analysis of patents post approval
TRANSCRIPT
A Comparative Analysis of Patent Post-Grant Review Procedures in the U.S., Europe, China and Japan.
By A.Arputha Selvaraj
Overview
• Review ▫ USPTO▫ EPO▫ JPO▫ SIPO
• Comparison • Analysis and Suggestions
▫ Post-Grant review procedures▫ Small and medium business entities
• New Inter Partes Review - Not available until 9-months after grant, invalidity may be raised under 35 U.S.C. 102 or 103 and only on the basis of prior art consisting of patents or printed publications
• Ex Partes - available at anytime, less grounds than PGR, only between examiner and patent owner
Current “Post-Grant” Review Methods at the USPTO
Post Grant Review: Purpose
• Further align the U.S. patent system with foreign patent systems
• Efficiency▫ In the patent system and▫ In the proceeding
• Quality • Protect the rights of inventors
and patent owners
Overview of U.S. PGRGROUNDS Grounds include lack of novelty,
obviousness, enablement, written description.
PARTIES Anyone may file a petition for PGR except the patent owner.
FEES The opposition filing is not complete until the opposition filing fee of USD 35,800 is paid.
TIMING Petition for PGR must be filed within 9 months of the patent being granted. Completed within 1-year.
FORUM The proceeding is conducted before the Patent Trial and Appeal Board
INSTITUTION If it is more likely than not at least one of the claims challenged in the petition is unpatentable, PGR will be instituted.
Overview of U.S. PGR
DISCOVERY Discovery of exhibits cited in a paper or testimony, cross examination of affidavit testimony. Parties are required to provide information that is inconsistent with a position advanced by the patent owner or petitioner
AMENDMENTS Once instituted, the patent owner is permitted to file observations and where appropriate amendments to the description, claims and drawings. Amendments must have the permission of the Board.
ESTOPPEL If PGR results in a final written decision, the petitioner, the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review.
DECISION AND APPEAL
Decision is appealable to the Federal Circuit
Settlement• Post-grant review can be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner (agreement must be in writing)
• If no petitioner remains in the post-grant review, the Office may terminate the post-grant review or proceed to a final written decision
• The agreement or understanding can be treated as confidential information
Why PGR?
• Petitioners may file a PGR petition of an issued patent or reissue patent on more grounds than those available with inter partes or ex partes re-examination• Grounds for filing a PGR petition include:
35 U.S.C. 101, 102, 103, 112 Excluding compliance with the best mode requirement
• Strategy to avoid costly litigation
European Opposition Proceedings
GROUNDS Lack of novelty, lack of inventive step, and lack of industrial application.
FEES The opposition filing is not complete until the opposition filing fee of EUR 705 is paid.
TIMING Opposition must be filed within 9 months of the patent being granted.
FORUM Opposition hearings are heard and decided by the Opposition Division.
AMENDMENTS Once instituted, the patent owner is permitted to file observations and where appropriate amendments to the description, claims and drawings.
European Opposition Proceedings
EVIDENCE & PROCEDURE
First conducted using the writings submitted by both parties.Other written evidence may also be obtained such as documents, requests for information and sworn statements in writing.
ESTOPPEL None
DECISION The Opposition Division will decide whether the patent should be revoked or maintained.
APPEAL The decision of the Opposition Division may be appealed to the Board of Appeal. The Board has two options: (1) take on the power given to the Opposition Division and decide the case, or (2) remit the case for further prosecution to the Opposition Division.
Post-Grant Oppositions in the Japanese Patent Office
1996-2003 - Post Grant Oppositions in Japan
GROUNDS Lack of novelty, ease of invention (obviousness), and lack of industrial application.
FEES ¥ 49,500 + ¥ 5,500 per claim
TIMING Opposition must be filed within 6 months of the patent being granted.
PROCEDURE Post-grant oppositions and trial for invalidity proceedings could not be combined, thus causing confusion, delays and an undue burden to the patentee and JPO.
PARTIES Challenging party had very little to no participation in the opposition proceeding.
ESTOPPEL NONE
APPEAL Only for patent holder.
Current Trial for Invalidity 2004 – present
GROUNDS Lack of novelty, ease of invention (obviousness), and lack of industrial application.
FEES ¥ 49,500 + ¥ 5,500 per claim (€ 500 + € 55)
TIMING May be filed at anytime after the grant of a patent, even after the patent has expired. Duration about 1-year.
PARTIES The modified invalidated appeal allows anyone to file an invalidation petition. The identity of the petitioner may remain anonymous.
FORUM The invalidity petition proceeds as an oral hearing before a three-member panel of the Board of Appeals and Trials.
ESTOPPEL None
APPEAL Either party may appeal to the Tokyo High Court. During appeal the patent holder may still amend the claims of the patent.
JPO O ppositions Filed
0
1000
2000
3000
4000
5000
6000
7000
8000
9000
1996 1997 1998 1999 2000 2001 2002 2003
Year
Number of Filings
Trials for Invalidity Filed
0
50
100
150
200
250
300
350
400
199319941995199619971998199920002001200220032004200520062007200820092010
Year
Number of Petitions
Why more oppositions than trials for invalidity?
