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With patent reform changes being considered to introduce a new Post-Grant Review proceeding, a review of existing systems employing similar style mechanisms may be instructive.
European Patent Convention (EPC), Articles 99-105 provide for a post-grant opposition procedure at the European Patent Office (EPO). Any third party natural or legal person may, without identifying the real-party-in-interest, file with the EPO a post-grant opposition to a granted patent within 9 months of the publication of the granted patent from the EPO. This is in contrast with Post-Grant Review that while including the same time window requires identification of the real-party-in-interest. As can be appreciated, the revisions to S.515 for Post-Grant Review closely track the EPO model in many respects.
In the EPO proceeding, if there is an ongoing opposition proceeding, a third party may within 3 months of litigation intervene if accused of infringement, or is a declaratory judgment plaintiff against the patent owner. The proposed revisions to S.515 does not include such a provision.
Similar to the proposed Post-Grant Review of S.515, EPO opposition is also expanded to most grounds of invalidity other than patents and printed publications. EPO oppositions may be based on lack of novelty, inventive step or industrial applicability; non-patentable subject matter; subject matter offensive to public interest or morality; and insufficient disclosure, including lack of written description and enablement.
Opposition Divisions (OD) at the EPO comprise 3 patent examiners, at least 2 of which did not take part in the examination of the original patent. The Chairman must be an examiner who did not take part in the examination of the original patent. Prior to taking a final decision the OD may have one member handle the opposition. Oral proceedings are conducted by the OD. If necessary the OD is expanded to include a legally qualified examiner who did not take part in the grant of the original patent. In such case, if there is a tie vote, the Chairman’s vote is decisive. In contrast, the proposed legislation would require that Post-Grant Review be decided by APJs of the Patent Trial & Appeal Board. Currently, there is no provision for leveraging the CRU examiners in the proposed Post-Grant Review.
In both EPO opposition and the proposed Post-Grant Review proceeding, after an initial determination that the request meets requirements, the patent owner has a right to file narrowing claim amendments and arguments; the third party participates at each stage.
The proposed Post-Grant Review proceeding is fixed in duration to between 12 and 18 months. In the EPO opposition proceedings there is no fixed schedule of pleadings and counter pleadings and time limits can be extended for cause. Oral proceedings at the EPO are public with a prohibition against submission of new facts or evidence, unless allowed by the OD.
The outcome of an EPO opposition proceeding, similar to the proposed Post-Grant Review, may be the revocation of the European patent, confirmation of the original patent claims or amendment of the patent claims. The opposition applies to the European patent in all designated offices. However, the specific outcome’s effect on the different designated states may differ as a result of differences in claims, differences in amendments and differences in designated States where the patent is revoked.
The appeal from the OD must be made with 2 months of its decision and the grounds of appeal must be filed within 4 months of the OD decision. The appeal is to the EPO Board of Appeal. Either party may appeal. This is similar to the proposed appeal proceedings for Post-Grant Review. Yet, unlike in the U.S. there is no judicial recourse to an adverse EPO Board of Appeal decision.
In EPO oppositions 35% have all claims confirmed, 35% have all claims canceled and 30% have claims amended. As the proposed Post-Grant Review provides for a settlement between parties, it remains to be seen if the USPTO proceedings will track the EPO numbers.