Patent reform changes to the post grant landscape seem inevitable with S.515 gaining traction. As such, a brief review of other patent systems may shed some light on the mixture of provisions that may ultimately be offered in the U.S, and their degree of harmonization with other international post grant review mechanisms.
The following is a comparison of Reexamination/Invalidation Proceedings at the State Intellectual Property Office (SIPO) of the people’s republic of China to Inter Partes Re-examination Proceedings at the USPTO. In contrast to the United States where invalidity can be determined by the Court or by the USPTO through Re-examination, the Chinese Patent Reexamination Board (PRB) has sole jurisdiction over patent validity issues in China. The Courts do not have jurisdiction to invalidate a patent. PRB decisions may, however, be appealed to the Beijing People’s Intermediate Court, and further appealed to the Beijing People’s High Court.
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SIPO |
USPTO |
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Interpartes Proceeding? |
Yes |
Yes |
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Third Party Requestor? |
Yes |
Yes, unless estopped under 35 USC 317 |
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Real Party in Interest? |
No |
Yes |
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Time for Request? |
Yes |
Yes |
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Period granted for response? |
One month non-extendable |
One to two months |
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Oral Proceedings permitted? |
Yes |
No, only on appeal in BPAI. |
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Grounds for Request? |
Novelty, inventiveness, practical applicability, enablement, written description, patent eligible subject matter, double patenting and claim clarity (Reg. 64(2)) |
Novelty, Non-obviousness and Double Patenting Limited to patents and printed publications. |
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Grounds limited to requested claims? |
Yes |
Yes |
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Narrowing amendments permitted? |
Yes |
Yes |
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New grounds against amended claims? |
Yes |
Yes |
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Panel? |
Patent Reexamination Board – a sole member or a 3-5 member panel. · PRB includes Commissioner of SIPO and Deputy Director · Majority vote |
Central Reexamination Unit -three primary examiners · CRU includes SPE
· consensus |
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Right to Appeal? |
Yes, within 3 months of decision · Appeal is to the Beijing People’s Intermediate Court · Further appeal is to the Beijing People’s High Court |
Yes
· Appeal to BPAI
· Further appeal to the Federal Circuit within 60 days after BPAI decision. |
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Efficiency/ Total time to complete? |
Two years to complete on average
|
Three years to complete on average, 5-8 years with appeal |
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Usage? |
~ 2% of granted patents |
~ 0.1% of granted patents |
In Japan, since January 1, 2004, the Japan Patent Office (JPO) has conducted invalidity trials, replacing its old post-grant opposition procedure. Like reexamination proceedings in the U.S., a request for an invalidation trial can be made at any time after patent grant throughout the period of enforceability. Unlike inter partes reexamination in the U.S., the real party-in-interest in inter partes invalidity trials need not be identified. Te patent owner in the invalidity trial may make narrowing amendments and the third party requester will given the opportunity to present new evidence in response. In contrast to the prohibition on interviews in inter partes reexamination policy prior to appeal to the Board of Patent Appeals and Interferences in the U.S., the JPO invalidity trial will include an oral hearing before a three person panel of the JPO Board of Appeals and Trials. Proposed dhanges to S.515 provide oral hearings for both post grant review and inter partes review.
While inter partes reexamination in the U.S. is limited to lack of novelty, obviousness and obviousness type double patenting issues based on patents and printed publications, JPO invalidity trials may be based on any ground upon which a patent may be found invalid, but not upon unenforceability based upon an intentional withholding of prior art during patent prosecution. Much like patent reexamination the decision of the invalidity trial may result in revocation of the patent, confirmation of the original patent claims or allowance of amended claims. If the patent is found to be invalid it will be void ab initio in either proceeding.
In the case of inter partes reexamination in the U.S., the appeal is to the Federal Circuit, whereas in Japan, a lawsuit is filed with the Tokyo High Court with a further right of appeal to the Supreme Court of Japan. However, unlike in inter partes reexamination, the patent owner may make further narrowing amendments within 90 days of the JPO Board decision. These amendments and any requester arguments are handled by the JPO Board on remand from the Tokyo High Court. While the USPTO is a party to any appeal of an inter partes reexamination decision to the Federal Circuit, JPO is not a formal party to the Tokyo High Court proceeding. However, the JPO may provide its opinion to the Court.
With patent reform still taking shape in the U.S. it is likely that many features of the EPO and Japanese systems will soon be coming to the USPTO.