Reviewing the New USPTO Post Grant Review System with Reference to EPO Oppositions

by Dennis Crouch

Time is flying and the newly revamped host of USPTO administrated post-grant patent procedures is on its way.  As we speak, the USPTO is continuing to develop its rules and internal operating procedures for handling the new options.  This post focuses on the new post-grant review (A.K.A. opposition proceeding), which is being created by splitting the current inter partes reexamination system into two parts: post-grant review and inter partes review.  Current reexamination practice focuses solely on questions of novelty and obviousness based upon prior art in the form of printed publications. The new post-grant review system broadens the bases for review to virtually any validity challenge.   However, post-grant reviews will only be available during a 9–month window following patent issuance. 

Full implementation of the post-grant review system will not be until 2013 & 2014 because the review is only available for patents with a priority date on or after March 16, 2013. The 2013 date is also the implementation date of the new Filing-Date-Priority rules. We will, however, get a preview of the PGR system once it becomes available to go against Business Method patents beginning September 16, 2012.

EPO Opposition Popularity: Europe has a popular opposition system and there is a natural comparison between our new post-grant review and their oppositions.  Around 5% to 7% of EPO-issued patents are opposed during the 9–month post-grant window.  This figures are an order-of-magnitude greater than the proportion of US patents that go through the inter partes reexamination system.

Obstacles to US Post-Grant Popularity: I do not expect that the US system will see the same level of utilization –  at least for some time.  The major legal impediment to filing a post-grant review is the tough new threshold that requires a showing “that there is a reasonable likelihood that the petitioner will prevail with respect to at least one claim challenged.”  If the threshold is not met, the petition for review will be rejected. This threshold is substantially greater than the USPTO’s historic standard requiring a “substantial new question of patentability.” The EPO does not have a similar threshold. Rather, so long as certain formalities are met, the opposition proceeds with a full review with opportunity for appeal, etc.  That said, the EPO opposition proceeding results in cancellation or at least amendment in about 75% of cases.

The other major roadblock to popularity for US post-grant review will be cost.  Current behind-the-scenes discussion peg the USPTO filing fees at over $40,000 for a post-grant review. The equivalent fee for an EPO opposition is under $1,000 (€705).  The availability of limited discovery suggest that the legal fees for post-grant oppositions will also be fairly high.

86 thoughts on “Reviewing the New USPTO Post Grant Review System with Reference to EPO Oppositions

  1. IANAE, regarding why not before now? I think that is obvious.  Heretofore, everyone that invoked an inter partes reexamine probably had standing.
     
    The same may not be true with the new opposition.  It is too soon after the patent issues.

  2. A preponderance level would be a starting point – without examination. Perhaps you mean to say that the C&C is earned by the examination (and then again, perhaps not, as your position is not clear).

  3. to make sure it’s done right before the patent is granted.

    You love being fallacious as well. Clearly, I was discussing post-grant mechanisms.

  4. The correct answer: do it right the first time.

    I love how “do it right the first time” is the argument against creating a procedure for interested parties (yes, Ned, I know) to make sure it’s done right before the patent is granted.

  5. Yes anon. Good idea. Let’s do that. Let’s lick these PTO Examiners into shape.

    Where shall we start? More sticks? More carrots? Different sticks? Different carrots? Name and shame? Fire them all, if they don’t perform to your satisfaction?

    But the balance has to be right. On every single Examiner desk, only valid claims shall get through, and all invalid claims get binned.

    And quick. Applicants haven’t got time to hang around. Allowances shall be instantaneous.

    And sure. Searches must be exhaustive, and every retrieved document read from cover to cover. Otherwise, bad claims are going to get through to issue, and then where would we all be?

    I can imagine all the valid claims getting through but, in an ex parte process, in which the Examiner only ever hears one side of the story, I just can’t imagine all the invalid ones getting reliably sifted out.

    Where you come from, do people ever utter the utterly banal truth, that “There’s always two sides to every story”. And, if any profession utters it, that would be the legal profession, right? It is in their professional interest that every story has two sides. Do patent attorneys utter it but, even while they do, just not believe their own counsel?

