A Comparative Analysis of Patent PostGrant Review Procedures in the U.S.,
Europe, China and Japan.
Alicia Esposito
University of Connecticut School of Law
J.D. Candidate 2013
May 31, 2012
Overview
• Review
▫
▫
▫
▫
USPTO
EPO
JPO
SIPO
• Comparison
• Analysis and Suggestions
▫ Post-Grant review procedures
▫ Small and medium business entities
Current “Post-Grant” Review Methods at the
USPTO
• New Inter Partes Review - Not available until 9months 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
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. PGR
GROUNDS
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 postgrant 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 reexamination
• 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
TIMING
¥ 49,500 + ¥ 5,500 per claim (€ 500 + € 55)
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
APPEAL
None
May be filed at anytime after the grant of a patent,
even after the patent has expired. Duration about 1year.
Either party may appeal to the Tokyo High Court.
During appeal the patent holder may still amend the
claims of the patent.
J P O O p p o s itio n s F ile d
9 000
8 000
Number of Filings
7 000
6 000
5 000
4 000
3 000
2 000
1 000
0
1 996
199 7
1 998
199 9
20 00
Ye a r
2 001
200 2
2 003
19
93
19
94
19
95
19
96
19
97
19
98
19
99
20
00
20
01
20
02
20
03
20
04
20
05
20
06
20
07
20
08
20
09
20
10
Number of Petitions
Trials for Invalidity Filed
400
350
300
250
200
150
100
50
0
Year
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-1992
Pre-Grant
Oppositions
1992-2000
Oppositions &
Post-Grant Invalidation
Procedure
Post-2000
Post-Grant
Invalidation Procedure
Currently Implemented Invalidation Procedure
Parties
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
2500
Number of Filings
2000
1500
1000
500
0
1998
1999
2000
2001
2002
Year
2003
2004
2005
2006
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
▫
▫
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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