1. A Comparative Analysis of Patent Post-Grant Review Procedures in the U
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 Comparison Analysis and Suggestions USPTO EPO JPO SIPO
Post-Grant review procedures
Small and medium business entities
Review of patent post-grant review procedures in the USPTO, EP, JPO and SIPO
Comparison between the new USPTO procedure with other post-grant review procedures
Suggestions to improve post-grant procedures

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
Inter Partes – Newly named (Inter Partes Review in the AIA) Heightened standard for institution is now “reasonable likelihood that at least one of the challenged claims is unpatentable”; this is slightly more strict, however, the old standard required the question to be “new”, the newly implemented standard does not need to be new. IPR cannot be brought by patent owner. Conducted by patent trials and appeal board
Ex Partes – Standard is “substantial new question of patentability” . Anyone is permitted to file request for Ex Partes Re-exam. It is commonly used by patent owners to strengthen the validity of their patent in light of new prior art arguments, appealable to the PTAB (PTAB decision is appealable to CAFC or civil action in district court against the Director).

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
Purpose
Notably, the EP, China and Japan all offer a post-grant proceeding before their respective patent offices that permits petitioners to seek invalidation of a patent on many grounds, more than current inter partes re-exam offers in the U.S.
More Efficiency: Both in the patent system and the proceeding; to limit unnecessary and counterproductive litigation costs and to provide a quick and efficient proceeding (maximum 1 year, with possible 6 month extension)
Increased Quality - Additional grounds for invalidating a recently issued patent or broadening reissue patent, it was patents or printed publications.
Protects rights of inventors and patent holders - Limiting the time and scope of challenges

5. Overview of U.S. PGR GROUNDS PARTIES FEES TIMING FORUM INSTITUTION
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.
Parties - This reflects the requirement in 35 U.S.C. 325(e)(1) and 315(e)(1) that provide that a petition may not be filed where the petitioner, the petitioner’s real party in interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition. Such estoppel is based upon a final written decision in a post-grant review, a covered business method review, or inter partes review.
Fees - For review of 20 or fewer claims.
Timing - Petitions may be consolidated if more than one petition for a post-grant review is properly filed against the same patent and the Director determines that more than one of these petitions warrants the institution the Director may consolidate such reviews into a single post-grant review.
INSTITUTION - Institution - Or, by a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.*
The decision regarding institution of PGR is final and non-appealable. The Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.

6. Overview of U.S. PGR DISCOVERY AMENDMENTS ESTOPPEL DECISION AND APPEAL
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
DISCOVERY - Requests for additional discovery may be granted upon a showing of good cause as to why the discovery is needed
Discovery is limited to evidence directly related to factual assertions advanced by either party in the proceeding.
The proposed rule would eliminate many routine discovery requests and disputes, the proposed rules also provide for abuse of discovery procedures before the PTAB.
The Office recognizes that this requirement may differ from the proposed changes to Sec But, Board experience has shown that the information covered by proposed 42.51(b)(3) is typically sought through additional discovery and that such information leads to the production of relevant evidence.
The “Good Cause” standard is different from that of the standard in Inter Partes review
To show good cause, a party must make a particular and specific demonstration of fact. The moving party must also show that it was fully diligent in seeking discovery, and that there is no undue prejudice to the non-moving party.
Amendments - Patent owner must first confer with the Board. Patent owner is only permitted one motion to amend, however additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding.
DISCOVERY - Following institution of a trial, the parties may be authorized to file various motions, e.g., motions to amend and motions for additional discovery. Where a motion is authorized, an opposition may be authorized, and where an opposition is authorized, a reply may be authorized. Can’t amend if such amendment does not respond to a ground of unpatentability involved in the trial or the amendment broadens the scope of the claims or introduces new subject matter
ESTOPPEL - This includes estoppel in certain civil actions and certain other proceedings before the International Trade Commission if that post-grant review results in a final written decision.

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
Only available if the Office has NOT decided the merits of the proceeding before the request for termination is filed.
no estoppel will attach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that petitioner’s institution of that post-grant review
If confidential it will be kept separate from the file of the involved patents, and will be made available only to Federal Government agencies on written request, or to any person on a showing of good cause.

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
*** Please note that petition may not request a post-grant review for a claim in a reissue patent that is identical to or narrower than a claim in the original patent from which the reissue patent was issued unless the petition is filed not later than the date that is nine months after the date of the grant of the original patent