  6. Many people want that “exclusive” right to be so exclusive as to apply even to prior users.

    That has been the historical “way.” That was the stick to accompany the carrot. Now, not only is the stick taken away, but the carrot is replaced with a smaller (and less certain) carrot.

    Hardly a win for the patent system.

    but is there not a strong public interest in not having the right granted in the first place if it turns out to be invalid?

    The correct answer: do it right the first time. Intorducing uncertainty and price-bias (those that can afford…) is exactly the wrong administrative fix.

  7. Self-policing. That’s the future.

    No. That’s the past – that’s the recycled anti-Tafas argument.

    Let’s make sure the onus of examination is properly applied.

  8. an enhanced presumption of validity and a bigger and better club to beat the industry with

    enhanced presumption? – no. A patent that has gone through the process indicated has the same technical presumption as any other patent: C&C.

    bigger and better club? – perhaps. If the augmented examination provides for such. But an equal possibility is that you have a weakened patent, either due to concessions made or other weaknesses exposed.

    Of course, the “make sure that every one of their claims is opposition-resistant” would improve the quality of issued patents. To that notion, there can be no doubt. But this should be the norm anyway. PROPER examination should give this same result – if done right the first time. I am loath to build in such band-aid types of procedures and would rather have the system be correct in the first instance. Else, why bother with an examination to begin with at all?

  9. The problem with the current post-grant review is that anybody can challenge the patent regardless of standing.

    I understand how standing works and why it’s important. However, it’s also worth noting that the PTO is granting to private parties the right to sue anybody they want. Many people want that “exclusive” right to be so exclusive as to apply even to prior users. We can quibble over whether you should need to actually get sued before you can contest that right, but is there not a strong public interest in not having the right granted in the first place if it turns out to be invalid?

    This isn’t a question of whether you would be personally affected by the extinction of some rare Egyptian crocodile. It’s a question of whether you could oppose the agency decision to grant someone else the right to sue you. And to do so before the right is technically granted, which is procedurally a better time for you and probably constitutionally less contentious than inter partes re-exam of an enforceable patent right.

    I’m sure if standing was a constitutional requirement for inter partes re-exam, someone would have brought that up by now.

  10. This aggressive word “challenge” is interesting. If you are walking down the street one night, and out of the shadows you get “challenged” by a footpad, that’s one thing. But if you get a patent issued to you, and some sneak decides to spend a ton of his own money to tip the PTO off about some further prior art, that’s a reason to rejoice, isn’t it?

    The PTO will dispose of the case within a year and, when the patent is maintained with a bunch of tidied up claims, you as its owner have got out of Opponent’s lavish expenditure an enhanced presumption of validity and a bigger and better club to beat the industry with. As IANAE points out above, the number of oppositions will be miniscule.

    If all patents that issue are worth their presumption of validity then despite the preponderance standard all these terrifying oppositions are going to bounce off them like flies aren’t they Ned?

    At the same time though, the mere apprehension of opposition might prompt Applicants at the USPTO to go to issue having made sure that every one of their claims is opposition-resistant. Now that would be a great result for the quality of issued patents.

    Self-policing. That’s the future.

  11. Even looking at the patents the PTO is currently granting in their field is bad for business.

    Agreed. I have always thought it rather shocking when I run across Big Corp policies of “Don’t Look!” (typically in fear of treble damages). Rather defeats the purpose of the patent system (it is there to be looked at!)

  12. We know that any reexamination costs the patent owner hundreds of thousands if not millions to defend today.

    Who is “we”, Ned, because don’t believe this. I don’t doubt that Microsoft or NTP have spent hundreds of thousands on certain re-exams, but there’s no way that this is the norm.

  13. I’m still confused.

    Your faux confusion, much like your faux “I just want to learn,” is very boring.

  14. It certainly is, especially with respect to the post-grant review where validity and any other legal issue that may apply to patents generally are grounds for revoking a claim. The petitioner presents evidence and expert opinion. The patent owner presents counter evidence and expert opinion. A judge decides. Either party may appeal. Anybody would recognize the proceedings as court proceedings.

