Spotlight on Engineering Oppositions

The Mewburn Ellis team have a proven track record in opposition proceedings. We currently have in excess of 300 live patent oppositions at the EPO and have successfully defended and attacked hundreds over the years. We understand that successful oppositions require not only deep technical expertise and knowledge of the subject matter under scrutiny, but a forensic understanding of the evolving procedural aspects of the European Patent Office (EPO) process and timelines.

In autumn 2020, we analysed more than 8000 opposition cases filed at the EPO over the last 12 years, studying the timelines for hundreds of engineering, electronics and software oppositions. Using a tailored computer programme built by Camille Terfve, associate in our life sciences team, we were able to identify trends and answer key questions. Through this research we wanted to truly understand how oppositions are affected by procedural changes and the Covid-19 pandemic so we can advise our clients on the best opposition strategies to succeed.

As engineering, electronics and software cover a vast range of disciplines, we focused in on four sectors: Transport, Medical Devices, Telecommunications and Software. These sectors were chosen not only for their importance as measured by number of patent applications and number of oppositions, but also their significance in the wider economy. In the report we look at whether opposition outcomes are the same across different technology sectors and which players are the most active in oppositions.

In 2019 Mewburn Ellis launched its first special report on EPO opposition trends. The report came at an important juncture, with procedural changes introduced by the EPO in 2016 to streamline the opposition process taking effect. The original research looked at oppositions in the life sciences.

Now, two years on, this new research focuses on engineering, electronics and software. We had several key questions we wanted to address when we commenced this new research. These were:

Is the EPO’s streamlining of the opposition process still impacting the timings of key stages in the opposition process?
Can we see effects of the disruption caused by the Covid-19 pandemic?
Are opposition outcomes the same across different technology sectors, or do they vary?
Who are the most opposed patentees?
Who are the most active opponents?

In autumn 2020, we analysed more than 8000 opposition cases filed at the European Patent Office (EPO) over the last 12 years, studying the timelines for hundreds of engineering, electronics and software oppositions.

The research enabled us to see how oppositions have been affected by procedural changes at the European Patent Office and by the Covid-19 pandemic. With a focus on Transport, Medical Devices, Telecommunications and Software, the report also looks at how opposition outcomes vary across the four different technology sectors and which players are the most active.

Emma Graham, Partner and co-author of the report commented, “The EPO’s streamlining initiative has been a welcome boost for patentees, particularly for those in the technical space of computer implemented inventions (including software-related inventions), as the “Early Certainty” programme provides stronger legal and commercial certainty at an earlier stage.

“This is crucial for patentees in a rapidly evolving technical landscape as these inventions will typically have a shorter shelf life compared to other fields; if a patent is to be commercially valuable, it should be granted and any oppositions resolved before this shelf life is reached. Our research, which shows the acceleration of engineering, electronics and software oppositions over recent years, underlines the EPO’s streamlining initiative’s success.”

Stephen Gill, Partner and co-author of the report added: “When analysing data from the EPO, we were keen to look at exactly how the EPO streamlining initiative has impacted the overall opposition process since it was first introduced nearly five years ago, along with how the pandemic has disrupted procedures.

“It was encouraging to see how successfully and efficiently the EPO responded to the postponement of hearings in the early days of the pandemic by introducing video-conferencing for opposition division oral proceedings. This has allowed the opposition timeline to be maintained for many cases, and is something we expect the EPO to continue with long after the pandemic. It brings advantages for attorneys and applicants, and is also consistent with a wider “greener agenda."