Pre and Post Grant Strategies in US and Europe

© 2011 Lowe & Hauptman LLP 1

Strategies for coordinating pre and post grant oppositions in the United

States with European Practices.


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


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)


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)


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)


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)


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


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% ??


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.


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


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


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.


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


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)


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.


Post Grant in Europe

• When?– After the Grant– Within 9 months

• Who?– Any person– Except the owner of the patent



• Grounds – – Not patentable• Novelty• Inventive Step• Excluded Subject Matter

– Not enabling (Disclosure Enablement)



• 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



– 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.


Strategies

• For Example one filed an Application in US and Europe –

• Which one to be opposed First?

• Why?


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