    I found it interesting that both the Court of Claims and Court of Customs and Patent Appeals were held by the Supreme Court to be Article I courts. See,Williams v. United States, 289 U.S. 553 (1933)(the basis for the holding was that the United States was a party defendant).

    Regardless of whether the new procedure is an Article I or an Article III court, the Supreme Court requires of each that they adjudicate only cases and controversies, provide for due process, and in some circumstances, can be justified only when the authorizing statute provides for de novo review by an Article III court. (Such was provided for in the cases of interferences, which were decided by Article I judges, but which were subject to de novo review by district court.).

    One of the most critical aspects of participation in a court proceeding is standing. Just as not everybody can challenge the validity of a law, not everybody can challenge the validity of a patent. The person must have standing. Lujan v. Defenders of Wildlife, 504 US 555 – Supreme Court 1992

    The problem with the current post-grant review is that anybody can challenge the patent regardless of standing. This would permit, for example, the government of China to challenge every patent issuing in the United States. It would permit, for example, big software companies to form a corporation for challenging all patents issued in the software classes to anybody else but them. All of us would recognize instantly that there would be something fundamentally flawed in such a system. The problem is that they have no standing; and it doesn’t matter whether the lawsuit is conducted in a Article I or in an Article III court.

  15. Max, I was not referring to Europe, per se. I was referring to the new US opposition.

    Which, of course, is completely different from a US re-exam.

    Ned, I think I understand what you’re trying to say. Even though Europe has in place a perfectly good system that’s popular-ish, efficient, reasonably effective at catching what the examiner missed, and economical for the patentee, the US can’t be trusted to get it right.

    But if the patent has just issued and the PO is just trying to get his business off the ground and is not bothering anybody about their alleged infringement,

    Anybody who considers it worthwhile to oppose a patent will already be infringing, and will be making it very difficult for the patentee to start his business without suing for infringement. Which he definitely can’t afford if he can’t afford an opposition.

    A big company may oppose the issuance of every non licensed patent in its product space just to make “sure.”

    LOL, just like big companies are going to take up all the 10,000 Track 1 spots for the year to deny independent inventors the privilege, right? Kappos is on Gene’s blog right now, begging for more Track 1 applications because they’re nowhere near the cap.

    Big business doesn’t do anything without a business case. Even looking at the patents the PTO is currently granting in their field is bad for business. Opposing them all would be doubly so.

  16. You are equating a reexam or opposition to be the same as a court case.

    Is this a wrong first step?

  17. Question to all:

    Congress can delegate to Art. I courts cases and controversies involving public rights, but not cases and controversies involving private rights. See, Northern Pipeline Constr. Co. v. Marathon Pipe Line Co., 458 US 50 – Supreme Court 1982.

    Under circumstances where a member of the public would have no case or controversy with a PO so that he could not file a DJ action challenging validity, is there a constitutional problem to permit that member of the public to file for an inter partes reexamination or opposition?

    Is there a case on point anywhere?

  18. Max, I was not referring to Europe, per se.  I was referring to the new US opposition.  

    We know that any reexamination costs the patent owner hundreds of thousands if not millions to defend today.  This might be justifiable if the patent owner begins to assert his patent and the accused infringers react by filing a for a reexamination in some form.  But if the patent has just issued and the PO is just trying to get his business off the ground and is not bothering anybody about their alleged infringement, the PO may not be in any financial condition to litigate against a big company.  Yet he may be forced to via an opposition.  A big company may oppose the issuance of every non licensed patent in its product space just to make "sure."  This will have an effect on denying patents to the impecunious simply because they cannot afford to litigate.

  19. which happens to be immediately after allowance

    Why?

    Don’t you mean, immediately after publication?

  20. Ned, I don’t understand what you mean by “cannot afford an opposition”. For the defence of a patent, against an EPO opposition without merit, the cost to the patent owner is zero. All the owner has to do is sit and wait for the EPO to dismiss the opposition as without merit.

    If you don’t believe me, just look what happens when a party files a “poor man’s opposition” at the EPO; observations on patentability, addressed to the EPO Examiner and filed during pre-issue exam on the merits. If the observations are without merit, they are simply ignored, by both Applicant and Examining Division. I admit, a party who opposes after issue is entitled as of right to a Hearing, and can appeal an adverse decision to the EPO Board of Appeal, where he can also demand a hearing, but the owner would not even need to turn up or pay the EPO any fee, in order to prevail and see the opposition dismissed.

