The length of time taken by the EPO to hear oppositions has reduced significantly since the office introduced streamlined processes in 2016, a new report reveals.
Confirming that the EPO’s new policies have impacted proceedings in the relatively complex life sciences space – and not just in areas such as high-tech and telecommunications – the study finds that several parts of the opposition timeline have been shortened, while the number of filing extensions requested and granted has fallen steeply. The upshot of this is that all those involved in oppositions may need to rethink their strategies.
EPO Opposition Trends in the Life Sciences Sector: Special Report 2019, produced by Mewburn Ellis, analyses over 5,000 opposition cases at the EPO between 2009 and 2019. It provides insights into the trends concerning cases involving patents with life sciences IPC codes and how these compare to oppositions involving other kinds of technology. Against the background of the EPO’s introduction of a streamlined opposition procedure in July 2016, the report compares oppositions before and after this change.
Life sciences professionals may be especially interested in understanding the oppositions process, because of the high commercial value of patents in the sector, where R&D costs and regulatory barriers are unusually high.
The report confirms that life sciences patents are more often the target of oppositions than those in other areas. For example, 400 pharmaceuticals patents were opposed in 2018 - more in absolute terms than any other technical field. This constitutes 5.5% of all pharmaceuticals patents that could be opposed in this period – higher than the 3.2% average across all categories.
On the biotechnology side, 4.3% of patents were opposed; and while only 2.7% of medical technology patents were opposed, rights in this field – and in biotechnology – joined pharmaceutical patents in the top 10 most challenged groups of rights in absolute terms.
Of those patents which were challenged by large numbers of opponents in 2018, almost all were in the life sciences. The most opposed life sciences patents tended to protect combination therapies, methods of manufacturing biotherapeutics and biotech platform technologies, such as CRISPR/Cas9.
The study’s most interesting findings, however, relate to the length of the EPO’s opposition proceedings. Having shown no appreciable decrease in length between 2009 and 2014, the average time taken to complete life sciences oppositions has fallen significantly since then, and especially since 2016. The mean duration of a proceeding in 2015 was 22.1 months; by 2018, this had dropped to 17.1 months. In 2009, it stood at 25 months. As such, the EPO seems on track to hit its target of completing oppositions in 15 months by 2020.
“What the data show is that the oppositions process is getting faster for life sciences patents,” comments Katherine Green, who led the Mewburn Ellis team that conducted the research. “The EPO’s official statistics tell you that oppositions in general are getting quicker. But life sciences professionals have tended to think that this might not apply to them, because their cases are more complex and tend to be slower. We have confirmed that the changes at the EPO are affecting the life sciences too.”
And it is not just the overall length of proceedings that has decreased. The average time taken by the EPO to issue an invitation to the life sciences patentee to respond to oppositions dropped suddenly towards the end of 2017, from between one and two months after the expiry of the nine-month opposition period – where it had been since 2009 – to just under one month.
The average length of time between the end of the opposition period and oral proceedings has been falling since 2009 and has continued to do so since streamlining. The period between a patentee’s response to an opposition and summons to oral proceeding has dropped from six months to three months since the EPO’s streamlined procedures were introduced.
There have also been changes in rate at which extensions to the patentees’ four-month opposition response deadline have been granted. Prior to the streamlining initiative, 68% of rights holders secured a two-month extension to this deadline and 12% received an even longer postponement. Since the changes, only 15% of patentees have been granted a two-month extension, with longer delays becoming very rare indeed: only 1.6%.
As well as directly reflecting a change in EPO practice, this trend seems to have resulted from a change in patentee behaviour. Whereas, extensions were previously sought in over 60% of cases, only 18% of cases now see the rights holder apply for more time.
What does this mean for professionals in the industry? “Altogether, this means that if you are going to be defending patents, you need to act quickly and work out your story from the beginning,” Green states. “Historically, lots of patent applicants might have kept their cards close to their chest in the early stages of an opposition. You should not do that. You should make sure you know what your case is, what your fall-back positions are, and what your rebuttals are, and set them out from the very start.”
Those opposing patent grants must also get their ducks in a row early too, Green adds: “If an opponent files a very basic opposition, hoping to file further arguments later in the procedure, they might get caught out, because the board has filed its preliminary opinion more quickly than expected, not taking into account the other arguments. Everyone is having to do substantive work earlier in the proceedings than they used to have to do.”
This article first appeared in IAM. For further information please visit https://www.iam-media.com/corporate/subscribe
