In European Patent Office opposition proceedings, someone has to lose, or at least won’t get everything they want. For a patentee, the erosion or wholesale loss of their monopoly right is a significant commercial risk. For an opponent, anything less than complete revocation of a patent can mean a serious freedom-to operate headache. In the middle sits the arbiter – the European Patent Office, and specifically the technical boards of appeal.
So who’s to blame when it all goes wrong? Was it a weak invention? Is the EPO too harsh a judge? How much depends on the conduct and ability of the representative or the pig-headedness of the patentee? Arnie Clarke, a leading attorney specialising in patent oppositions, assesses why patentees’ expectations are not always met, and what they can do about it.
About 5% of granted patents are opposed each year – last year that resulted in over 3500 opposition division decisions. The results show that the ratio of patents maintained as granted versus patents maintained in amended form versus patents revoked is generally about ⅓rd each. However, that’s not the end of the story – the boards of appeal are the final arbiters, and after they have finished, the percentage of patents that are maintained as granted is reduced to around 15%, whereas the total revocation rate is more than 50%. The remaining 35% is maintained in amended form.
So, based on an allegedly high quality examination procedure, once the European Patent Office has granted your patent, the final outcome of opposition proceedings results in a 50% attrition rate. Perhaps this is good news if you are an opponent but it leaves everyone guessing at the beginning of the process. The next time your patent attorney gives you a 50% chance of success in an opposition, it is not entirely without statistical support! However, it’s not much guidance as to which way the wind is likely to blow.
How can one justify this discrepancy between examination, opposition and appeal outcomes? It has been postulated that the reasons for the high revocation rate are:
the proprietor or his representative made mistakes – you only need to get things wrong once, and you can be scuppered
the patent is weak, hence the opposition division should have revoked the patent
the opponent or patentee presented new evidence and/or new arguments and/or requests at the appeal stage, thus changing the case
the boards of appeal are unreasonably harsh on patentees
Where does the real blame lie?
One of the principal reasons for the high revocation rate is the issue of claim request submissions. In opposition proceedings it is possible to file more than one set of claims, thereby building up fall-back positions in case your main set of claims fails. In first instance opposition proceedings the filing of such requests is common place, and the non-admission of such requests is relatively rare. In contrast, the boards of appeal are governed by a different set of rules which require, among other things, that “the statement of grounds of appeal and the reply shall contain a party’s complete case.” In practice, this means that the admission of claim requests during appeal is frequently at the discretion of the board. The later you are the more likely your “get out of jail” card won’t be accepted.
The statistics on this point are fairly clear: In 62% of 2015 appeal decisions, none of the late-filed requests were admitted into the proceedings. In only 20% of cases were all late filed requests admitted. So who’s fault is this? One might postulate that the boards should exercise their discretion more often in favour of admitting late filed requests. However, in 25% of the cases, the late-filed requests were filed at the hearing before the board of appeal. When one considers that this is usually about 3½ years after the appeal was filed, it is hardly surprising that boards are not so forthcoming with the life raft for the patentee.
Patentees are often tempted to wait for the preliminary opinion of a board of appeal before deciding on its amendment strategy. Such a practice is commonplace in opposition first instance proceedings, not least because all opposition divisions issue a preliminary opinion (however brief), and this is usually sufficiently in advance of a hearing that all the parties have time to react and file their requests in due time. The opposition division’s preliminary opinion also comes with a notice setting a deadline of 1 or 2 months prior to the hearing, by which all written arguments and requests should be filed.
In contrast, the boards of appeal are not obliged to issue a preliminary opinion, and many boards do not. Also, the rules of procedure of the boards of appeal are clear that “any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the board’s discretion.” Therefore, waiting for the board to tell you where things are going won’t necessarily enable you to react with an admissible claim request.
Where the boards do exercise their discretion in favour of admitting late filed requests is where an unexpected argument or evidence is put forward late in proceedings. However, patentees can’t simply argue that they are surprised by the board’s decision – they must have objectively been taken by surprise. In this regard, the boards particularly object to late filing in cases where the opponent made an argument consistently through the appeal proceedings, and this was simply ignored by the patentee.
It is also worth making the point that such claim requests must be prima facie allowable – being surprised by a decision or argument is not carte blanche to file a further raft of speculative requests. Likewise, such requests must meet further formal criteria, such as convergence of the subject matter – a shotgun approach to amendments will not be tolerated.
Once the procedural reasons for failure have been considered, one should look at the substantive reasons. While the statistics vary between different technical subject matter, a lack of inventive step is consistently the most common reason for lack of substantive patentability, accounting for just over 50% of revocations. Close on its heels is added subject matter, making up about 20% of the reasons for revocation.
Outside of the chemical/biotech fields, the main reason for lack of inventive step is just plain obviousness. In many cases this is simply due to the predictability of function of a particular distinguishing feature. One might consider such cases as relating to weak inventions.
Within chemistry and the life sciences, the problem is mostly an inability to demonstrate that a technical effect is plausible. This usually results in the reformulation of the technical problem to one which is diluted to the extent that the only realistic outcome is one of obviousness. However, this outcome cannot always be blamed on a “weak” invention. More often than not, remedial action could have been taken by the patentee to establish a more ambitious technical effect, hence support the inventive step. This is frequently an area where representatives find it easy to blame the quality or strength of patent, the patent office, or anyone but themselves. However, anticipation of the problems that lie ahead is essential if a sticky situation is to be avoided – it is not an inescapable trap!
It seems that the patentee’s and representative’s conduct during appeal proceedings leaves much to be desired. Simply not being able to react to situations that arise in hearings, due to poor planning and execution, significantly contributes to the loss of a patent. It has frequently been minuted by the boards of appeal that a patent was revoked in the absence of an allowable request. In other words, there may have been an invention, but not one that was adequately articulated in a request.
It is true that the boards of appeal tend to take a more robust view of the existence (or more correctly, a lack) of a technical effect. However, it is this author’s view that the boards of appeal are eminently fair in this regard and more often than not come to the ‘correct decision’.
Likewise, the failure to come up with a set of claims which meets the added matter requirements of the European Patent Convention is not as difficult as the statistics suggest. For 20% of cases to be lost due to non-compliance with this requirement is more likely down to representative inexperience, incompetence or a patentee’s belligerence than it is to do with an unreasonable examination by the European Patent Office.
Finally, how much blame can be heaped on the European Patent Office and the boards of appeal? The statistics show that there is no reason to believe that the boards are too strict. Given the workload of the boards, their decisions are remarkably consistent and of high quality. While the rules under which the boards operate are quite restrictive, this should be the nature of an appellate court.
So, in conclusion, if your patent is likely to be revoked, there is a better than evens chance that it is not the fault of your inventor or the European Patent Convention. Better to spend your time asking questions of your representative – preferably at the start of the opposition procedure, rather than before it’s too late.
Arnie Clarke, together with Lucy Samuels, are both partners at GJE specialising in oppositions and appeals at the European Patent Office. They welcome enquiries and will be pleased to discuss your issues and requirements in confidence and without obligation.
See here for more information on patent opposition.