  21. You focus on the infringer.  The PO may not have the resources.  He may be forced to abandon his patent simply because he cannot afford an opposition.

    Opposition without consent of to PO, or his notice of infringement, is IMHO is borderline unconstitutional.

    Sent from iPhone

  22. The[re] is a reason.

    Yes, but that reason clearly doesn’t apply, since we’re talking about having the patent office (not the courts) take a second look at validity, which is something you can already get the PTO to do at any time without demonstrating a case or controversy.

    And it still doesn’t change the fact that, so long as the opponent is motivated enough to spend the time and money to file the opposition in the first place, the best time to contest validity is as close as possible to when the evidence was published, which happens to be immediately after allowance.

  23. Ned, you mention:

    “…the German propensity to issue preliminary injunctions on untested patents”

    It costs very little to get a patent to issue in Germany. It costs very little to ask a district court in Germany to enjoin an infringer. Why then do you suppose that:

    “…Europe is only for the wealthy. It seems that obtaining a patent in Europe is enormously expensive….”

    If you venture in to the German market, Ned, watch out for the minnows, all those multitudinous shallow pocket Mittelstand owners of duly issued, in-force and presumed valid EPO patents.

  24. Deferring litigation until the issues (of infringement) are “ripe” is always for the best. The European system forces litigation in the EPO as soon as the patent issues.

    Validity litigation. The issue of validity is always “ripe”, and if you wait too long the evidence starts to go off.

  25. Max, thanks for your posts. It does appear the Germans have a good reason to oppose at the EPO given the single forum and the threat of preliminary injunctions. Those factors do not obtain in the US. This leads one to believe that oppositions in the US will be rare, very rare.

    But it also tells me once again that Europe is only for the wealthy. It seems that obtaining a patent in Europe is enormously expensive when one factors in the translation costs and the inevitable opposition costs as well.

    Europe would do well to fix its system. It is wrongheaded, in my view. Deferring litigation until the issues (of infringement) are “ripe” is always for the best. The European system forces litigation in the EPO as soon as the patent issues. This system all but prevents startups from participating in the European patent system, at least to the extent their business represents a threat to the established players. That, in the long term, is not good for Europe.

  26. which eluded them pre-issue using the Problem and Solution Approach

    Whaaat? eluded the PSA? I am aghast. Isn’t the PSA the be-all and end-all of patent prosecution? Am I now hearing that litigationis still needed?

    Criminy, we might just as well merely have a registration only system if we have to rely on litigation to prove out or test patents.

  27. Recent research suggests

    LOLZ – leave it to the rubber room man to inject his sockpuppet conspiracy theories.

  28. But you will recall what a wise man once said about casting pearls before swine.

    Recent research suggests it was more likely that he warned against casting pearls before sockpuppets.

  29. Max, it all depends on whether we will be sued in Germany rather than in, for example, the US.  It appears the driving consideration is the German propensity to issue  preliminary injunctions on untested patents.   In the US, at least, we can raise doubt (good prior art) at the preliminary injunction hearing and ward off the injunction based on that doubt.  I assume the German courts cannot do the same, for some reason.

  30. Thanks Mr Bloom. You know, I had quite forgotten about the casting connotations, and about the swine. But perhaps there is a lot more goes on subliminally than we realise.

  31. I’m confused, too. I thought you were casting pearls, not collaboratively manufacturing them.

    But you will recall what a wise man once said about casting pearls before swine.

  32. Oops. IANAE, what I wanted to say (and what I thought I had said) was that it is ME (not you) who is getting confused here. Sorry about that.

    I agree though, that the reader has to decide whether to read and, if he does, will then glean what he can from the words.

    Obv. your 30/60% answer only increases my confusion. Do you class yourself as an irritant? Are you claiming credit for being an irritant. Do all irritants generate pearls? I’m still confused.

  33. I admit to being a practising patent attorney. I admit my “bias”, do I? So, who’s paying me for my biassed blogging then? Myself?

