U.S. Likely to Adopt Post-Grant Oppositions

Adoption of post-grant oppositions appeared to be a shoe in at the combined meeting of the Interference Committees of the ABA, AIPLA and IPO held on April 14, 2003. Elimination of the 35 USC 135(b)(2) “clock” for interferences also appeared likely.

Post-Grant Oppositions

Proposed legislation to adopt a post-grant opposition procedure should be in the hopper before January 2004. But key features of the proposed opposition procedure were not resolved at the combined meeting.

AIPLA's memo for the meeting mentioned 12 outstanding issues. Of those issues, the ones focused upon at the meeting are discussed below:

Nature of the Proceeding. Will the opposition procedure manifest itself as an expansion of the inter partes re-examination or interference procedures, or will the opposition procedure be distinct? Will oppositions be handled by the examining group (like re-examinations) or by the Board (like interferences)? Consensus on these points was not evident at the meeting. I argued that oppositions should be merged with inter partes re-examinations and/or interferences on the grounds that U.S. patent law will become more unwieldy if the avenues for testing the validity of a patent include oppositions as well as interferences, inter partes re-examinations, ex parte re-examinations, ITC proceedings and challenges in district court ' all of which are subject to their own rules and precedent.

Time Limit for Requesting Opposition. Harold Wegner, Charles Gholz and Danny Huntington argued against time limits in favor of letting anyone request an opposition at any time during a patent's term. Richard Neifeld and Judge Richard Torczon suggested that the time limit should depend on the standard for initiating an opposition. If the standard is low, and if anyone can initiate one at any time, oppositions will be filed for their nuisance value. Neifield stated that, in the absence of information about the standard, he favored a time limit of one year from the date of issuance of the patent in question.

Grounds that can be Adjudicated. Gholz argued for letting the PTO adjudicate all grounds of invalidity and enforceability. Judge Bruce Stoner pointed out that resolving enforceability issues always generates a great deal of work for the Board of Patent Appeals and Interferences. Judge Stoner also noted that alleging inequitable conduct tends to inflame proceedings before the Board.

Initial Showing Requirements. There was little time for debate about this issue at the meeting. Apparently, the PTO favors requiring the petitioner to make an initial statement of the grounds for an opposition and allowing the Administrative Patent Judge (APJ) discretion to set a time limit for an expanded showing to justify an opposition. If the expanded showing is not made, the APJ may dismiss the proceeding. The APJ's dismissal would not be appealable under the PTO's favored procedure.

Rules of Evidence. Everyone at the meeting agreed that the Federal Rules of Evidence should apply to oppositions. In addition, the PTO favors: (1) using “preponderance of the evidence” as the standard for proving invalidity, and (2) allowing the case-in-chief to be presented by affidavit and deposition testimony, followed by a hearing (optionally in the presence of the APJ) in which live cross-examination is possible.

Settlement. Gholz and Huntington favored allowing the parties to reach settlement without the approval of the APJ, but with the requirement that the parties file the settlement agreements with the PTO where they are accessible to the Justice Department, as in interferences under 35 USC '135(c).

Most of the issues presented at the meeting need more vetting. In particular, two policy considerations were given short shrift: (1) the benefits of bright-line rules, and (2) the overarching value of harmonizing U.S. patent law with the patent laws of other countries. It is hoped that these considerations will be addressed before legislation is proposed.

The 135(b)(2) 'Clock'

The issue of the 135(b)(2) “clock” was also addressed at the meeting. Under 35 USC 135(b)(2), a patent applicant has 12 months from the date of publication of a competitor's patent application to claim the same invention. If the applicant fails to claim the same invention within 12 months, the applicant cannot invoke an interference against the competitor's application. Furthermore, ' 135(b)(2) technically bars the applicant from ever claiming that invention.

AIPLA's memo raised three arguments against ' 135(b)(2): Section 135(b)(2) places a new and undue burden on applicants to continually review databases of published applications, both before and after filing their own applications.

This burden is exacerbated by the fact that the ' 135(b)(2) “clock” is triggered by PCT publications that are not in English. (Whether the 135(b)(2) “clock” is in fact triggered by PCTs, much less non-English PCTs, is open to debate. Section 135(b)(2) states that the “clock” is triggered by applications “published under section 122(b).”)

In instances in which the publication date would bar the claims in a continuation, but not in a Request for Continued Examination (RCE), ' 135(b)(2) forces applicants to add claims in a RCE that they would have otherwise pursued in a continuation.

Various meeting attendees also argued that published but unpatented claims are so inchoate that applicants who review them will waste substantial time and resources analyzing and copying claims that will never issue.

Wegner argued in favor of ' 135(b)(2), pointing out that the rest of the world is in the habit of closely monitoring publication of applications and there is no reason the United States cannot do so also. Except for Wegner, however, everyone seemed to agree that ' 135(b)(2) should be eliminated.

Samson Vermont is the founder of this newsletter and an associate in the Washington, D.C. office of Hunton & Williams, where he specializes in biotech patents.

