[This is the tenth and final post in a series of postings regarding the various proposals in the Patent Act of 2005.]

Post Grant Opposition Proceeding in the USPTO

On the third Tuesday of the month, if the moon is full, you may file an opposition to a patent grant. The actual provision is not quite so convoluted, thanks to a recent amendment, but there are definitely some timing issues that must be given their due! The Act proposes that a person may request that the grant or reissue of a patent be reconsidered by the USPTO by identifying the claims that are considered unpatentable and citing support thereof. The request must be made within 9 months of the grant of patent unless the patentee agrees otherwise (not too likely!). (See, Section 323 of the Act). The time limit parallels European patent practice and goes toward giving the patent holder some certainty, after the proscribed period, that their patent is no longer in danger of this type of challenge.

Aside from re-examination and interference proceedings, a third party’s ability, to challenge a patent grant, without resorting to litigation, is limited. The proposed procedure would allow the use of depositions and discovery to fully explore the validity of an issued patent; (See, Section 328 of the Act.) but, the failure of the non-patentee to prove their case carries estoppel issues similar to those under reexamination. (See, Section 336 of the Act.) Basically, the requestor is trading off his right to a jury trial on the factual issues of the case.

The Professional Inventors Alliance has expressed concern that this procedure might be misused to shift additional costs onto the patentee. They have also criticized the provision for its standard of proof, (See, Section 332 of the Act, which sets the standard at preponderance of the evidence rather than the clear and convincing standard offered in court which gives the patent holder an edge on the finding of validity.)ability to hide the real party in interest, (See, Section 322(a-b) of the Act: [T]he opposition shall proceed in the name of the real party in interest. [I]f requested by the opposer, the identity of a real party in interest shall be kept separate from the file of the opposition and made available only to Government agencies upon written request, or to any person upon a showing of good cause.) and the availability of the procedure to accused infringers after a patent lawsuit has been filed.

While their concerns are valid, it is clear that some alternative to the extreme costs of litigation is in order. The average cost of patent litigation ranges between $500,000 and $4,000,000 per party. (Statement of Michael K. Kirk, Executive Director American Intellectual Property Law Association, before the Subcommittee on Courts, the Internet, and Intellectual Property Committee of the Judiciary U.S. House of Representatives on the Patent Quality Improvement: Post-Grant Opposition (June 24, 2004)).

In addition, if it is only possible to test a patent’s validity through litigation if the patentee brings an infringement action against a competitor or provides the competitor with standing to bring a declaratory judgment action based on threats by the patentee …. a competitor cannot challenge a patent in litigation before the competitor incurs the costs and risks of developing and marketing a product. (Statement of Michael K. Kirk, Executive Director American Intellectual Property Law Association, before the Subcommittee on Courts, the Internet, and Intellectual Property Committee of the Judiciary U.S. House of Representatives on the Patent Quality Improvement: Post-Grant Opposition (June 24, 2004)). This means of limiting the inquiry to just the validity of the patent offers a compromise that will likely benefit everyone involved.

Submissions by Third Parties

35 U.S.C. §122(c) currently prohibits any protest or other form of pre-issuance opposition after publication without consent of the applicant although MPEP 1134.01 provides for a limited two-month window, following publication of a pending application, under which submissions may be made without comment. This proposal expands the window for submitting prior art against pending applications to six months after publication. It would also allow the third party to make arguments regarding such prior art in relation to the pending application. Yes, it does put a burden on non-patentees to keep an eye on their competitors’ patent doings but, if used, gives them a fairly cheap way to knock out rival patents and strengthen the patent system. It also benefits the patentee because they gain early knowledge of (and an opportunity to argue against) probative prior art. If the patent issues in spite of the submission, the patent holder has the security of knowing they have already survived a challenge to their patent from a competitor.


The original wording for this section raised a hue and cry because it clearly shifted the balance of power toward the defendant in litigation. It would only allow a lawsuit to commence in the district where the defendant resides or is located. Resource limited companies may be forced to file lawsuits far outside of their normal jurisdiction where they may find it difficult/expensive to assert their patent rights. (Robert B. Chess, on behalf of the Biotechnology Industry Organization, before the United States House of Representatives Committee on the Judiciary Subcommittee on Courts, the Internet, and Intellectual Property Hearing on: An Amendment in the Nature of a Substitute to H.R. 2795 the Patent Reform Act of 2005 (September 15, 2005)).

The amendment provides a facially more even-handed approach to venue. It directs the court to grant a motion for transfer to a more appropriate venue where a party to the action has substantial evidence or witnesses if the action was not brought in a district in which the patentee resides or maintains its principal place of business and, at the time the action was brought, neither the patentee nor the infringer had substantial evidence or witnesses in that judicial district.

Did you actually read all of that? The upshot is that most of the evidence regarding infringement will probably be in the judicial district associated with the defendant so the amendment is simply a more loquacious way of assigning venue to the defendant. Lucky for the patentee, there is always the Court of Appeals for the Federal Circuit.

Previous: Part 9. Prior User Rights.

Today’s post comes from Guest Barista Ria Schalnat, a registered patent attorney in Frost Brown Todd’s Cincinnati office.

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