  34. Your choice of the words “giving in” strikes me as significant, Mr Platt. Consider the normal run of ex parte examination on the merits, leading to a Notice of Allowance or a Refusal Decision. Even though you as Examiner get only one disposal point for an allowance yet two for a refusal, you still have to be quite resistant to being “worn down” if you are going to refuse rather than allow applications directed to new and not obvious but nevertheless somewhat trivial subject matter.

    Oppositions are good for giving EPO tribunals the background knowledge of the person of ordinary skill in the art. Armed with that, they can often find stuff obvious, which eluded them pre-issue using the Problem and Solution Approach.

    In the room, waiting for the Decision of the Opposition Division, is a customer who is the patent owner and another who is Opponent. Can you be customer-friendly to both of them? Well, perhaps. The EPO really tries hard to do so.

    But that’s all OK, isn’t it?

  35. Getting a bit confused here IANAE.

    You provide the starting material, but it’s up to your reader to make what value he can of it.

  36. The oyster is the 30% respondents in relation to the 60% posters as irritants.

    There is nothing confusing about this.

  37. Who’s paying me to blog here? Any further thoughts?

    Don’t you answer that question in your instant response? You admit the bias of your own business interests.

  38. Very good comments, MaxDrei. My clients would not have it any other way either. But privately, I sometimes think vigorous oppositions are the only thing keeping the EPO from taking the easy (and more profitable) way out, i.e. giving in and granting more and more patents for trivial inventions.

  39. Getting a bit confused here IANAE. In all of this, who or what is the irritant (Ned?) and who or what is the oyster (Dennis, perhaps)?

  40. Seriously? Yes.

    Help me, what does “BZZZZZT” mean?

    Not pearls? Really. Best not read them then, eh? Don’t want to get contaminated, do we?

  41. Well you see, Sir, I act for my corporate client as EPO Opponent at much the same frequency as I act for him as owner of a patent opposed by his competitor.

    WhenI’m for the owner, my patent is very very good, but when I’m for the opponent, the patent I’m opposing is very very bad.

    My clients wouldn’t have it any other way.

    Now you, Sir, I suppose would decline to act for an Opponent, seeing it as a repulsive “anti-patent” act destructive of not just one bad patent but, rather, of the whole patent system.

    I also declare an interest. I like EPO opposition work. I think more people should employ my firm to prosecute cases safely to EPO issue, and more of their competitors should oppose them, to give me more sport and to give my clients a greater presumption of validity. Good patents should secure instant injunctive relief while bad patents should be stamped out. You can’t get the instant injunctive relief, that is the right of the patent holder, when judges have good reason to fear they may be enforcing an invalid claim.

    Tip: beware the confirmation bias. If you look for “anti-patent” leanings and avert your eyes from all other evidence, you will find it wherever you look.

    Who’s paying me to blog here? Any further thoughts?

  42. The sweet thing…?

    and earlier: the best way to blight a patent…?

    Sounds like some real animosity towards patents.

  43. no line to spin

    BZZZZZT

    Seriously MaxDrei?

    value of the pearls of wisdom

    Um, those aren’t pearls…

  44. Ned, another thing: Opposition at the EPO is a wonderfully cheap and effective training ground for those in house who will, one day, manage patent litigations.

    The sweet thing is, even while it’s training up your team, it’s costing your competitor, the owner of the opposed patent, a small fortune in fees, management time, and stress, to defend against your tyro team. Not many opposed patents survive in granted form, but whether or not they survive at all often depends on the skill with which they are defended. If you have just paid to have a hundred pages of issued patent translated into 20 EPC countries, to get it registered in the EPC countries for which you will be paying ongoing annuities, how hard are you going to defend your issued claims against that Opponent?

  45. Ned, Germans running a business in product line X oppose only when issued patents that are perceived as a threat to the continued operation of line X. This is because of the “twin track” patent litigation process in Germany, where District Courts enjoin unless a Federal Court revokes the asserted patent.

    They oppose timely, in preference to the risk of getting enjoined before they can get the invalid claims revoked. They get their retaliation in first, as it were. They keep clearing the path of onward development of line X.

