Patent Reform at the Crossroads: Experience in the Far East with Oppositions Suggests an Alternative Approach for the United States

June 16, 2012

On September 1, 2005, Representative Lamar Smith introduced a “Coalition Print” version of a patent reform bill (Substitute bill H.R. 2795) into Congress. That bill included a post-grant opposition procedure not later than nine months after grant. On April 5, 2006, Representative Howard Berman introduced the “Patents Depend on Quality Act of 2006” (H.R. 5096 – the “PDQ Act”) into Congress. The proposed PDQ Act includes a so-called “second window” for bringing an opposition, namely within six months of the alleged infringer’s receiving notice of suit.
The concept of a post-grant review procedure has the support of the Director of the United States Patent and Trademark Office, Jon Dudas, and warrants consideration by the patent community at large. The authors submit that the form and substance of any such post-grant review procedure are critical elements to its success. The authors submit that the review procedure should not take the form of an “opposition” protocol, but rather should be woven into the existing inter partes reexamination procedure.
The authors recommend an alternative administrative patent invalidation system that differs from those suggested in the H.R. 2795 and H.R. 5096 bills. As backdrop for the authors’ proposal, the strengths and weaknesses of the existing inter partes and ex parte reexamination procedures for challenging a patent are explored. International systems for challenging patents in Europe, Japan, China, and Taiwan are also benchmarked. The European post-grant opposition, unlike the proposed United States system, does not include estoppel with respect to subsequent litigation, and thus does not preclude raising in the litigation the same issues of law and fact argued in an opposition proceeding.
Due to negative experiences, Japan and China have abolished their time-limited post-grant opposition systems in favor of a single non-time limited patent invalidation system. Other potential problematic aspects associated with the proposed United States post-grant system include: the nine-month time limitation for filing an opposition request, the lack of qualified PTO resources to adequately support a completely new system, overlap and redundancy with existing reexamination systems, and a lack of consistency with the invalidation system of one of our tripartite partners, namely Japan.
To resolve these issues, the authors propose a non-time limited invalidation system that is based off of the existing inter partes reexamination framework. The proposed system is a ‘hybrid’-combining many of the beneficial aspects of the proposed United States opposition system with the existing inter partes reexamination system. The proposed changes to inter partes reexamination include, inter alia, making the system retroactive to patents issued from applications filed prior to November 29, 1999, expanding the grounds to be consistent with statutory patentability requirements, expanding the scope of evidence considered, expanding third party involvement via oral hearings and deposition testimony, and modifying the current estoppel provision to include only legal determinations relative to invalidity of issues actually raised in the proceeding. The proposed invalidation system would provide a speedy, simple, low cost, and efficient method of challenging United States patents to increase their quality and certainty while obviating the overlap and redundancy associated with having both a United States post-grant opposition system and an inter partes reexamination system.