Post-Grant Oppositions Under Patent Reform
November 2011
By: Michael T. Siekman
Intellectual Property Watch-Inside Views
On September 16, 2012, the post-grant review process in the U.S. will change to closely resemble the opposition procedures in Europe even down to the same nine-month window after grant to oppose.1
The House Judiciary Committee report referred to the post-grant review procedure as “post-grant opposition,” using the same term as the European procedure.2 Post-grant review has been one of the most controversial provisions of the long patent reform debate in the United States. Congress finally resolved the debate in the Leahy-Smith America Reform Act enacted on September 16, 2011. One year after enactment, the changes will take effect, altering the appearance of post-grant oppositions to look more like interferences. Practitioners will need to quickly become aware of the procedures because these new proceedings are predicted to involve thousands of issued patents each year.
The European Patent Office reports that over the last five years, 4.7 percent to 6 percent of issued patents were opposed.3 According to the United States Patent and Trademark Office (USPTO), between 157,282 and 219, 614 utility patents have been issued in each of the last five years.4 Extrapolating from these statistics, there could be between 7,000 and 13,000 post-grant oppositions filed in the US each year. In addition, it is likely that these statistics underestimate projections because post-grant review in the US will be available for any ground of invalidity, unlike in the European Patent Convention.5 On the other hand, estoppel provisions in the US, which are not available under the European Patent Convention, will deter some parties from filing for post-grant review.
The new law outlines the basic procedures. A petition must be filed within nine months of issuance or reissuance of a patent, with all evidence (including declarations).6 The patent owner may file a preliminary response arguing that the petition does not meet the requirements of the statute.7 Within three months of any preliminary response, the PTO must determine if the petition should be granted, requiring a showing that it is more likely than not that at least one claim is unpatentable.8
Regarding post-grant review, once a petition is granted, the law leaves it to the USPTO to issue rules governing the proceedings within some broad requirements, such as those governing discovery, which need only meet the law’s requirement that they limit discovery to evidence directly related to factual assertions of the other party.9
The USPTO’s Board of Patent Appeals and Interferences10 (renamed the Patent Trial and Appeal Board) has already sought the input of the public, as well as the relevant bar association committees, on rulemaking to implement the post-grant review procedures.11 However, the Board has been preparing for post-grant review for many years and has already established, tested, and refined in the interference context many of the procedures it plans to apply to post-grant review.
In 2004, the USPTO overhauled its rules and procedures and introduced the concept of “contested cases” as well as rules that apply to all contested cases.12 At that time, the Board defined “contested cases” to include “patent interferences . . . and proceedings with interference-based procedures . . . .”13 The Board’s decision to coin a new term was explained in its comments on the new rules. The Board twice noted that patent interferences are not post-grant opposition procedures—despite the attempts of much of the interference bar to use them for that purpose.14 Rather, the “Office has proposed an enhanced post-grant review proceeding to fill the perceived need for such a proceeding.”15 Therefore, the Board’s use of the term “contested cases” allow the interference rules to apply to post-grant reviews.
Administrative Patent Judge Torczon (listed on the Federal Register Notice as the Board’s contact person regarding the new rules)16, identified “Provide test bed for cancellation procedures” as one of the Board’s goals for the new rules. Bar associations, recognizing the Board’s intent to apply the new rules to post-grant oppositions, renamed their “Interference Committees” to “Contested Cases” or “Inter-Partes Proceedings Committees.”
In addition, the Board extensively revised its Standing Order governing contested cases in conjunction with the new rules. In the years since, that test bed for post-grant review has resulted in multiple revisions to the Standing Order, the most recent issuing March 8, 2011.17 The Standing Order has grown from 47 pages to 81 pages of specific requirements regarding practice in contested cases.
As the Standing Order states, “Parties are expected to be familiar with it.”18 Because of the detail outlined in the Standing Order, some members of the interference bar view having opposing counsel not experienced with interferences as a large advantage because the Standing Order cannot be effectively learned in just one case, invariably resulting in violations of it. Not only is it extremely detailed, the Standing Order also contains unique provisions that are unexpected to other practitioners. For instance, interferences allow for limited discovery, generally in the form of cross-examination of an opponent’s declarant in a deposition, as will post-grant reviews.
Those not familiar with the Standing Order are often surprised by its Cross Examination Guidelines Appendix, which forbids “objections or statements that even remotely suggest an answer to a witness.”19 Moreover, the Trial Section APJs take the Rules and the Standing Order extremely seriously, especially their unique requirements. In an opinion well known to interference practitioners, this was evident when the Board scolded the actions of the defending counsel in a deposition when those same actions would have been acceptable in other venues.20
As the Standing Order indicates, only certain APJs handle contested cases.21 Those APJs constitute the Board’s Trial Section. They have all been handling contested cases for many years, and therefore, know the requirements of the Standing Order, rules, and statute backwards and forwards.
With these new changes going into effect in less than a year, it is important for practitioners to use this time to become familiar with the new procedures and processes. Practitioners involved in an post-grant review, whether on behalf of the petitioner or the patentee, will need to become equally familiar with these procedures and requirements. Companies would also be well advised to retain counsel experienced with the Standing Order and Trial Section APJs before opposing a competitor’s patent or defending the opposition of one of their own patents.
Footnotes
1 H.R. 1249 § 6(d)(adding “Chapter 32—Post-Grant Review”).
2 Report of the Committee on the Judiciary to Accompany H.R. 1249, H.R. Rep. 112- , at p. 47 (June 1, 2011).
3 http://documents.epo.org/projects/babylon/eponet.nsf/0/1ECBFB32A3E2F173C125770C005A369B/$File/five-year_review_2009.pdf
4 http://documents.epo.org/projects/babylon/eponet.nsf/0/1ECBFB32A3E2F173C125770C005A369B/$File/five-year_review_2009.pdf
5 H.R. 1249 § 6(d) at p. 57 (adding § 321(b)).
6 H.R. 1249 § 6(d) at pp. 57-59 (adding § 322. Petitions).
7 H.R. 1249 § 6(d) at p. 59 (adding § 323. Preliminary response to petition).
8 H.R. 1249 § 6(d) at pp. 59-60 (adding § 324. Institution of post-grant review).
9 H.R. 1249 § 6(d) at pp. 64-67 (adding § 326.Conduct of post-grant review).
10 Renamed the Patent Trial and Appeal Board. See H.R. 1249 § 6(d) at § 7(a) (adding § 6. Patent Trial and Appeal Board).
11 See http://www.uspto.gov/patents/init_events/bpai_items.pdf
12 Rules of Practice Before the Board of Patent Appeals and Interferences, Final Rule. 69 Fed. Reg. 49960 (August 12, 2004.
13 69 Fed. Reg. at 49661, col. 2.
14 69 Fed. Reg. at 49991, 49993.
15 69 Fed. Reg. at 49991.
16 69 Fed. Reg. at 49960.
17 http://www.uspto.gov/ip/boards/bpai/interf/forms/standingordermar2011.pdf
18 Standing Order at p. 1.
19 Standing Order at pp. 69-72.
20 Pevarello v. Lan, 85 USPC2d 1771 (Bd. Pat. App. & Int. 2007).
21 Standing Order at ¶ 2.1.