    Now, if your client is also in “line X” well, yes, let the German guy with all the best prior art attacks do the opposing. But what if your technical field Y is one where there is no front line German competitor, and where the over-reaching broad claim EPO patent just issued to your ugliest and most aggressive US competitor, with whom you are often in litigation at home? What do you do then?

    Or will you never be in that situation?

  46. Max, You say that 70% of the oppositions are filed by Germans (Germany, Austria and parts of Switzerland?). Then you ask, why don’t the rest of use do the same.

    But, if the Germans are carrying the load at their own expense, it makes sense for the rest of us to sit back let them carry the load. It actually makes no sense to “pile on” so to speak, unlesss there is some advantage that accrues only to the opposer.

    This is kind of like the Europeans relying on the US to carry the heavy lifting in all thing military to keep the world safe and the trade routes open. Why bother so long as the Americans are so, let us say, stu….pid.

  47. You are surely not suggesting that somebody actually pays me, to write my stuff. Is it beyond your imagination that I do it purely for fun, unpaid?

    But I’m curious. If I were being paid by somebody, who might it be?

    And if I’m not being paid by anybody, have no axe to grind, no paymaster to satisfy, no line to spin, perhaps readers that increases the value of the pearls of wisdom with which I so generously bestrew these threads.

  48. Calm down folks. All I was suggesting was that, if Germans at home in Munich think it worth spending a lot of their own money opposing patents at the EPO, they must think it’s worth the expense. If it’s worth it to them, might it not be worth it to other companies, not German? Do they know something about how to handle patents in Germany that non-Germans haven’t realised yet?

  49. ??

    It is the Germans that are doing the oppositions, what level of oppositions do you think they are tolerating?

  50. If Germans are so keen on opposing, shouldn’t companies from other countries think about it too?

    Why?

  51. No wonder people in Europe will declare most anything that will help their paymaster

    A fine tradition that finds its counterpart (often) in blog posts here in the States.

  52. Thanks Paul. Is this not illustrative of the difference between English common law and ROW civil law systems? Or is it because specialist EPO tribunals consider themselves to be persons having sufficient skill in the relevant technical field to do the fact-finding job dispassionately and competently, without help from so-called technical “experts” fielded by the one party in dispute or the other?

    Extrapolating, is this why European patent attorneys touch only what they are competent to argue, before such panels. Chemists don’t touch engineering cases, and EE boys don’t go near biotech cases.

  53. For the opposite U.S. view, see, e.g., PTO MPEP 716.0(c) “Probative Value of Objective Evidence [R-2]
    I .. appellant’s assertions of unexpected results constitute mere argument. See also In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991).
    II. < ATTORNEY ARGUMENTS CANNOT TAKE THE PLACE OF EVIDENCE The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant." See MPEP § 2145 generally for case law pertinent to the consideration of applicant's rebuttal arguments.

  54. But what does “unless the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted” mean? Does it mean that the information must be of an irrebuttable nature?

  55. 35usc,

    You are correct. While interpartes review (chapter 31) does falls under post grant review, it is a more likely than not standard for pgr and is different than ipr:

    § 324. Institution of post-grant review
    (a) THRESHOLD.—The Director may not authorize a post-grant review to be instituted unless the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.

  56. There is no estoppel either between UK IPO revocation and the UK courts or between EPO opposition and the UK courts. Even though the EPO Appeal Board must contain a legally qualified member that does not suffice to create estoppel.

    One reason is that in neither administrative jurisdiction is there the same level of disclosure and cross-examination of witnesses. Although the legal principles are the same, the trial records are different and the court is not bound by any findings of fact made by the UK IPO or the EPO (whether before an opposition division or before an appeal board).

  57. Ned 70% of all opposition are filed by German speakers. Why that? Well, opposition is a tradition in Germany, where District Courts swiftly enjoin infringers and then Federal Courts, years later, find the asserted patent to be invalid. Not sure whether that will ever change. Not sure Germans will ever stop filing oppositions at the EPO.

    If Germans are so keen on opposing, shouldn’t companies from other countries think about it too?

