Case law decisions are seldom an easy read. So today’s post will be relaxing, as it deals with some recently published stats. Numbers instead of letters for a change, in the form of the annual report of the Boards of appeal of the EPO, published in the OJ. This yearly publication is a nice source of general information on the activity of the Boards of appeal in the past year.
Here is my selection of subjective highlights from the report. I will focus only on the technical boards of appeal, which handle the vast majority of appeals at the EPO.
First, the total number of new cases, has increased to a record total of 2748. That’s a 15% increase relative to 2015, but only a 6% increase relative to 2012, since there was a drop in new cases in 2013 and 2014.
Second, the total number of settled cases is almost stable at 2229 (down by 3% relative to 2015). However, the number of settled cases after a decision on the merits (i.e. excluding cases in which the appeal was withdrawn, or the statement of grounds of appeal was not filed, etc.) was only 1243, down by 9% relative to 2015.
What I think this all means is that backlog is likely to increase – unless the proportion of withdrawn appeals and the like were to increase for some reason.
This seems to be confirmed by the comparison of the number of pending cases on December 31, 2016, relative to the number of pending cases on December 31, 2015: 8381 vs. 7862. That’s a 6.6% increase.
This also seems to be confirmed by the evolution of the number of cases pending over two years on December 31, 2016, which is 3979 (up by 5% relative to December 31, 2015). The oldest appeals still pending were filed in 2008.
The overall length of proceedings was 2 years and a half, or more precisely 37 months on average (40 months for ex parte appeals and 34 months for inter partes appeals), up by 1 month since 2015.
Hopefully measures will be taken to curtail the increasing backlog. At the very least, the positions in the Boards which are still vacant should be filled soon. In fact, based on the Supplementary publication No. 1 in the 2017 OJ (Information from the Boards of Appeal Presidium, business distribution and texts relating to the proceedings), there are still a number of missing Board of appeal members as of the beginning of 2017.
The most striking example is Board 3.3.02, with no chair and three positions of technical members out of four which are vacant. A helpful footnote indicates that “in view of the vacancy situation in Board 3.3.02, the provisions of Article 3, paragraph 3 will be followed for the composition of the board in particular cases“. Article 3(3) of the Business distribution scheme provides that “if the circumstances of the appeal make it necessary, the Chairman may designate a technically qualified member from another Board. In so doing he shall procure the consent of the Chairman of that Board“. But I am not sure how this can work since there is not even a chairman in this Board.
I would certainly be curious to get some updated information from knowledgeable readers about the vacancy situation – and especially, about what the heck is the matter with Board 3.3.02.
Anyway, back to the 2016 annual report, and let’s now look at the proportion of ex parte and inter partes cases. Here, the trend seems to be an increase in the proportion of inter partes cases. These cases represent 66% of all new cases in 2016, up by 5.3% since 2014. Inter partes cases are generally more complex than ex parte cases. So this trend will not help reduce the backlog.
In terms of technical fields, appeal cases are traditionally distributed into four groups: mechanics cases (handled by Boards 3.2.01 to 3.2.08), chemistry cases (handled by Boards 3.3.01 to 3.3.10), physics cases (handled by Boards 3.4.01 to 3.4.03) and electricity cases (handled by Boards 3.5.01 to 3.5.05). Of course those are very rough categories.
Since 2014, there has been a marked increase in both the number and proportion of mechanical cases (36.8% of all new cases in 2016), an increase in the number of chemical cases, which only translates into a moderate increase in relative proportion (32.8% of all new cases in 2016), a stability in the number of physical cases (9.4% of all new cases in 2016) and actually a reduction in the number of electrical cases (21% of all new cases in 2016).
It is also quite interesting to look at the proportion of opposition cases relative to the total number of cases, depending on the technical field:
- Mechanics: 86%.
- Chemistry: 77%.
- Physics: 37%.
- Electricity: 27%.
I assume that the major explanation for this large discrepancy is that the refusal rate is very low in mechanics and chemistry, and that it is higher in physics and electricity, especially because those are the categories in which most computer-implemented inventions are classified. As far as I can tell based on the work my partners Aujain and Patrick do, prosecuting software-related applications at the EPO is an entirely different game from prosecuting other applications. Now, a higher refusal rate probably translates into a higher examination appeal rate.
The outcome of the appeals, further to a decision on the merits, differs depending on the nature of the cases (ex parte or inter partes). The majority of examination appeals are dismissed (54.7% in 2016), but the contrary is true for opposition appeals (only 39.3% in 2016).
In opposition cases, the actual outcome of a successful or partly successful appeal can of course vary greatly. In 4% of cases, the opposition is rejected. In 20.5% of cases, the patent is revoked. In 23.8% of cases, the patent is maintained in amended form, and in 12.4% of cases there is a remittal to first instance.
All of this is fine and well, and we are grateful for this report. But there is also a lot that the report does not say. I will take three examples.
First, the report does not address discrepancies from one board to the other in terms of duration of the proceedings.
In the past I sometimes performed a quick and empirical analysis of the length of appeal proceedings in front of a particular board, based on a representative sample of recent decisions, when my client was interested in predicting how long it would take until a final decision for a particular case.
It turns out that the variation from one board to the other is huge, probably from less than 2 years in front of some boards to more than 5 years in front of other boards. This is a major problem which I think would deserve to be better documented – and addressed.
Second, the report does not address board-to-board discrepancies in terms of practice and outcome which, again, I suspect, can be significant.
From time to time, some law firms publish studies focusing on certain aspects.
For instance, JA Kemp recently published a review of software patent decisions in 2016. The review in particular shows a high refusal / revocation rate, which again is to be expected in this specific technical field.
Also, a very informative article by Maarten Nollen can be found in epi Information 1/2015, which focuses on revocation decisions issued in 2014. The article again illustrates interesting differences depending on the technical field at stake.
Third, the annual report does not contain any global evaluation of the outcome of opposition proceedings when taking into account first instance and appeal. Everyone has in mind a rule of thumb of the “three thirds” (i.e. one third of oppositions rejected, one third of patents revoked, and one third of patents maintained in amended form). However, interestingly, the rule may not be accurate when one looks at oppositions under appeal. In the abovementioned article, Maarten Nollen claims that the overall revocation rate for such cases is actually more than 50%.
So, too bad that the annual report is somewhat limited and that no comprehensive statistical analysis of the activities of the Boards of appeal has been made available. On the other hand, this is not completely surprising. Statistics are almost by nature political. Therefore, is it not a natural tendency for all institutions to make a selection of numbers according to their agendas?