July 2012 Issue

How Does the New U.S. Post-Grant Review Stack Up to an EPO Opposition?


Initiating PGR
Initiating PGR will be straightforward.  The challenger petitions the Board to initiate a proceeding.  Anyone other than the patent owner may challenge the patent, provided the challenger has not already filed a suit challenging the validity of the patent.  The challenger must pay a fee and file a petition providing a basis for invalidity for failure to meet requirements of at least one of 35 U.S.C. § 101 (statutory subject matter), § 102 (novelty), § 103 (nonobviousness), or § 112 (written description and enablement).  The challenger must file the petition within nine months of the patent grant.

While the post-grant bases for invalidity mirror those in the EPO, there are differences with respect to novelty and nonobviousness.  Under the U.S. laws, an invention may be entitled to a patent despite an earlier disclosure of the invention, as long as the disclosure qualifies for the one-year grace period afforded to inventors.  In contrast, the European requirement for absolute novelty means that any prefiling disclosure effectively bars patent claims.  The U.S. procedure is less forgiving elsewhere, however, in that applications by another and unpublished at the time of filing are considered in determining patentability under § 103.  Such unpublished applications are excluded from consideration in determining inventive step under the European Patent Convention (EPC).

The PGR petition also requires an identification of the real parties in interest, which is not a requirement in an EPO opposition.  Anonymity is not allowed under the AIA because PGR can estop the petitioner, or its privy, from raising any defense in a later United States Patent and Trademark Office (USPTO), district court, or International Trade Commission proceeding that was, or could have been, raised in the PGR.

The USPTO decision to institute a PGR also differs from initiation of an EPO opposition.  The USPTO will require information that, if not rebutted, demonstrates it is more likely than not at least one of the challenged claims is unpatentable or the petition raises a novel or unsettled legal question that is important to other patents or patent applications.  In contrast, the EPO does not weigh the sufficiency of information.  Still further, even if the USPTO Board finds all AIA requirements are met, it has the discretion to not institute review, and its decision is “final and non-appealable.”  For these reasons, initiating PGR likely will be more difficult than initiating an EPO opposition proceeding, and an adverse decision not to initiate proceedings may be impossible to remedy in the United States.

Conduct of PGR
PGR may be affected by other administrative and legal proceedings.  For instance, the AIA allows the USPTO discretion in structuring multiple concurrent proceedings, including derivation, reissue, and ex parte reexamination proceedings.  In addition, PGR may not be instituted or maintained if the petitioner challenges validity in federal district court.  In contrast, parallel validity proceedings in the EPO and national courts of EPO member states are possible, although some states allow for stays.

Though the procedural rules for conduct of PGR are not yet finalized, the most important  rules likely will pertain to evidence and to amending or submitting alternative claims.  Limited discovery will be allowed and certainly more expansive than in the EPO, while amending claims will be more restricted.  The AIA provides for patent owners to file a single motion to cancel or amend any challenged claim or propose a reasonable number of substitute claims as a matter of right.  The EPO, however, allows claim amendments “occasioned by the grounds for opposition specified in [EPC] Art. 100,” even if the particular ground relied on has not been invoked by an opponent.  See, e.g., Guidelines for Examination in the European Patent Office Part D. - Chapter IV-5.3 (Apr. 2010).  Moreover, the EPO allows patent owners to submit multiple potential claim amendments as auxiliary requests.

PGR challenges must be proven by a preponderance of the evidence, a lower standard than required in U.S. district court, where clear and convincing proof of invalidity is required.  It is difficult to determine how either U.S. standard compares to the EPO’s “balance of probabilities” standard, which varies depending on the issue, from simply requiring that one set of facts is more likely to be true than another up to a degree of certainty which is beyond any reasonable doubt.

Settlement and Arbitration
The AIA provides for settlement of PGR proceedings or for arbitration of any issue.  If settlement is reached before the Board reaches the issues and no petitioners remain, it appears likely that the PTO will terminate proceedings without issuing a final written decision.  This would differ from EPO practice where, once instituted, an opposition is driven by the panel’s understanding of what should issue as a patent, exhibiting a greater bias to examine and issue only valid claims without much regard to any potential third party.

Effect of Appeal and Decision
If PGR is initiated and not dismissed prior to a written decision, the Board will determine the patentability of all challenged, and any added, claims.  As noted earlier, final written decisions have significant estoppel effects, while EPO oppositions give rise to no estoppels.  Parties opposing a patent before the EPO can even use the same arguments and evidence in later national litigation or revocation proceedings.

The AIA provides for appellate relief to those dissatisfied with the Board’s decision, by way of appeal to the Federal Circuit.  In contrast, the EPO allows appeal to an administrative body, the Boards of Appeal, but there is no avenue to appeal outside the EPO.

Despite apparent similarities between PGR and EPO oppositions, critical differences in their conduct and effects warrant careful review of applicable law and practice.  Understanding both the similarities and differences should allow practitioners to better develop a global opposition strategy utilizing the new patent regime in the United States.