Patent opposition proceedings

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Patent opposition proceedings are administrative mechanisms within the patent law framework that allow third parties to formally challenge the validity of a pending patent application (pre-grant opposition) or a granted patent (post-grant opposition). [1] [2] These opposition proceedings serve as a crucial check within the patent system, ensuring that patents are granted only for inventions that genuinely meet all legal requirements, thereby maintaining the integrity and quality of the patent landscape. [1]

Contents

Types of opposition systems

There are primarily two types of patent opposition systems, each with distinct procedures and strategic implications:

Pre-grant opposition

Pre-grant opposition allows third parties to oppose a patent application before the patent is officially granted. This system provides an opportunity to prevent the issuance of a patent that may not satisfy the patentability criteria. Pre-grant opposition proceedings typically commence after the patent application has been published but before the substantive examination is completed by patent examiners. In some jurisdictions, the opposition period starts after a positive examination result, where the patent office indicates an intention to grant the patent. [1]

Procedures: An opponent must file a notice of opposition within a specified time frame, stating the grounds for opposition and providing supporting evidence. The patent applicant is notified and given the opportunity to respond, amend the application, or provide counterarguments. The patent office then reviews the submissions from both parties before making a decision.

Post-grant opposition

Post-grant opposition permits third parties to challenge the validity of a patent after it has been granted. This system is crucial for correcting any oversight that may have occurred during the examination process. The opposition must be filed within a specific period after the patent grant, commonly ranging from six to twelve months, depending on the jurisdiction. [1]

Procedures: Similar to pre-grant opposition, the opponent submits a notice outlining the grounds for opposition with supporting evidence. The patentee is notified and can respond or amend the patent claims. The patent office evaluates the arguments and evidence presented by both parties to determine whether the patent should be maintained, amended, or revoked.

Rationale and objectives

The opposition system is integral to the patent framework for several reasons: [1]

Procedural aspects and variations

While the fundamental purpose of opposition systems is consistent, their implementation can vary significantly across jurisdictions:

Advantages of opposition proceedings

Opposition proceedings offer several benefits over judicial revocation processes: [1]

Challenges and considerations

Implementing an effective opposition system involves balancing several factors: [1]

In addition to opposition proceedings, several other mechanisms enable third parties to influence the patent granting process or challenge patents:

Patent opposition in countries

Each country may have its own reasons to introduce opposition procedures, or not to introduce such procedures, under its national law. Among the countries that have an opposition system, procedural and substantive requirements have some common aspects, but are different in details. Such differences may include: pre-grant or post-grant opposition, entitlement to file an opposition, period for filing an opposition, grounds for an opposition etc. [14]

European Patent Office

In the context of the proceedings at the European Patent Office (EPO), third parties may challenge the validity of a granted European patent by filing a post-grant opposition under the European Patent Convention (EPC). [15] The term for filing an opposition with the EPO is nine months from the publication of the mention of the grant of the European patent in the European Patent Bulletin. [15]

France

Opposition proceedings may be filed against French patents granted since April 1, 2020. [16] [17] The term for filing an opposition with the National Institute of Industrial Property (INPI) is nine months from the grant of the French patent. [16] An opposition may be filed by a strawman. [17] [18]

United States

Under United States patent law, an opposition proceeding is called a reexamination. Post-grant review provisions of the new patent law may affect a potential patent infringement defendant's strategies in filing a declaratory judgment action. Subsequent to the Leahy–Smith America Invents Act (2011), any third party can challenge the validity of an issued patent using either post-grant review under 35 U.S.C. § 321 or inter partes review under 35 U.S.C. § 311. Both proceedings became effective September 16, 2012. [19]

See also

Sources

Definition of Free Cultural Works logo notext.svg  This article incorporates text from a free content work.Licensed under CC-BY-4.0.Text taken from Opposition Systems ,WIPO.

References

  1. 1 2 3 4 5 6 7 "Opposition Systems". www.wipo.int. Retrieved 2024-10-14.
  2. Bose, Abanti (2021-05-25). "Patent pre-grant and post-grant opposition procedure in India vs. re-examination in the US". iPleaders. Retrieved 2024-10-14.
  3. SpicyIP (2024-03-13). "Workshop on Patent Oppositions in the Pharmaceutical Field [Kochi, April 26-30]". SpicyIP. Retrieved 2024-10-14.
  4. Hoock, Christoph; Brown, Andrew (2020-06-01). "Early Certainty in patent cases involving by opposition proceedings". World Patent Information. 61: 101948. Bibcode:2020WPatI..6101948H. doi:10.1016/j.wpi.2020.101948. ISSN   0172-2190.
  5. 1 2 "Comparison of opposition proceedings at the EPO and revocation actions at the UPC – advantages and disadvantages". JUVE Patent. Retrieved 2024-10-14.
  6. A study of patent opposition system (PDF). ISBN   978-81-957-449-1-6.{{cite book}}: |website= ignored (help)
  7. "New means of opposing French patents". www.marks-clerk.com. Retrieved 2024-10-14.
  8. D'Agostino, Lorena M.; Tiraboschi, Lorenzo; Torrisi, Salvatore (2023-06-01). "European patent opposition outcomes in biotechnology". World Patent Information. 73: 102185. Bibcode:2023WPatI..7302185D. doi:10.1016/j.wpi.2023.102185. hdl: 10281/407895 . ISSN   0172-2190.
  9. "Patent Harmonization and International Treaties". January 2024. ISSN   2710-4958.
  10. "Submission of Information by Third Parties". www.wipo.int. Retrieved 2024-10-14.
  11. "Re-examination Systems". www.wipo.int. Retrieved 2024-10-14.
  12. "Administrative Revocation and Invalidation Mechanisms". www.wipo.int. Retrieved 2024-10-14.
  13. "An International Guide to Patent Case Management for Judges". www.wipo.int. Retrieved 2024-10-14.
  14. "Standing Committee on the Law of Patents. Seventeenth session. Geneva, December 5 to 9, 2011" (PDF). wipo.int. 2011.
  15. 1 2 Article 99 EPC
  16. 1 2 "Loi PACTE : nouvelle procédure d'opposition brevet" [PACTE Act: new patent opposition proceedings]. inpi.fr. INPI. 17 February 2020. Retrieved 22 February 2020.
  17. 1 2 Teyssèdre, Laurent (23 February 2022). "1 an d'opposition aux brevets français" [1 year of opposition to French patents]. Le Blog du Droit Européen des Brevets (in French). Retrieved 27 February 2022.
  18. Denison, Katie (2021-06-10). "Filing an opposition as a straw man: the pros and cons". Mathys & Squire LLP. Retrieved 2024-10-14.
  19. Andrews Kurth LLP (January 23, 2012). "Post-Grant Review Aspect of New Patent Law". The National Law Review. Retrieved September 14, 2012.