  58. Actually Ned, the situation in Europe is not so bad as you might suppose, and getting better. Look how judges in UK and Germany now bend over backwards to avoid judgements that contradict those of the EPO (even when English fact-finding is totally different from the way they do it in the EPO). They never used to do that.

  59. Paul how much weight would you give to a witness statement, even if sworn, when there is no accompanying tradition of discovery or cross-examination of the affiant. No wonder people in Europe will declare most anything that will help their paymaster. No wonder EPO judges (operating under civil law not English common law) suppose that a declarant will declare anything he is paid to declare. See T754/08 and T753/09 for examples of EPO Boards of Appeal saying that attorney argument carries just as much probative weight as the Declaration of a “technical expert”.

  60. Ned,

    Further, the rationale for constitutionality of reexamination is not based on the “property” value, but rather, on the notion that that property has been determined to have been given the property status in error.

    The process at arricing at such a conclusion though must respect the existing notions including 1) the office did its job to begin with and 2) the patent in question has the C&C attribute. I think we both agree that the SNQ standard was meant to protect that attribute, while allowing the office to correct mistakes in granting a property right that it should not have granted. I think we both agree that the Office has not respected that right and thus, Congress has heightened the initial threshold standard for reviewing the property satus.

  61. Max, your post does illustrate the need for reform in Europe. You need not only one law, which you have, but one court (at least at the appellate level) to hear validity challenges. You also need a way of stopping multiple parallel challenges in various states while the first-filed challenge proceeds.

    Do the above, and Europe will have a “modern” interstate patent system, as America has had at least since the inception of the Federal Circuit. Adopt such a system and oppositions will drop to the minuscule.

    But all of the above requires European leaders to adopt a true Federal Government, does it not? When did Europe last see such a government? The Roman Empire?

  62. anon, there is one case where the SC held that the PTO has no authority to reexamine an issued patent. The case stems from 1898 or thereabouts. It seemed to base its decision on the constitution, not on the basis of a lack of a statute.

    Later Newman premised her own decision that reexaminations were constitutional when authorized by statute.

    I think, as apparently do you, that the constitutional question depends on whether patents are “property” or some sort of revocable “privilege.”

    If patents are property, they cannot be revoked, in whole or in part, except under eminent domain. If patents are not property, but some sort of government “privilege,” then there is no taking issue involved.

    The constitutional issue may be ripe given the i4i case, which did seem to recognize that patents were property: reliance interests and all that.

  63. Blindman, regarding estoppel, since one only gets one bite at the apple, your suggestion that oppositions will not be used because of this amounts to a suggestion that one prefers litigation in court and not in the PTO, when all along we have been assured that litigation in the PTO is preferred for any number of reasons: their expertise, for one.

    I begin to smell a rat.

    However, the more likely reason is that people only get serious about patent litigation when their bottom line is potentially affected big time and that is when they are sued. Estoppel has a little to do with this, but not much.

  64. To me, this exchange highlights the fact that we are far from any real harmonized system.

    I am not even sold on the idea that harmoonization is worth the effort. Being easier for those entities that will likely pursue patents in multiple jurisdictions is not that important a driver. Even the EPO still recognizes the sanctity of individual rule of law to some degree (as reflected in MaxDrei’s point 1, above).

  65. MaxDrei,

    As in the other thread, please do not forget that the standard of preponderance only applies after the initial hurdle is met.

    Post Grant mechanisms must reflect the C&C status earned by being a patent. If not, then a federal agency has effected a taking. In my opinion, the SNQ standard was meant to protect this status, but was only too often ignored by the Office and any cursory reason was accepted. I believe that Dennis had a thread reflecting something upwards of 98% of requests summarily meeting the “SNQ” standard. It is of little wonder then that our Congress, in the AIA, attempted to put some meat to the test. As Dennis states, “This threshold is substantially greater than the USPTO’s historic standard requiring a ‘substantial new question of patentability.’ ” – there is a reason why this is so, do you not think so?

