Earlier this year, Mewburn Ellis LLP, a European patent attorney firm, conducted its own research project to obtain more detailed statistics about EPO oppositions, particularly in the life sciences sector, analysing EPO opposition data in much more depth than in any publicly available report. We were especially curious about whether the EPO’s opposition streamlining initiative, which was introduced in July 2016, is working, as well as how it was working – which stages of the opposition timeline are being squeezed the most? This initiative was designed to simplify opposition proceedings and to deliver decisions more quickly (with a target opposition pendency of 15 months by 2020). Based on research we carried out, it seems to have worked. The mean time to receive a decision following the initial filing of an opposition was reduced from just over 22 months in 2015 (pre-streamlining) to 17 months in 2018 (post-streamlining) (see Figure 1).
Each stage of the opposition procedure is speeding up. For example, it now takes well under a month for the EPO to issue an invitation for a patentee to respond to an opposition, and sometimes even just a week or two. The summons to oral proceedings is now being issued about three months after the patentee responds to an opposition. However, the most significant effect has been on the time period within which a patentee must respond to an opposition. Following the streamlining procedure, the four month time limit for responding to an opposition can no longer be extended as of right and looking at a snapshot of cases within a six-month time window straddling either side of the introduction of the streamlining initiative in mid-2016, we saw stark differences in the time afforded to patentees for responding to oppositions, as shown in Figure 2.
Prior to the streamlining initiative, most patentees (68%) secured a two-month extension of time and filed their response within 4-6 months of the EPO’s invitation. A significant proportion (12%) responded more than six months after the EPO’s invitation. By contrast, after the streamlining initiative was introduced, a minority of patentees (15%) secured a two-month extension of time, and responses filed more than six months after the EPO’s invitation to respond were very rare (just under 2%). An even more drastic pattern appears if we focus just on opposition cases involving a single opponent. Whereas before streamlining more than two-thirds (69%) of patentees filed their response within 4-6 months of the EPO’s invitation, and 9% later than that, after streamlining a mere 8% of responses were filed within 4-6 months, and 0.6% later than that. So, the question arises: has the EPO become stricter about granting requests by patentees for extensions of time or are patentees less likely to ask for an extension in the first place? Our analysis showed that the answer is both - the EPO and patentees have changed their behaviour. Not only is the EPO much less likely to allow requests for an extension of time by the patentee, especially for single opponent cases, but patentees are also much less likely to request an extension of time, perhaps feeling that there is now little point in doing so. Indeed, following the streamlining initiative, only 34% of requests for a two-month extension of time were granted in single-opponent cases. In comparison, 96% of requests were granted before the changes (see Figure 3).
In addition, as shown in Figure 3, fewer patentees are seeking an extension of time for response to oppositions by single opponents, with extensions now being requested in only 18% of cases. Previously, extensions of time were requested in 62% of cases, thus demonstrating that the streamlining initiative has had an effect on patentee behaviour. While the acceleration of opposition proceedings may benefit opponents and the public by helping to provide legal certainty at an earlier stage, the compressed timeline places greater pressure on patentees to prepare their defences more quickly. There is now less time available to generate additional data or to provide expert declarations, whereas the amount of time afforded to opponents to prepare their oppositions (nine months from grant) has not changed. This means that taking early, pre-emptive action is now more important than ever, particularly for patentees. The changing opposition timeline is just one aspect of the life sciences opposition landscape that we have studied. We have also looked at which patents, technologies and companies are most-opposed and which opponents are most active. The full report will be launched this month. Request your copy at https://hubs.ly/H0lBsy80 or email emily.hayes@mewburn.com.
Figure 1
Figure 2
Figure 3
The EPO opposition timeline tightens
Volume 50, Issue 4
2019 Ⓒ Boston Patent Law Association
Message from the President Deirdre Sanders
Members on the Move
Law School Committee Sponsored Event -The Original Sin of Trademark Law: Failure to Function
International & Foreign Practice Committee EPO Presentation
Understanding Foreign Filing License Requirements
The EPO opposition timeline tightens
The 2019 Invented Here! Awards Event – Announces the Winners!
Message from the Editor-in-Chief
USPTO meets critical goals to reduce patent examination pendency
Annual PCT and Madrid Seminar
Proposed by-law amendment
Notice of Nominations for 2019-2020 BPLA Board of Governors
Officers and Board of Governors
Job listings
Community Calendar