The 2024 EPO Boards of Appeal Annual Report has recently been published, and, once again, it’s the appeal success statistics that are drawing the attention of patent applicants, proprietors, and would-be opponents alike.
One particularly striking statistic in this year’s Report is the alarmingly low number of patents recorded as “maintained as granted” on inter partes appeal (just 36 of 1320 cases settled by decision on the merits!).
While we have seen a slight decrease in this kind of appeal outcome during recent years, a drop of this magnitude would be unprecedented.
That can’t be it... Can it?
Figure 2, Annual Report of the Boards of Appeal 2024
Thankfully for proprietors, it would seem that 36 cases isn’t the full story. Phew!
A closer look at the graph above, taken directly from the 2024 Report, reveals another category of cases will conceal additional, entirely positive outcomes for proprietors. Specifically, the “appeal dismissed” category will include cases in which the patent was maintained as granted by the Opposition Division, the opponent appealed, and the Appeal Board subsequently upheld the first instance decision.
In other words, it appears that the 36 patents that were “maintained as granted” only represent those cases where (a) the Opposition Division either revoked or maintained the patent in amended form, and (b) the Appeal Board later reversed that outcome, deciding the patent should stand exactly as granted.
This explanation aligns with the appeal statistics provided by IPQuants. Specifically, their 2024 data shows that patent proprietors fully ‘won’ 20.9% of cases (i.e. the patent was maintained in unamended form, or the opponent’s appeal was rejected/found to be inadmissible), and ‘partially won’ 27.7% of cases (i.e. the patent was maintained in amended form, or the case was remitted to the Opposition Division).
That said, the graph from the EPO’s report does suggest that the trends before the Boards are shifting, so that the Boards are becoming notably more likely to overturn a decision of the OD that was initially favourable to the proprietor in order to revoke a patent on appeal. At the same time, they are becoming a little less likely to overturn a decision of the OD that was initially negative to the proprietor in order to maintain the patent in some form.
Is patentee appeal victory on the decline?
We have analysed data provided by IPQuants to see the trends in patentee victories following opposition and appeal at the EPO.
From 2015-2020, the proportion of appeal cases fully won by proprietors, with the patent maintained as granted or the opponent’s appeal dismissed/found to be inadmissible, remained relatively steady at around 22-24%. In 2021 there was a notable spike in complete patentee victories (27% of cases!), with success rates remaining slightly elevated at 24% and in 2022 and 24.7% in 2023.
‘Partial wins’, where the patent was maintained in amended form or the case was remitted to the Opposition Division, were also relatively steady for proprietors between 2015-2020, sitting at around 30-34% of cases. These numbers dipped slightly in 2021 (to 28.7% of cases), but were largely offset by the rise in complete patentee victories mentioned above.
Unfortunately for proprietors, however, the slight decline in ‘partial wins’ continued beyond 2021, decreasing to 27.9% in 2022 and further to 26.2% in 2023. Additionally, the 2024 statistics (just 20.9% complete ‘wins’ and 27.7% ‘partial wins’) appear to mark the end of the brief uptick in complete victories observed between 2021 and 2023. In fact, 2024 saw the lowest combined proportion of proprietor ‘wins’ and ‘partial wins’ on inter partes appeal over recent years.
The cause of the decline is not entirely clear. It might be tempting to attribute this to the implementation of the EPO Boards of Appeal Rules of Procedure 2020, which give patentees fewer opportunities to amend their case. However, as the same restrictions should also apply to opponents, it is not evident that this would be the cause. Whatever the reason, these new statistics serve as a reminder that relying on success during appeal alone is not a reliable risk-management strategy for proprietors. Filing divisional applications remains one of the most effective tools available to preserve fallback positions and safeguard valuable subject matter.
Here at Mewburn Ellis we have extensive experience handling both EPO oppositions and appeals and work closely with clients to develop proactive strategies that increase the prospect of a successful outcome.
