PROPOSED PATENT OPPOSITION PROCEDURE

Rev June 23, 2005

David McEwing

The proposed legislation includes a new chapter to be added to the Federal Statute and is set forth is Section 9, entitled “Post-grant procedures.”  The highlights of the proposed Patent Office opposition procedure are described below.

·        A third party “Opposition Request” may be filed within 9 months of the grant of patent or a re-issue patent.  An Opposition Request may also be filed within 6 months of receiving a notice from a patent owner alleging infringement.  (These filing periods are different from current re-examination procedures.)

·        The Opposition Request must identify “with particularity” each claim or issue of invalidity constituting the basis of the opposition.  The request is to include supporting patents and printed publications.  It may include “other factual evidence and expert opinions”.  (This scope of permitted evidence appears broader than current re-examination practice.  Note affidavits under §131 and 132 are permitted.)

·        The issues of invalidity may include double patenting as well as any requirement of patentability under 35 USC §§ 101, 102, 103, 112 and 251(d).  (This would appear much broader than the permitted scope of re-examination.  Note current re-examination practice excludes consideration of issues of prior use or sale, inventorship, §101, §112, fraud, etc.  See MPEP §2617.)

·        A copy of the Opposition Request must be provided to the patent owner.

·        The USPTO makes a determination whether “a substantial question of patentability exists” as to at least one claim and without any input from the patent owner.  

·        If the USPTO determines there is an issue, an opposition proceeding is initiated and the opposer and the patent owner are notified.

·        The party initiating the opposition is a party to the proceeding.

·        The patent owner now has an opportunity to respond to the opposer’s Opposition Request.  This response may include amendments to the claims. 

·        Limited discovery is conducted.  Discovery appears to be limited to depositions crossing examining the declarants, etc.  (In view of the apparent scope permitted in the existing draft for requesting opposition, this limited discovery is surprising.  It is however more discovery than permitted in re-examination procedure.)

·        The opposition is determined by a panel of 3 administrative patent judges.  The panel may conduct oral hearings, including the examination of witnesses.   

·        The opposition is supposed to be concluded within one year of the date the USPTO determined there was a “substantial issue”.  (This appears to be a compressed time frame in view of the scope of issues that presumably may be addressed.)  

·        The written decision of the panel is to be based “on the broadest reasonable construction of the claim” and the opposer has the burden of proof by the preponderance of evidence.  The determination utilizes the prosecution history as well as the offered evidence. 

·        Although the identity of the opposer may be kept secret in some circumstances, the opposer is defined to include any “real party in interest or their successors in interest”.  

·        The opposition will not be terminated by settlement of the parties unless and “until a true copy of the agreement or understanding, including any such collateral agreements, has been filed in the Office.”  (This appears to track existing Interference practice.  See 35 USC §135(c)(1).)

·        The institution of an opposition proceeding precludes the opposer or real party in interest from later bringing a request for re-examination on the same claim or issue.

·        As currently drafted, the USPTO cannot initiate an opposition proceeding until the end of the 9 month or 6 month window.  The patent owner, however, has notice of the Opposition Request.  If the patent owner files an infringement suit prior to the end of the 9 month or 6 month window, the opposition must be stayed.