pre and post grant strategies in us and europe
DESCRIPTION
TRANSCRIPT
© 2011 Lowe & Hauptman LLP 1
Strategies for coordinating pre and post grant oppositions in the United
States with European Practices.
© 2011 Lowe & Hauptman LLP 2
Kinds of Oppositions
• Pre Grant– Before Grant– After Publication (18 months)– Third Party Observations
• Post Grant– After the Grant– Within a stipulated time– Revocation Proceedings
© 2011 Lowe & Hauptman LLP 3
Pre-Grant in US
• No Pre-Grant in US (Before AIA)• Reasons –– Undue burden on the applicant– Additional Cost to the Patent Office (Hearings)– Delays the examination process– Major Pharmaceutical Companies Opposed
(Patent Term Restoration – Not more than 5 years)
© 2011 Lowe & Hauptman LLP 4
After AIA
• AIA (America Invents Act) -– Introduced Pre-Grant oppositions by way of ‘Third
Party Submissions’– Effective Date – 16th Sep 2012.– Governing rules from the USPTO (Expected Aug
2012)
© 2011 Lowe & Hauptman LLP 5
After AIA
• When a Third Party can File?– Before – • the date of allowance (§ 151)
– Later of – • 6months after the first publication (§ 122)• After the first rejection date (§ 132)
© 2011 Lowe & Hauptman LLP 6
Third Party Submissions
• What can be submitted? – Any Granted Patent – Any Published Patent Application– Any Prior Art Document• Potentially Relevant• Publicly available • Before the Application Date
– Lack of Inventive Step• Prior Discoveries (Lab Records)
© 2011 Lowe & Hauptman LLP 7
Other Requirements
• Third Party Submissions should be accompanied by - – A brief and concise description on “How the
document is potentially relevant?”– Affidavit by the Third Party– Prescribed Fees
© 2011 Lowe & Hauptman LLP 8
Post-Grant in US
• Before AIA – – Only Inter Partes • Any time after the date of Grant• Till the end patent term• No “Reasonable Likelihood of winning” is required
– Reasonable = 75% ??
© 2011 Lowe & Hauptman LLP 9
Post-Grant in US
• After AIA – – Effective Date – 16th March 2013– New Post Grant Review Mechanism (Like Europe)
• Time Limit – – Within 9 months from the date of Grant
• Broad Scope – Unlike Europe– Any ground of invalidity.
© 2011 Lowe & Hauptman LLP 10
Post-Grant in US
• Steps in Post Grant Review – – Filing an opposition– Opposition requires a showing that it is “more likely
than not” (51%) that at least one claim is unpatentable
– Preliminary response by the patent owner– (within 3 months) The USPTO has to decide
whether or not to allow that opposition “more likely than not”
– Hearings / Trail
© 2011 Lowe & Hauptman LLP 11
Inter Partes
• Who?– Any person other than the owner of the patent
• When?– Starts any time after the expiry of 9 months from
the date of Grant ( or After the termination of Post-Grant Review Proceedings)
– 9 months after the re-issue of patent– Extends till the end of Patent Term
© 2011 Lowe & Hauptman LLP 12
Inter Partes
• Limited Grounds • Only Grounds – – 102 & 103– Printed Publication and Granted Patents– Not beneficial if Continuation Application is filed
• Reasonable Likelihood that opposing party will prevail.
© 2011 Lowe & Hauptman LLP 13
Pre Grant in Europe
• Third Party Observations• After Publication• Before the Allowance• Examiner may consider even after the
allowance (In this situation re-examination will be done)
• No official fees
© 2011 Lowe & Hauptman LLP 14
Pre Grant in Europe
• The opposing party will not become a party to the proceedings– Third Party can not argue before the examiner – Discretion of the Examiner
• If examiner is not convinced during the third party observation – No hope for the Post-Grant Opposition (Post Grant is better)
© 2011 Lowe & Hauptman LLP 15
Pre Grant in Europe
• Grounds – – Only Patentability• Novelty• Utility• Non-Obviousness
• This Third Party Observations may encourage the applicant to file “Divisional Applications” – Which he could not do after the grant.
© 2011 Lowe & Hauptman LLP 16
Post Grant in Europe
• When?– After the Grant– Within 9 months
• Who?– Any person– Except the owner of the patent
© 2011 Lowe & Hauptman LLP 17
Post Grant in Europe
• Grounds – – Not patentable• Novelty• Inventive Step• Excluded Subject Matter
– Not enabling (Disclosure Enablement)
© 2011 Lowe & Hauptman LLP 18
Post Grant in Europe
• Procedure – – Notice of Opposition• Evidence (Prior Art Documents)• Facts• Arguments to be relied on• Documents submitted at a later date with out no good
reason will be ignored.
– Response by the owner• Amendment
© 2011 Lowe & Hauptman LLP 19
Post Grant in Europe
– Preliminary opinion by the Opposition Division– Oral proceedings– Decision by the opposition Division– Appeal
• Note : Unlike Pre Grant - Post Grant Oppositions has to be filed in the respective National Courts.
© 2011 Lowe & Hauptman LLP 20
Strategies
• For Example one filed an Application in US and Europe –
• Which one to be opposed First?
• Why?
© 2011 Lowe & Hauptman LLP 21
Strategies
US
• File Pre Grant (Third Party Submissions)
• It invokes Discovery for Info.
Europe
• Post Grant• Based on the US
Discovery• Pre Grant in Europe is
weak as it doesn’t allow the opposing party to argue before the examiner