• Prior to 2004, trials for invalidity were limited to interested parties, while oppositions were open to everyone.
• No estoppel provisions in opposition proceedings, so even though the petitioner did not have the right to appeal the adverse decision, one could bring a claim on a different ground, even though it could have already been raised in the prior proceeding.
• These two aspects, combined with the ability to file petitions anonymously and the limited duration available (6 months) to file such oppositions made for the oppositions to be filed in much greater numbers than the trial for invalidity.
Post-Grant Oppositions in the Chinese State Intellectual Patent Office
Opposition Timeline at Chinese SIPO
Pre-1992Pre-GrantOppositions
1992-2000Oppositions &
Post-Grant InvalidationProcedure
Post-2000Post-Grant
Invalidation Procedure
Currently Implemented Invalidation ProcedureParties Anyone may bring a petition to the SIPO Patent
Reexamination Board to invalidate a patent at anytime after grant.
Grounds Lack of novelty, inventiveness, and practical applicability; inadequate enablement and written description; the addition of new matter after the filing date; unpatentable subject matter; double patenting; and indefinite claims.
Forum The Patent Reexamination Board of is comprised of a panel of three to five experienced patent examiners or a single experienced examiner.
Evidence The evidence may be based prior art patents, printed publications, and non-documentary evidence. Non-documentary evidence includes evidence such as public use or knowledge before the filing date.
Amendments The patent holder may amend the claims, however, akin to other post-grant proceedings, the amended claims may not broaden the scope of the patent. The description and drawings, however, may not be amended.
Decision, Appeal, Duration & Cost
DECISION The Board may maintain the patent, maintain the patent as amended, declare the entire patent invalid or declare invalid certain claims of the patent.
ESTOPPEL NONE
APPEAL The opportunity for appeal is available to either the patent holder or the petitioner. The defendant in the appeal action is the Patent Reexamination Board
DURATION Approximately 2 years
COST RMB 3000 = € 371
Invalidation Requests
0
500
1000
1500
2000
2500
1998 1999 2000 2001 2002 2003 2004 2005 2006
Year
Number of Filings
USPTO PGR Compared with JPO Opposition Proceedings
• Critics warn against implementing an opposition proceeding due to the issues with the Japanese Opposition proceedings.
• Their concerns with the failed JPO oppositions do not appear to be an issue with PGR for a number of reasons:▫ You have a longer period of time to file the opposition (9 months versus 6 months)
▫ There are estoppel provisions that will likely deter frivolous claims
▫ The third party petitioner is involved in the petition
▫ Either party has the right to appeal an adverse decision
• These considerations were not present in the JPO opposition procedure
USPTO PGR Compared with SIPO Opposition Proceedings
• One concern with the pre-2000 opposition system before the SIPO was the overlap between two different types of re-examination procedures.
• Critics of the SIPO opposition proceedings contend that:▫ The post-grant opposition procedure added to SIPO's burden of examination.
▫ The invalidation procedure could not begin until the opposition procedure ended, possibly adversely affecting a concerned party's interest.
▫ A patent holder could be subject to multiple attacks and therefore was unfair to patent holders.
USPTO PGR Compared with EPO Oppositions
• One drastic difference between PGR and the EPO is the estoppel provision.
• Those challenging a patent issued in the EPO are not estopped from later raising the same issues in litigation. This is one predominant reason that oppositions are so popular, as many as 4 to 8 percent of EPO patents are opposed.
• But, despite their popularity, oppositions in the EPO are criticized for the length of time between filing the opposition and the decision, up to five years.
Cost to File PGR Petitions
• Following the release of the USPTO Proposed Rules, many of the comments regarding PGR revolved around the proposed fees for filing a PGR petition.
• Specifically, they are concerned with the cost as compared with the EPO Opposition cost. ($35,800 v. € 705)
• COMPARE - Patent litigation can easily cost anywhere from 3 -10 million. With 60% of the costs incurred during discovery.
Comments on Cost
▫ The USPTO Director made a few notable distinctions between PGR and EP Oppositions. For example, he noted that PGR proceedings under the AIA are akin to litigation proceedings rather than a second post-grant examination. EPO Oppositions are conducted by specially appointed examiners; do not allow for discovery; and no estoppel is imposed after an unsuccessful challenge.
EPO Oppositions can take over 2 years to complete
PGR proceedings under the AIA are to be concluded within one year of institution
How do we improve the post grant opposition procedures?• First, what are we trying to accomplish?▫ Improve the quality of patents▫ Reduce litigation▫ Prevent abuse▫ Efficiency
How can small and medium enterprises use post-grant oppositions?• Considerations
▫ Cost ▫ Estoppel provisions▫ Strength of invalidation grounds▫ Duration
• Defense tactic during litigation▫ Possibility for settlement prior to decision ▫ Remember - does not inquire into infringement, only patent validity