9. 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.
In addition, petitioners may also oppose on grounds that it is not regarded as an invention under EPC art. 52(1)-(3) or that is not patentable under art. 53.
Grounds - Things not considered inventions under EPC, art. 52 include: “discoveries, scientific theories, mathematical methods aesthetic creations schemes, rules, methods for performing mental acts, playing games or doing business programs for computers and presentations of information.”
Things not considered patentable under EPC, art. 53 include: inventions wherein the commercial use of them would be contrary to public order or morality, “plant or animal varieties or essentially biological processes for the production of plants or animals” and “methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body.”
FEES - But, this fee is substantially less than the filing fee of PGR. In the case of appeal by any of the parties, the filing fee is EUR 1,108.
Forum - The Opposition Division is made up of “three technically qualified examiners, at least two of whom shall not have taken part in the proceedings for grant of the patent to which the opposition relates.”
This additional examiner must not have taken part in the grant proceedings of the patent. Prior to appointment of the technical examiners, the opposition petition is reviewed for compliance with required formalities.
Amendments - The amendments can be made as long as they are based in a ground for opposition. But, the ground for opposition does not have to have been raised by the petitioner, the amendment can be I response to grounds that have not been raised. Following the submission of amendments by the patent owner the Opposition Division notifies the opposing party of the observations and amendments and may permit the opposing party to respond. The examination procedure is not limited to these first submissions by the petitioner and patent holder. Throughout substantive “[e]xamination the Opposition Division shall invite the parties, as often as necessary, to file observations on communications from another party or issued by itself.”

10. 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.
EVIDENCE -
ORAL ARGUMENT - In the case that the Opposition Division receives a request for oral argument or if the Division considers it advantageous, oral argument will be held. Oral argument provides a forum for the parties to state their cases and clarify any outstanding questions.
ORAL EVIDENCE - In rare cases, oral evidence is required by the Opposition Division. This evidence is to be taken under oath and before a court. A member of the Opposition does not have to be present, however, they may attend.
EXPERT TESTIMONY - This is used sparingly because the members of the Opposition Division possess specialized knowledge. The experts may provide oral or written reports, or conduct an inspection.
ESTOPPEL - Distinguishing feature of EP Oppositions. Following decision by the Opposition Division, the third party is not estopped “[f]rom challenging any finding of fact in a subsequent litigation that was raised in the opposition proceeding.” The only case in which estoppel would apply is if the opposition division revoked the patent altogether.
If during the opposition proceedings the patent is amended or remains valid without amendment, a defendant to a later patent infringement action in a contracting state of the EPC is not estopped from claiming patent invalidity, on the same basis as used in the opposition, in a national court.

11. Post-Grant Oppositions in the Japanese Patent Office
History –
Prior to 1996, options for review in the Japan Patent Office (JPO) of a patent included pre-grant oppositions or a patent invalidity trial. Pre-grant oppositions were troublesome due to the lengthily time it took to grant a patent due to pre-grant opposition delay.
In place of the pre-grant oppositions, and largely due to discussions between the USPTO and the JPO, post grant oppositions were implemented in 1996, however they were abolished in 2003.

12. 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.
Different from opposition proceedings before the EPO and PGR before the USPTO.
Procedure - These pitfalls caused the abolishment in 2003 and in 2004 a new invalidation system was implemented.
Parties - A post-grant opposition precluded the challenging party from participation in the opposition proceeding. This is more akin to ex-parte review before the USPTO as opposed to PGR. Anyone could file a post grant opposition within six months following the grant of a patent.

13. Current Trial for Invalidity 2004 – present
GROUNDS
Lack of novelty, ease of invention (obviousness), and lack of industrial application.
FEES
¥ 49,500 + ¥ 5,500 per claim (€ € 55)
TIMING
May be filed at anytime after the grant of a patent, even after the patent has expired. Duration about 1- year.
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
None
APPEAL
Either party may appeal to the Tokyo High Court. During appeal the patent holder may still amend the claims of the patent.
Grounds - The only exception to grounds on which the invalidation may be brought is with respect to inventorship. When there is a challenge to inventorship of an issued patent, only interested parties may bring an invalidation appeal.
Response and Amendments - Once the trial for invalidity is initiated, the patent holder can file a response to the petition. The response may include amendments to the claims. If the patent holder does amend the claims the petitioner may reply with new evidence in response.
FORUM - The Board of Appeals and Trials can decide to revoke the patent, to uphold the patent as granted, or to uphold the patent as amended.
ESTOPPEL- The opposing party may file another peition on another ground regardless of whether it could have been raised in the prior invalidation trial.
APPEAL -
In case of amendments made by the patent holder, the Tokyo High Court may remand the case back to the JPO. Further, “[i]n a suit against an invalidation trial decision, the JPO is not a party to the suit. When appropriate, however, the court can request the JPO to state an opinion relating to the interpretation of the law and examination guidelines.”
No Pre-Screening
With the invalidation appeal, as opposed to the repealed post-grant opposition system, the patentee is required to respond to each patent invalidation petition, regardless of whether or not it is frivolous.
In addition, the petitioner is not estopped from filing another petition for a trial for invalidity based on a different ground of patentability that had not been raised in the their previous proceeding.

14. The removal of the Japanese oppositions were largely due to the conflict between oppositions and trials for invalidity.
The main reason for the conversion from oppositions to trials for invalidity was that having two post grant review procedures was confusing and subjected patentees to unwarranted attacks on their patents.
This is evident by examining the usage statistics published on the JPO website.

