by Dennis Crouch
Time is flying and the newly revamped host of USPTO administrated post-grant patent procedures is on its way. As we speak, the USPTO is continuing to develop its rules and internal operating procedures for handling the new options. This post focuses on the new post-grant review (A.K.A. opposition proceeding), which is being created by splitting the current inter partes reexamination system into two parts: post-grant review and inter partes review. Current reexamination practice focuses solely on questions of novelty and obviousness based upon prior art in the form of printed publications. The new post-grant review system broadens the bases for review to virtually any validity challenge. However, post-grant reviews will only be available during a 9–month window following patent issuance.
Full implementation of the post-grant review system will not be until 2013 & 2014 because the review is only available for patents with a priority date on or after March 16, 2013. The 2013 date is also the implementation date of the new Filing-Date-Priority rules. We will, however, get a preview of the PGR system once it becomes available to go against Business Method patents beginning September 16, 2012.
EPO Opposition Popularity: Europe has a popular opposition system and there is a natural comparison between our new post-grant review and their oppositions. Around 5% to 7% of EPO-issued patents are opposed during the 9–month post-grant window. This figures are an order-of-magnitude greater than the proportion of US patents that go through the inter partes reexamination system.
Obstacles to US Post-Grant Popularity: I do not expect that the US system will see the same level of utilization – at least for some time. The major legal impediment to filing a post-grant review is the tough new threshold that requires a showing “that there is a reasonable likelihood that the petitioner will prevail with respect to at least one claim challenged.” If the threshold is not met, the petition for review will be rejected. This threshold is substantially greater than the USPTO's historic standard requiring a “substantial new question of patentability.” The EPO does not have a similar threshold. Rather, so long as certain formalities are met, the opposition proceeds with a full review with opportunity for appeal, etc. That said, the EPO opposition proceeding results in cancellation or at least amendment in about 75% of cases.
The other major roadblock to popularity for US post-grant review will be cost. Current behind-the-scenes discussion peg the USPTO filing fees at over $40,000 for a post-grant review. The equivalent fee for an EPO opposition is under $1,000 (€705). The availability of limited discovery suggest that the legal fees for post-grant oppositions will also be fairly high.