Adoption of post-grant oppositions appeared to be a shoe in at the combined meeting of the Interference Committees of the ABA, AIPLA and IPO held on April 14, 2003. Elimination of the 35 USC 135(b)(2) “clock” for interferences also appeared likely.

Post-Grant Oppositions

Proposed legislation to adopt a post-grant opposition procedure should be in the hopper before January 2004. But key features of the proposed opposition procedure were not resolved at the combined meeting.

AIPLA's memo for the meeting mentioned 12 outstanding issues. Of those issues, the ones focused upon at the meeting are discussed below:

Nature of the Proceeding. Will the opposition procedure manifest itself as an expansion of the inter partes re-examination or interference procedures, or will the opposition procedure be distinct? Will oppositions be handled by the examining group (like re-examinations) or by the Board (like interferences)? Consensus on these points was not evident at the meeting. I argued that oppositions should be merged with inter partes re-examinations and/or interferences on the grounds that U.S. patent law will become more unwieldy if the avenues for testing the validity of a patent include oppositions as well as interferences, inter partes re-examinations, ex parte re-examinations, ITC proceedings and challenges in district court ' all of which are subject to their own rules and precedent.

Time Limit for Requesting Opposition. Harold Wegner, Charles Gholz and Danny Huntington argued against time limits in favor of letting anyone request an opposition at any time during a patent's term. Richard Neifeld and Judge Richard Torczon suggested that the time limit should depend on the standard for initiating an opposition. If the standard is low, and if anyone can initiate one at any time, oppositions will be filed for their nuisance value. Neifield stated that, in the absence of information about the standard, he favored a time limit of one year from the date of issuance of the patent in question.

Grounds that can be Adjudicated. Gholz argued for letting the PTO adjudicate all grounds of invalidity and enforceability. Judge Bruce Stoner pointed out that resolving enforceability issues always generates a great deal of work for the Board of Patent Appeals and Interferences. Judge Stoner also noted that alleging inequitable conduct tends to inflame proceedings before the Board.

Initial Showing Requirements. There was little time for debate about this issue at the meeting. Apparently, the PTO favors requiring the petitioner to make an initial statement of the grounds for an opposition and allowing the Administrative Patent Judge (APJ) discretion to set a time limit for an expanded showing to justify an opposition. If the expanded showing is not made, the APJ may dismiss the proceeding. The APJ's dismissal would not be appealable under the PTO's favored procedure.

Rules of Evidence. Everyone at the meeting agreed that the Federal Rules of Evidence should apply to oppositions. In addition, the PTO favors: (1) using “preponderance of the evidence” as the standard for proving invalidity, and (2) allowing the case-in-chief to be presented by affidavit and deposition testimony, followed by a hearing (optionally in the presence of the APJ) in which live cross-examination is possible.

Settlement. Gholz and Huntington favored allowing the parties to reach settlement without the approval of the APJ, but with the requirement that the parties file the settlement agreements with the PTO where they are accessible to the Justice Department, as in interferences under 35 USC '135(c).

Most of the issues presented at the meeting need more vetting. In particular, two policy considerations were given short shrift: (1) the benefits of bright-line rules, and (2) the overarching value of harmonizing U.S. patent law with the patent laws of other countries. It is hoped that these considerations will be addressed before legislation is proposed.

The 135(b)(2) 'Clock'

The issue of the 135(b)(2) “clock” was also addressed at the meeting. Under 35 USC 135(b)(2), a patent applicant has 12 months from the date of publication of a competitor's patent application to claim the same invention. If the applicant fails to claim the same invention within 12 months, the applicant cannot invoke an interference against the competitor's application. Furthermore, ' 135(b)(2) technically bars the applicant from ever claiming that invention.

AIPLA's memo raised three arguments against ' 135(b)(2): Section 135(b)(2) places a new and undue burden on applicants to continually review databases of published applications, both before and after filing their own applications.

This burden is exacerbated by the fact that the ' 135(b)(2) “clock” is triggered by PCT publications that are not in English. (Whether the 135(b)(2) “clock” is in fact triggered by PCTs, much less non-English PCTs, is open to debate. Section 135(b)(2) states that the “clock” is triggered by applications “published under section 122(b).”)

In instances in which the publication date would bar the claims in a continuation, but not in a Request for Continued Examination (RCE), ' 135(b)(2) forces applicants to add claims in a RCE that they would have otherwise pursued in a continuation.

Various meeting attendees also argued that published but unpatented claims are so inchoate that applicants who review them will waste substantial time and resources analyzing and copying claims that will never issue.

Wegner argued in favor of ' 135(b)(2), pointing out that the rest of the world is in the habit of closely monitoring publication of applications and there is no reason the United States cannot do so also. Except for Wegner, however, everyone seemed to agree that ' 135(b)(2) should be eliminated.

Samson Vermont is the founder of this newsletter and an associate in the Washington, D.C. office of Hunton & Williams, where he specializes in biotech patents.