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.
Why didn’t the abolishment of oppositions translate into more trial for invalidity proceedings?
6- month time limit - act first and think later.
Effects of transition - It was predicted that the modern trial for invalidity system, with no threshold for filing, no estoppel and broad grounds for invalidity would prove to increase the burden on patent holders, it doesn’t appear that it has done so.
Keep in mind, the new invalidation procedure provided for the some of the same advantages as oppositions, however, without the six-month time limit. Petitions for trials for invalidity are now open to any party, not only interested parties and they may be filed at any time, on almost any grounds.
It is more likely that the burden to patent holders stemmed from the limited time period to file oppositions rather than the anonymity or the broad invalidation grounds. The limited amount of time to file a petition might have caused petitioners to act first and think later. Trials for invalidity, however, offer the same options for challengers, but without a time limit.
If anything, the pre-2004 opposition proceedings, appear to have caused an increased burden on patent holders.

17. Post-Grant Oppositions in the Chinese State Intellectual Patent Office
Prior to 1992, the Chinese Patent Law provided for a pre-grant opposition procedure. As in Japan, the SIPO faced delays before the grant of a patent due to pre-grant procedures.
SIPO Post-Grant Opposition: 1992 – 2000
In 2000, the Patent Law was further amended to abolish these relatively new post grant opposition procedures.
It is thought that the reasoning behind the 2000 amendment was due to two overlapping (post, yet different, post-grant procedures.
From 1992 to 2000, SIPO had a post grant opposition procedure and a post-grant invalidation procedure. The differences between the two procedures include time allowed for filing a petition, the grounds on which the claim or claims can be invalidated the forum for resolving the petition.
The two overlapping proceedings, specifically post grant opposition, increased the burden of examination on the SIPO. In the current system, post grant invalidation is the sole means for challenging a patent's validity.

18. 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.
PARTIES - Analogous with Japan, in China, the party bringing the request may remain anonymous.
FORUM - The Board may not include “[a]n interested examiner or an examiner that was involved in the original examination of the patent at issue.”
The Patent Reexamination Board of is comprised of a panel of three to five experienced patent examiners or a single experienced examiner. The Board may not include “[a]n interested examiner or an examiner that was involved in the original examination of the patent at issue.”
PRE-SCREENING - The petition is reviewed prior to implementation to determine if it is appropriate.
COST - about 500 USD
AMENDMENTS- During examination of the invalidation petition,.
If the patent holder amends the claims, other than a deletion of the claim or claims, the petitioner may raise new grounds for invalidity in relation to the newly amended claim.

19. Decision, Appeal, Duration & Cost
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
DECISION - But, the patent holder “will be responsible for compensating licensees for previous licensing fees.”
APPEAL - However the winning party of the invalidation proceeding may appear as a third party. Following the decision of the Intermediate People’s Court, a party to the appeal may further appeal an adverse decision to the Beijing Higher People's Court.
COST RMB = about 500 USD

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
Duration and involvement of the third party petitioner are key.

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.
It appears that the SIPO opposition proceeding was similar to PGR in the USPTO, however, PGR allows multiple oppositions to be combined, therein potentially avoiding an undue burden on the patent holder.

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.
Crafted with the EPO Opposition proceeding in mind, however, with a different intent.
It is unknown whether PGR in the United States will be as popular as oppositions are before the EPO.

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 million. With 60% of the costs incurred during discovery.
$$$
Costs are an important component with post-grant review procedures. Probably the defining factor for most small to medium enterprises.
Litigation is costly and time consuming.

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
$$$
David Kappos, Director of the USPTO, addressed the fee comments through his Director’s Blog on the USPTO website.
In contrast, U.S. post-grant processes will be conducted by patent judges, who will officiate over processes with substantial discovery, with estoppels to be imposed upon final written decisions.
In contrast, the first stage EPO proceedings typically take 18 months to three years for an orally-announced decision, after which parties can wait another six months for written decisions.
An appeal within the EPO adds another two to three years to the overall pendency of a proceeding.
Not only are the structures of the two proceedings different, but also the fee policies are different. While EPO oppositions are subsidized, the proposed U.S. fees reflect a cost-recovery model charged directly to the requestor, without utilizing subsidies paid by patent applicants or other service requestors.

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
Improving quality of patents - make oppositions, will all grounds (not just prior patents and publications), available for the entire patent term (right to quiet title?)
Reduce litigation - Also increase grounds for oppositions, estoppel? Lessen the standard, in U.S. standard is currently “could have reasonably been raised.” Provide for discovery during Post-Grant?
Preliminary review - currently USPTO determines “If it is more likely than not at least one of the claims challenged in the petition is unpatentable PGR will be instituted. JPO, no review. EPO, no such threshold. SIPO must
Required settlement conferences prior to decisions

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
Stay of pending litigation in the U.S.

28. Questions?
Comments?
Thank You