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November 9, 2007

Opposition to Opposition

The United States currently has a sufficient open-ended post-grant opposition process in the form of inter partes re-examination. So, does the proposed statutory reform for a different protocol make sense? Dale Carlson in the National Law Journal: "The recent experience of three Asian countries that have implemented, and subsequently abolished, patent opposition systems signals a resounding 'No.'"

Carlson describes the abandonment in Japan, South Korea, and China of post-grant opposition systems as proposed in the Patent Reform Act of 2007. Carlson rightly points out that redundant procedures, as in the House bill, are a waste of resources. Carlson figures "a more cost- and resources-effective approach would be to improve the existing protocol."

Posted by Patent Hawk at November 9, 2007 1:44 PM | The Patent System


Have to agree with Carlson. There are special reasons why the EPO opposition system is so stable and successful. For nearly 30 years now, roughly 5% of patents issuing from the EPO are opposed, and 70% of all such oppositions are filed by Germans, for whom opposition has always been a standard business tool that one needs to use, in defence against the mischiefs of the German "twin track" patent litigation system (which Japan used to have but has now wisely got rid of). What's interesting is the extent to which litigation-savvy Americans can use the EPO opposition track (which is running faster these days)at nominal cost to diminish the threat of a particular US patent. EPO-style civil law opposition will anyway never work in common law USA.

Posted by: MaxDrei at November 10, 2007 9:44 AM

The reason that the proponents of patent reform legislation currently pending in Congress don't like inter partes is that there is a significant estoppel effect if the challenge to patent validity is not successful.

The provisions of the current legislation regarding post-grant opposition do not require that a plaintiff plead all bases of invalidity and the same infringer may contest validity in _both_ the PGO proceeding and in a later infringement or DJ action. There is no express provision that says that even if the PTO has upheld the validity of the patent in a PGO proceeding that an infringer cannot retry the issue in district court on the same grounds.

My understanding is that the Asian countries have eliminated their opposition procedures is because it was being used in an abusive manner by large companies that were attempting to kill the patents of smaller entities in the crib.

I have been told that some companies have an EPO opposition proceeding filed for every single patent application they file, so they must spend the money to contest the proceeding and wait an average of (I think) 30 months for the initial ruling and even longer if the ruling is appealed on every application.

Posted by: David at November 12, 2007 10:29 AM

What's this David, about "must" and "wait"? Opposition is post-issue. David can sue the infringer on the day of issue. Include a petition for interlocutory injunctive relief. No reason not to get it, regardless how long Daniel's ill-founded opposition struggles on before getting dismissed. If by any chance little David finds that Daniel Opponent has a) good art, David should kiss him, amend out of his squeeze (nominal cost) and sally forth against the entire world, with a patent of enhanced validity. Conversely, if Daniel Opponent is asserting that claim 1 includes b) an insufficiently defined parameter or c) a subject-matter-adding prosecution amendment, David should be afraid, in fact very afraid. Opposition in the EPO is a filter. Bad patents don't make it through, but good ones come through with enhanced validity. Players who know how to use the filter have an advantage. Defending against an opponent is cheap because the civil law EPO bottles out of proper fact-finding.

As for the Asian countries, I am deeply impressed David by what you write, that their governments are so responsive to the concerns of "smaller entities" that they deprive Daniel of his David-murdering weapon of choice. I thought it was only in America that the Government was the champion of the little guy. I thought it was the deficiency of ROW that it always helped Daniel and hindered David.

Having said all that though, your res judicata point is a very good one. The supra-national EPO is unique. An Opoponent in the EPO can try again before the national courts with the same grounds and the same facts, and no reason not to succeed, when he's right about validity.

Posted by: MaxDrei at November 12, 2007 2:18 PM

Sorry about that: above I wrote "Daniel" but what I had in mind was Goliath, the giant.

Posted by: MaxDrei at November 12, 2007 2:45 PM


Japanese law relating to challenging a patent has undergone significant change over the last 10 years. Prior to 1996, Japan had a pre-grant patent
opposition system, which was available to a challenger within 3 months of the date of patent application publication.41 The pre-grant opposition system was replaced on January 1, 1996 with a post-grant opposition system due to delays in the issuance of a patent subject to pre-grant attack, and perceived harassment on patent applicants. The Japanese post-grant opposition system was abolished in 2003, only seven years after its enactment, for the reasons described below. Prior to its abandonment, the pre-grant opposition system was used primarily as corrective measure to rectify a mistaken decision of the JPO in the granting of a patent, which was a public benefit.

From “The Mystery of (Intellectual) Capital”
Prepared Statement of AmberWave Systems Corporation Before the Committee on Small Business
United States House of Representatives “The Importance of Patent Reform on Small Businesses”
March 29, 2007

Indeed, if the experience of other countries is any guide, the United States should exercise great caution before introducing a post-grant opposition system. Less than 10 years after adopting such a system, Japan, Korea, Taiwan, and China have all recently abolished post-grant patent opposition procedures in favor of a streamlined invalidation proceeding that permits a centralized process for administrative reexamination. The Japanese Patent Office has publicly acknowledged that repeated attacks against a patent under duplicative administrative and judicial opposition systems have imposed undue burdens on patentees, resulting in increased costs and delays. Similarly, Taiwan concluded that its post-grant opposition system unfairly benefited infringers to the detriment of all patent owners.

Posted by: David at November 13, 2007 10:50 AM

Good stuff David. But opposition at the EPO does not suffer from the deficiencies identified by the Asian countries. I guess that's because the EPO is located in Germany, where there are hundreds of patent infringement litigations per year in the District Courts, many with interlocutory injunctive relief granted, while national validity must be assessed elsewhere (Federal Patents Court BPatG in Munich). German rules say that an attack on validity cannot be entertained at the BPatG while an opposition is still pending at the EPO. Meanwhile, in England, the court trying infringement can go right on and revoke the UK part of the EPO patent, before those EPO Examiners trying the opposition have even put their boots on. Probably this all goes to show that inter-partes administrative opposition as a concept would likely fail in USA, even while it works nicely, in multi-State, multi-jurisdictional Europe.

Posted by: MaxDrei at November 13, 2007 11:12 PM