Oppositions and Appeals

The EAPO legal framework governing opposition and appeal institution relies on Rules 53, 48 and 16 of Patent Regulations under the Eurasian Patent Convention (Patent Regulations). This framework provides for, inter alia, the procedures summarised below.

• The administrative revocation of the Eurasian patent pronounced on the basis of a notice of opposition filed with the EAPO by any person within a period of six months from the publication of the mention of the grant of the Eurasian patent
• Procedure of appeal against the refusal to grant a Eurasian patent and against other decisions taken in the course of processing Eurasian applications and Eurasian patents
• Procedure of invalidation of the granted extension of the Eurasian patent term, which may be filed by any person after publishing the mention of the grant of the extension of the Eurasian patent term within the entire period of such patent validity, including the supplementary term of patent protection.

Examination of above mentioned oppositions and appeals is carried out by a board consisting of three technically qualified EAPO examiners.

The EAPO set up a specialized unit to address appeals and oppositions in 2011 which has since made good progress in streamlining the procedures in place and come up with new ones as overviewed below.

• In force since 2015, the new Rule 48(2) of Patent Regulations provides that the applicant or the patent holder are in a position to appeal not only against a decision of refusal to grant a Eurasian patent, but also against any other EAPO decision that affects the rights of such applicant or patent holder. Under this provision, the last three years ten appeals against decisions refusing to grant Eurasian patent term extension were filed by patent holders.
• In effect since 2017, the amended Rule 49(3) of Patent Regulations allows applicants appealing the decision of refusal to grant a Eurasian patent to make amendments to claims deemed necessary for the patentability of their invention.
• In force since 2017, clauses (6) through (9) as addenda to Rule 16 of Patent Regulations allow any third party to file with EAPO a notice of invalidation of Eurasian patent term extension granted by the EAPO.

The period between 2011 and 2017 saw 45 oppositions filed with the EAPO which fall into several groups as follows: 15 oppositions against granted Eurasian patents, filed under the administrative revocation procedure; 23 appeals against decisions refusing the grant of Eurasian patent and 7 appeals, since 2015, against decisions refusing the grant of a Eurasian patent term extension.

For the structure and number of oppositions and appeals filed with and settled by the EAPO between 2011 and 2017 see Table 1.

The figures in Table 1 show that the cases filed in 2017 in total and by type match the average numbers for the period between 2011 and 2016 (with the third type of cases showing figures for 2015 through 2017). Overall, however, total filings have decreased in number slightly since 2016.

Table 1 as well shows that the administrative revocation of Eurasian patents by the EAPO triggers is characterized by a relatively low level, averaging around 0.1 per cent, of filed opposition against the grant of Eurasian patents compared to the total patents granted.

At the same time, the years between 2011 and 2017 saw increasing filings of appeals against the decision to refuse a Eurasian patent - 23 appeals filed, which constitute 22.7 per cent of 102 decisions of such kind taken in total within this period. The growing figures of appealed decisions of refusal is a presumable result of increased number of decisions of this kind taken upon the substantive examination (twice the amount of the whole preceding period). Otherwise, the figures may be regarded as evidence of better quality of examination.

The EAPO evaluates opposition results based on completed cases where the ruling is final and resultant from the appeal proceedings or decisions that have become final as a consequence of the expired period established for filing an appeal.

For opposition and appeals examination performance between 2011 and 2017 see Tables 2 and 3.

The figures in Table 2 prove the well-established fact that the procedure of administrative revocation of the patent is one of the effective mechanisms for enhancing patent quality. Thus, the oppositions satisfied, fully or in part, in the administrative revocation of the Eurasian patent procedure total twice as more than those rejected, 62.5 per cent and 37.5 per cent, respectively. Notably, more than half the patents opposed (56.3 per cent) are eventually maintained either as granted or in an amended form.

The results of examined appeals against decisions of refusal to grant a Eurasian patent as reported for 2017 and in average figures for the aforementioned period as reported in Table 3, also show a high level of satisfied appeals where the cases accommodated and rejected are in the ratio of 3 to 2. An opportunity to present amendments to claims in the framework of appeal procedure is among powerful drivers for this performance indicator.

The track record of EAPO's examination of oppositions and appeals calls for further enhancing relevant procedures. These will include, inter alia, the appeal procedure in the administrative revocation of the Eurasian patent as a result of the amendments made to the Patent Regulations as endorsed by the EAPO Administrative Council in its ordinary meeting in 2017.