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  ...
Pre-Grant in US• No Pre-Grant in US (Before AIA)• Reasons –  – Undue burden on the applicant  – Additional Cost to the Pat...
After AIA• AIA (America Invents Act) -  – Introduced Pre-Grant oppositions by way of ‘Third    Party Submissions’  – Effec...
After AIA• When a Third Party can File?  – Before –     • the date of allowance (§ 151)  – Later of –     • 6months after ...
Third Party Submissions• What can be submitted?  – Any Granted Patent  – Any Published Patent Application  – Any Prior Art...
Other Requirements• Third Party Submissions should be  accompanied by -  – A brief and concise description on “How the    ...
Post-Grant in US• Before AIA –  – Only Inter Partes     • Any time after the date of Grant     • Till the end patent term ...
Post-Grant in US• After AIA –  – Effective Date – 16th March 2013  – New Post Grant Review Mechanism (Like Europe)• Time L...
Post-Grant in US• Steps in Post Grant Review –  – Filing an opposition  – Opposition requires a showing that it is “more  ...
Inter Partes• Who?  – Any person other than the owner of the patent• When?  – Starts any time after the expiry of 9 months...
Inter Partes• Limited Grounds• Only Grounds –  – 102 & 103  – Printed Publication and Granted Patents  – Not beneficial if...
Pre Grant in Europe• Third Party Observations• After Publication• Before the Allowance• Examiner may consider even after t...
Pre Grant in Europe• The opposing party will not become a party to  the proceedings  – Third Party can not argue before th...
Pre Grant in Europe• Grounds –  – Only Patentability     • Novelty     • Utility     • Non-Obviousness• This Third Party O...
Post Grant in Europe• When?  – After the Grant  – Within 9 months• Who?  – Any person  – Except the owner of the patent   ...
Post Grant in Europe• Grounds –  – Not patentable     • Novelty     • Inventive Step     • Excluded Subject Matter  – Not ...
Post Grant in Europe• Procedure –  – Notice of Opposition     •   Evidence (Prior Art Documents)     •   Facts     •   Arg...
Post Grant in Europe  – Preliminary opinion by the Opposition Division  – Oral proceedings  – Decision by the opposition D...
Strategies• For Example one filed an Application in US and  Europe –• Which one to be opposed First?• Why?                ...
Strategies           US                                     Europe• File Pre Grant (Third                • Post Grant  Par...
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Pre and Post Grant Strategies in US and Europe

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Pre and Post Grant Strategies in US and Europe

  1. 1. Strategies for coordinating pre and post grant oppositions in the United States with European Practices. © 2011 Lowe & Hauptman LLP 1
  2. 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 2
  3. 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 3
  4. 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 4
  5. 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 5
  6. 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 6
  7. 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 7
  8. 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 8
  9. 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 9
  10. 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 10
  11. 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 11
  12. 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 12
  13. 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 13
  14. 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 14
  15. 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 15
  16. 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 16
  17. 17. Post Grant in Europe• Grounds – – Not patentable • Novelty • Inventive Step • Excluded Subject Matter – Not enabling (Disclosure Enablement) © 2011 Lowe & Hauptman LLP 17
  18. 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 18
  19. 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 19
  20. 20. Strategies• For Example one filed an Application in US and Europe –• Which one to be opposed First?• Why? © 2011 Lowe & Hauptman LLP 20
  21. 21. Strategies US Europe• File Pre Grant (Third • Post Grant Party Submissions) • Based on the US• It invokes Discovery Discovery for Info. • Pre Grant in Europe is weak as it doesn’t allow the opposing party to argue before the examiner © 2011 Lowe & Hauptman LLP 21

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