Oppositions and Appeals
The Eurasian patent law provides for a system of third party opposition against patent protection of inventions granted by EAPO, as well as appeals by applicants or patent owners against EAPO decisions taken upon the examination of Eurasian applications or in the course of processing the Eurasian applications or patents.
The issues on challenges of EAPO decisions are governed by Patent Regulations under the Eurasian Patent Convention (The Patent Regulations), which provides, inter alia, for the procedures summarised below.
- the administrative revocation of the Eurasian patent on the basis of a notice of opposition filed with the EAPO by any person within the period of six months from the publication of the mention of the grant of the Eurasian patent (Rule 53 of the Patent Regulations);
- the 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 (Rule 48 of the Patent Regulations);
- the 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 (Rule 16 of the Patent Regulations).
Interested parties may appeal against the decisions taken upon examination of above mentioned procedures by lodging an appeal with the President of the Eurasian Patent Office.
Such appeals are examined by a board consisting of three EAPO examiners.
The year 2018 saw five oppositions and appeals filed with the EAPO which fall into three groups as follows: three oppositions against granted Eurasian patents, filed under the administrative revocation procedure; one appeal against the decision refusing the grant of a Eurasian patent; and one appeal against the decision 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 in 2018 see Table 1.
| Oppositions and appeals | Year | Total | Including | ||
|---|---|---|---|---|---|
| Opposition against granted patent | Appeal against decision of refusal to grant a patent | Appeal against decision of refusal of patent term extension | |||
| Filed | 2018 | 5 | 3 | 1 | 1 |
| 2017 | 4 | 2 | 1 | 1 | |
| Examined | 2018 | 3 | 2 | 1 | |
| 2017 | 6 | 3 | 2 | 1 | |
| Procedure completed | 2018 | 4 | 3 | 1 | |
| 2017 | 4 | 2 | 1 | 1 | |
The data in Table 1 suggests a slight increase in the number of oppositions filed in 2018 under the procedure of administrative revocation of Eurasian patents compared to 2017. On the other hand, the number of oppositions filed in 2018, both in total and by the type, match the average numbers for the last five years (with the third type of cases showing figures for 2016 to 2017)
Also, the data in Table 1 shows a relatively low and stable level, averaging around 0.1 per cent, of oppositions filed under the procedure administrative revocation of Eurasian patents by the EAPO, relative to the total number of granted patents.
As a positive sign, fewer appeals were filed in 2018, as well as in 2017, against decisions of refusal to grant a Eurasian patent, although the ratio of such decisions taken upon the substantive examination of Eurasian applications remained at roughly the same level. Thus, 14,2 per cent of decisions of refusal to grant a Eurasian patent were appealed against in 2018, compared to 16,7 per cent in 2017, while the average figure for the preceding five years (2011 through 2016) stood at 22,7 per cent. The lower level of challenged decisions of refusal to grant a Eurasian patent is an evidence of legitimacy and reasonableness of the decisions taken in the framework of patent application’s examination.
The EAPO evaluates ex-parte and inter parties procedures results based on completed cases where the ruling is final. These are the decisions resultant from the appeal proceedings, or the decisions that became final following the expiration of the term established for filing an appeal.
Table 2 summarises the data concerning the examination of oppositions under the administrative revocation of the Eurasian patent procedure in 2018
| Oppositions against granted patent, year | Total | Revocation of patent | Patent maintained in amended form | Opposition rejected |
|---|---|---|---|---|
| 2018 | 3 | 1 | 1 | 1 |
| 33,3% | 33,3% | 33,3% | ||
| 2017 | 2 | 1 | 1 | |
| 50% | 50% |
Upon examination of oppositions under the procedure of administrative revocation, both in 2018 and the preceding years, more than 50 percent of opposed patents are eventually maintained, either as granted or in an amended form.
If and when the validity of the Eurasian patents maintained in force by the EAPO decision under the administrative revocation procedure is further challenged on the territory of EAPC Contracting States (a rather high level of 56 per cent of cases), the level of eventual invalidation of such patents, totally or in part, has been low. Notably, the Eurasian patents whose scope of protection was limited as part of EAPO’s administrative revocation procedure, proved the most “resistant” to such eventual invalidation.
The examination of the opposition against the refusal to grant a Eurasian patent was completed in 2018 with a decision to reject the opposition as well as the subsequent appeal.