have written, you would not have failed to see that that I have included in my publication a very important proviso:
“As oppositions are not evenly distributed over all technical domains, it does not allow to make a direct assessment of the overall quality of the work delivered by the EPO, but represents nevertheless a good indicator.” I have also added that “Oppositions occur in competitive areas, either due to new emerging technologies or in which competitors want to keep or increase their slice of the market”. What else do you want for warnings?

The only reasonable way to assess what is going on in opposition is to look at published decisions of the EPO after appeal on opposition. What other way would you suggest? The boards of appeal being the last instance to decide on the validity of the patent, the result of the appeal procedure is the only benchmark available. Or would you go as far and claim that the result of the appeal procedure has no value?

The reasons why ”the losing party simply accept the decision” is not a guarantee that it agrees with the decision of the OD. You do not know the reasons for it, as well as I do not know them. Deriving some statistical value from this behaviour is looking in a crystal ball. As you do not know, considering that the parties are satisfied is more than incorrect.

In the absence of an appeal, when the patent is maintained in amended form or revoked, one conclusion which can immediately be drawn is that something went wrong in the grant procedure. If then the limited patent is not hampering a potential infringer, there is no reason to appeal. The same goes when the patent is revoked. The proprietor might, for whatever reason, stop spending money on it.

Holders of big portfolios regularly revise them and stop paying fees or spending money for patents of little interest. It does certainly not allow to draw conclusions on the granting or opposition procedure in the absence of an appeal.

There are also agreements between parties, e.g. cross licensing, which lead to the reciprocal withdrawal of oppositions. To conclude that in such a situation that the grant was OK is rather daring. In one of the fields I have been in charge for a while, there were three main contenders which systematically opposed each other. The day two of them crossed licences and agreed on lump sums, those oppositions disappeared. I would never have considered that the granted patents were of irreproachable quality.

Should you know the procedure, you would know that when an appeal is not validly filed, the board of appeal takes a decision, as in such a case, the appeal fee has to be reimbursed, see G 1/18. The same applies when the statement of grounds for appeal is not filed in due time. In this situation, the appeal is not admissible, but then, the appeal fee is not reimbursed. When looking at decisions of the boards, those decisions, appeal not deemed filed or not admissible have not been taken into account.

That some 40% of appeals do not lead to a published decision, because the appeal was not validly filed (essentially no arguments, no fee paid) appears far-fetched and hard to believe. That appeals can be withdrawn after filing the notice of appeal and before filing the statement of grounds of appeal is again not a sign that the granting decision was at all correct and of irreproachable quality. See above.

The number of cases I have studied (1171) might be “almost infinitesimal compared with the number of grants published (around 1%)”, but as explained above your conclusion, that everything is honky dory in examination or in opposition, is a conclusion which is indeed unfair. If a granted patent does not resist a serious scrutiny when it appears important for parties, then I maintain that it does not bode well for all the patents which are not scrutinised.

I read that a former president of the EPO is meant to have said that a patent is an insurance in case of success. When a patent comes out of the opposition and appeal procedures maimed, i.e. revoked or limited, the insurance is actually of rather low value. Even in older days only a third of patents opposed came out of opposition without a scratch.

This has also to be put in correspondence with the fact that only in 6% of the cases, opponents come up with documents which were truly not available in EPO’s search files.

It would be interesting to see, in the absence of an appeal, if documents cited by opponents were in the search files or not. CDOC after opposition could be a source of corresponding data. In the absence of CDOC, it means that the opponents did not bring any new documents in opposition. When the patent has been revoked or limited, a possible conclusion would be that the documents mentioned in the search report were not correctly assessed by the examining division.

I do not compare apples with pears and do not try to give a statistical value to figures which do not allow to assess what has actually happened during prosecution, be it in examination or in opposition.

Cameron Marshallsays:

This is interesting work. Thank you for contributing and sharing it.

One significant difference which I see in OD and TBA practice is Art.123(2), where TBAs tend to be more strict and literalistic in their approach. Did you look at the proportion of cases where the TBA sets aside the OD decision to uphold the patent (as granted or in amended form) and revokes the patent for failing to meet Art.123(2) or 76(1)?