  66. The good reasons noted above as to why EPO opposition usage statistics are not at all validly comparable to the [slim] projected future usage of the new U.S. PGR system include costs and a sweeping estoppel that will preclude almost any possible later prior art defense that COULD have been raised, and that estoppel is NOT limited to just all possible prior art patents or publications, because PGR will not be.
    I was surprised that some of the European readers have not so far discussed (1) the ability to still bring long delayed invalidity trials in national courts even after losing a lengthy EPO oposition which can further impact patent enforcement? Also, EPO oppositions seemed to me to overly-encourage continuing contingent alternative proposed amended claims submissions. Also, EPO opposition practice does not seem to me to promote or palce much weight on the submission of [costly] affidavits {declarations}, or their cross-examinations, whereas the Board APJ’s that will be running PGR’s undoubtedly will.

  67. Given the several motivations for launching opposition at the EPO which do not apply at the USPTO, and given that only 5% of cases get opposed at the EPO, I would expect the number of cases at the USPTO to be close to zero.

    Here are some reasons to oppose at the EPO:

    1. Last chance for a central attack. Miss the EPO boat and you are looking instead at 40 separately valid national patent rights.

    2. Last chance to attack validity on the basis of what to the 3 working language EPO constitutes subject matter added during prosecution. Hardly anybody at the EPO has English as first language. What to the EPO looks like an inadmissible text change of the English of the app as filed often looks to an English native speaker like a clarification devoid of new matter.

    3. Best way to blight the patent, for up to 8 or 10 years, with a cloud of uncertainty as to its validity.

    4. Best way to stave off patentee’s strenuous efforts to secure interlocutory injunctive relief, in national infringement proceedings soon to start.

    5. To all (or nearly all) intents and purposes, no estoppal as understood under English law.

    That said, filing and failing with your opposition at the EPO is quite a good way to assist patentee with his efforts to bestow on his patent a presumption of validity. You wouldn’t want to be arguing non-infringement after the patent has got a certificate of validity from a Technical Board of Appeal of the EPO, as the outcome of fully-contested opposition proceedings.

    The 5% EPO is an average figure. In some art units there are very few oppositions, so in some other areas the figure is significantly higher than 5%.

    Why are there not more oppositions at the EPO? Paul?

    Why should we expect any at all, at the USPTO? Perhaps the preponderance standard (as opposed to C+C)? Readers?

  68. 35 usc… you would “pretty sure” be wrong….

    FYI – a new US “opposition” = an Inter partes review !!!

    § 314. Institution of inter partes review
    (a) THRESHOLD.—The Director may not authorize an inter
    partes review to be instituted unless the Director determines that
    the information presented in the petition filed under section 311
    and any response filed under section 313 shows that there is a
    reasonable likelihood that the petitioner would prevail with respect
    to at least 1 of the claims challenged in the petition.

    BUT, the POISON PILL OF ESTOPPEL MEANS THAT YOU WON’T HAVE TO WORRY ABOUT THIS, BECAUSE IT WILL RARELY BE USED. Instead, more work for the US Federal District Courts….

    (e) ESTOPPEL.—
    (1) PROCEEDINGS BEFORE THE OFFICE.—The petitioner in
    an inter partes review of a claim in a patent under this chapter
    that results in a final written decision under section 318(a),
    or 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 inter partes review.
    ‘‘(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The petitioner
    in an inter partes review of a claim in a patent under
    this chapter that results in a final written decision under
    section 318(a), or the real party in interest or privy of the
    petitioner, may not assert either in a civil action arising in
    whole or in part under section 1338 of title 28 or in a proceeding
    before the International Trade Commission under section 337
    of the Tariff Act of 1930 that the claim is invalid on any
    H. R. 1249—19
    ground that the petitioner raised or reasonably could have
    raised during that inter partes review.

  69. pretty sure the std for pgr is more likely than not that at least one challenged claim is unpatentable or novel/unsettled important legal question

    the std stated in the post is the new std for inter parte review not pgr

  70. Do European countries have similar estoppel provisions? If your PGR fails,you are basically left without any invalidity defenses if sued in district court. Plus, it may be difficult to find the non-published art without discovery, subpoenas, etc. I guess it will all depend on how all this works out though, including interpretation of the estoppel provision.

    Posted from BlackBerry.

  71. Current behind-the-scenes discussion peg the USPTO filing fees at over $40,000 for a post-grant review.

    $40,000 just for filing fees?!

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