Opposition Strategies

11 January 2016

The EPO opposition procedure: Affordable, powerful, and of increasing strategic importance as Europe’s Unified Patent Court approaches

The proposed Unified Patent Court fee for revocation proceedings is €20,000. The EPO fee for opposition proceedings is €775. 

If Europe sits somewhere in your IP strategy, the opposition procedure at the EPO should routinely be considered. The procedure is simple and cheap, and is (and will remain) the only way of taking out any European patent across its full geographical scope in a single step. It is well-established and tried and tested, and backed up by a respected body of largely-settled case law. 

Users of the Opposition System

The first European patents were granted in January 1980 and the first opposition was filed around a year later against EP0000056, itself granted in April 1980 to BASF Aktiengesellschaft. 

Since then the EPO opposition system has grown enormously. An analysis of the EPO’s Espace Bulletin DVD data suggests that just over 3000 patents were opposed in 2014, continuing a steady increase from around 2500 opposed patents in 2010. 

 According to the EPO (source: EPO annual report for 2014), in 2014 US companies obtained the highest number of EP patents (22% of the total), followed by applicants from Germany (20%), Japan (17%), France (7%) and Switzerland (4%). Approximately half of European patents were granted to non-European applicants, with the modest number of patents granted to Chinese companies continuing a rapid growth pattern.

Around 1500 different opponents filed just short of 4000 oppositions in 2014. German opponents dominated the opposition scene, accounting for around 47% of oppositions filed. They were followed in order by US, UK, Swiss and French opponents. 

Further analysis indicates that some companies take a focussed approach to oppositions, filing large numbers of oppositions (and in a number of instances nearly all of their oppositions) against a single party. Other companies appear to have a more distributed strategy, with the Siemens group, BASF SE, The Procter & Gamble Company and Generics (UK) Limited each spreading their oppositions over 20 to 40 different patentees.  

Opposition strategies B30

Looking at countries of origin, it is apparent that over a third (around 130) of the European patents opposed by US opponents in 2014 were owned by US proprietors. UK opponents directed over 40% of their oppositions at European patents owned by US proprietors. German opponents focussed the biggest proportion (around a third) of their oppositions on European patents owned by German proprietors, but opposed more European patents owned by US proprietors (around 340) than were opposed by US, UK and Swiss opponents combined.

The five most opposed European patents in 2014 had 10 or more oppositions filed against them, and are EP1286665 (17 oppositions), EP2061561 (15 oppositions), EP2292219 (13 oppositions) and EP2137537 and EP2449070 (both receiving 10 oppositions).  The first three of these are in the same IPC class, namely A61K and relate to preparations for medical purposes. The 17 oppositions against EP1286665 have already been resolved – the patentee chose “self revocation”.

Uses of the System

Once an opposition is on file, the patentee must question whether the patent will survive at all, let alone with commercially useful scope. A filed opposition therefore serves as a potential bargaining chip which may be leveraged to strategic advantage in the future.

Some consider an EPO opposition as an unaggressive yet powerful mechanism for testing the strength of a patent. Others compare it more directly to litigation. The following considers arguments for and against the EPO opposition procedure from a strategic point of view.

  • The EPO opposition system is well respected and generally considered predictable. The EPO Opposition Divisions and Boards of Appeal are experienced and include technically-qualified members. The case law and procedure are well-established and largely settled. Within Europe, the UPC is yet to prove itself.

  • The invalidation rates for EPO oppositions are currently lower than for example those widely reported in respect of inter partes reviews at the USPTO. Nonetheless, around two-thirds of opposed European patents are cut-down in scope or fully revoked by the conclusion of the procedure.
  • The official fees are relatively low. The EPO fee for opposition proceedings is currently €775. The EPO appeal fee is €1860. In contrast, the proposed UPC fee for revocation proceedings is €20,000, and the proposed UPC fee for appeal is €16,000.   
  • The opposition procedure is administered by the EPO. It is not a court procedure, and accordingly has a relatively unaggressive character which can be attractive for many parties. There is minimal costs risk – there are no court costs and there is no direct risk of damages.
  • The filing of an opposition places down a marker – the guarantee of a chance to have the patent revoked in its entirety – across its full geographical scope – in a single procedure. A filed opposition can be a useful tool in negotiations. Filing an opposition on the other hand inevitably brings the value of the patent to the attention of the (potentially otherwise unwitting) proprietor. 
  • An EPO opposition may be filed in the name of a nominal or “straw man” opponent. Hiding the identity of the “true” opponent may be important in some commercial situations.
  • The procedure only addresses the validity of the patent – the EPO does not concern itself with matters of infringement. However, unless the patent is revoked or sufficiently limited in scope, the procedure might not ensure that a conflict involving the patent is finally settled.
  • The benefit of experience at the EPO can inform strategy adopted in other jurisdictions. 
  • Claim amendments may be filed by the proprietor and admitted to the proceedings at various stages. Within certain bounds, new prior art and arguments submitted by the opponent may also be admitted during the procedure. This potential for uncertainty may be put to tactical advantage.
  • An EPO opposition can be filed on the basis of any or all of the grounds of opposition (Article 100 EPC). Not all grounds need be relied upon. The opponent may also freely choose which prior art (if any) and arguments it forwards in the opposition. For example, although generally not advisable, an opposition could be based exclusively on formal grounds, i.e. those not directly related to prior art such as added matter. 
  • The typical timescales for an EPO opposition are relatively long. At first instance, the majority of cases are resolved within 4 years of patent grant (including the initial 9-month opposition term). If appealed, the majority of cases are resolved within 8 years of patent grant. This may enable the parties to react to changing commercial situations during the pendency of an opposition, but puts the validity of a patent in doubt (for both parties) for a considerable period of time. 

Where an EPO opposition sits in a worldwide strategy will differ from party to party, according to the surrounding business environment and culture, and from technical field to technical field. 

The window of opportunity to oppose a European patent centrally at the EPO, whether unitary or not, is brief - 9 months from grant. Anyone other than the proprietor can oppose, and straw man opponents are permitted. Where there is a perceived risk, the opportunity should be seized with both hands.

David Lewin

David Lewin

Partner

Our Expert
David Lewin
David Lewin
Locations: London (UK)

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