POST GRANT OPPOSITION PROCEEDING

New Patent Reform legislation has been introduced in the Senate by Senators Hatch and Leahy.  Some commentators have dismissed the proposed legislation as “Dead on Arrival”.  That may be true.  However the newly introduced legislation shares many of the reform objectives that were contained in the House bill introduced by Representative Smith in 2005.   

For example, the 2005 bill contained detailed provisions for a “post grant” procedure that would operate as an opposition proceeding to a granted patent.  If the USPTO determined that the “Opposition Request” had merit, the USPTO would make a determination that a substantial question of patentability exists.  The opposing party could invalidate the patent upon a showing of the preponderance of evidence. 

In the 2006 draft, any third party could initiate a petition for cancellation of an issued patent.  The petition would need to be filed within 12 months after patent issue.  (Contrast 9 months in the 2005 draft).  Like the 2005 draft, the 2006 legislation stipulates the proceeding be resolved within 12 months.  

Like the 2005 draft, the 2006 legislation requires the USPTO to first make a determination of the merit of the petition. 

The process can invalidate all or some of the claims of the issued patent.  The patent holder may propose amended claims.   

My point is that post grant opposition proceedings are likely to become reality in the near future.  I can only speculate of the impact these proceedings will have on the already abbreviated examination of applications.

August 18, 2006