Avatar photoDaniel X. Thomassays:

Dear Cameron Marshall,

Thanks for your comments.

For the first half year of 2023, I spotted 61 cases in which the TBA considered claims as granted or maintained infringing Art 123(2) or Art 76(1) contrary to the conclusion of the OD. There were however 12 cases in which the board found the objection under Art 123(2) or 76(1) not justified and sent the file back for further prosecution. I think that those figures can be roughly doubled for the year as the proprortion is constant over the two first quarters.

Felipe Zillysays:

Dear Daniel X. Thomas,

Thanks a lot for sharing your detailed analysis. Great work.

Do you have any data comparing opposition (appeal) decisions regarding patents based on parent applications with decisions regarding patents based on divisional applications?

In other words, is it more likely that the OD/TBA will revoke patents based on divisional applications than patents based on parent applications?

Do the TBAs more frequently reverse/amend decisions relating to patents based on divisional applications than decisions relating to patents based on parent applications?

Thank you.

Avatar photoDaniel X. Thomassays:

I had a quick look over the first half year.

With my system, I do not have the time and the resources to go back to the parent in order to check whether it has been opposed or not, if there was an appeal and what was the result of the appeal.

It is thus not possible for me to say that it more likely that the OD/TBA will revoke patents based on divisional applications than patents based on parent applications. The same applies thus to the reversal of decisions.

For the first half year of 2023 8% of published decisions related to divisional applications.

In 50% of those decisions, the board considered that the claims as granted or maintained did infringe Art 76(1) and/or Art 123(2). The likelihood that a divisional is granted/maintained with a problem of added matter appears thus relatively high.

The number of cases in which the patent resulting from a divisional has been granted with a problem of added matter is thus relatively high.

This does not mean that all those decisions ended with a revocation. The patent resulting from a divisional could sometimes be maintained in a different form, although in the vast majority of the cases it ended with a revocation.

Anonymoussays:

The 60% figure seems to have been stable for at least the last 8 years now (see https://link.epo.org/web/Annual%20Report%20BoA%202022_EN_final_rev_230609.pdf, figure 16), so I see no reason to get super -excited over it at this point, to be honest.
It would be interesting to compare this with how high of a % of decisions of a lower court are actually generally held up by a higher court in known judicial systems. Following the news in e.g. criminal cases, it would subjectively appear to me that also quite often the outcome in appeal is different (different end-result, different height of sentence given etc.) I am therefore not sure whether 40% decisions of a lower court upheld by higher court is necessarily a sign of a shaky judicial system or rather fairly commonplace if you let two different courts decide on the same case but with perhaps other arguments, attorneys or even facts.
Having said this, the detailed split of these figures is nice and I hope that further data using the same methodology will be published over the next few years!

Avatar photoDaniel X. Thomassays:

@ Anonymous 5,

When you speak about 60% you are most probably referring to the figure of 60% of decisions of an OD which are “confirmed”.

In my reply to Anonymous 4, I made clear that this figure does not mean anything, but looks like a nice figure to show to the AC that everything at the EPO is apparently fine.

The problem is that neither the EPO nor any third party have the faintest idea why a decision of an OD has not been appealed. There are plenty of reasons, see my comments above, Claiming that the parties were satisfied and the decision of the OD is confirmed is a step which cannot be reasonably taken. Not appealed cannot mean confirmed.

That only 40% of decisions of the decision of an OD are confirmed in appeal is easy to explain. In principle starting with the RPBA07, and certainly with the RPBA20, parties can only exceptionally bring new facts, new objections or newlines of argumentation when entering appeal. A new representative has to do with what his predecessor left.

At the EPO, the function of the boards of appeal is to revise in a judicial manner what has been decided in first instance.
This makes the figure of 60% of decisions of an OD set aside a problem. This is the more so since directorates specialised in opposition have been set up.

Leave a Reply

Your email address will not be published. Required fields are marked *