Comparative Analysis of Patent Post-Grant Review Procedures in the U.S., Europe, China, and Japan

1. A Comparative Analysis of Patent Post-Grant 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

2. Overview Review USPTO EPO JPO SIPO Comparison Analysis and Suggestions Post-Grant review procedures Small and medium business entities

3. Current “Post-Grant” Review Methods at the USPTO • 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

4. 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

5. Overview of U.S. PGR

6. Overview of U.S. PGR

7. 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

8. 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

9. European Opposition Proceedings

10. European Opposition Proceedings

11. Post-Grant Oppositions in the Japanese Patent Office

12. 1996-2003 - Post Grant Oppositions in Japan

13. Current Trial for Invalidity 2004 – present

16. 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.

17. Post-Grant Oppositions in the Chinese State Intellectual Patent Office

18. Currently Implemented Invalidation Procedure

19. Decision, Appeal, Duration & Cost

21. 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

22. 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.

23. 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.

24. 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. $$$

25. 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 $$$

26. 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

27. 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

28. Questions? Comments? Thank You