2014 FICPI ABC MEETING

Welcome!

Topic 1

Mission Critical: When and How to Challenge Third Party Patent Applications

Moderator: Danny Huntington

Panelists: Brett Slaney

Richard Gilly

Arnie Clarke

Peter Huntsman

Is that all you can do?:

Third Party Patent Challenges at CIPO

Brett Slaney February 27, 2014

Pre-Grant Options

• Filing Prior Art – Any person may file prior art (Section 34.1 of Patent Act)

– Must be accompanied by explanation of why art is pertinent

– Provider is notified that filing has been received, but not informed of any action taken thereon

– The applicant is notified that submission has been made

– Prior art only considered after a request for examination has been received

– Normal prosecution continues, unless sufficient grounds are presented to warrant action

Pre-Grant Options (con..)

• Protests – Any written communication protesting against the

granting of a patent is acknowledged by Commissioner (Section 10 of Patent Act)

– The protestor will not be informed regarding action taken nor will Examiner discuss prosecution with protestor

– Multiple protests may be submitted by same party

– Protest only considered after a request for examination has been received

– Meant to provide an adequate alternative remedy that should be exhausted by a competitor before seeking judicial review1

1 Pharmascience Inc. v. Commissioner of Patents et al. (1998), 85 C.P.R. (3d) 59 at 66, affirmed 5 C. P. R. (4th) 428

Pre-Grant Options (con..)

• Affidavits – Can be filed to raise serious reasons why a patent

should not be granted

– Allegations should be supported with dated material or give details to locate such material

– Allegations not backed by dated documentation will usually not be sufficient reason to not grant patent

Post-Grant Options

• Re-Examination – Any person may request re-examination of any claim or

claims of a patent at any time during the life of the patent on the basis of prior art only

– Prior art shall consist of patents, published applications, and printed publications only

– The request, including copies of prior art must be provided in duplicate if requester is not patentee

– The requester must set forth pertinence of the prior art and manner of applying to claim(s) at issue

– Requires a modest fee of 2,000 CAD

– Completed within 12 months

– Third parties shut out of proceedings

What is missing?

• More flexibility in re-examination proceedings (e.g. what grounds can be raised, type of prior art, etc.)

• Right for 3rd parties to appeal re-exam refusal and/or decision

• Inter partes procedure (e.g., opposition) – Something more extensive than re-examination but

much less expensive than an impeachment or invalidity defense to infringement allegation

– Balancing act – opponents vs. patentees

Thank You!

Brett J. Slaney

Partner/Patent Agent

Blake, Cassels & Graydon LLP

416-863-2518

brett.slaney@blakes.com

Some Distinctive Features of the New Inter-Partes Review System in the U.S.

Richard Gilly

FICPI ABC Meeting

February 2014

Introduction: Inter-Partes Review

• Inter-Partes Review (“IPR”) – Overview

• Availability

• When to Seek IPR

• Threshold Showing to Institute IPR

Inter-Partes Review Timeline

Possible Stay of Related Litigation

• Standard for Seeking a Stay

• Stays Are Typically Granted

• CBM stays are more likely

• CBM – Overview and SAP case

PTO vs District court

• Burden of Proof

• Broadest Reasonable Interpretation

• Technical Prowess

Discovery in Inter-Partes Review

• Routine Discovery

• Additional Discovery: 5 Criteria

• Compelled testimony

• Mandatory Initial Disclosures

• Live Testimony

Estoppel

• Against Other PTO proceedings

• Against District Court Litigation

• Case Examples: Mikkelsen Graphic Eng'g, Inc. v. Zund Am.,

Inc., 2012-1472, 2013 WL 4269406 (Fed. Cir. Aug. 16, 2013);

SK hynix Inc. v. Rambus Inc., C-00-20905 RMW, 2013 WL

1915865 (N.D. Cal. May 8, 2013)

Availability of Claim Amendments

• One Motion to Amend, Must Confer with Board

• Amendments as a Deterrent to IPR?

• 1:1 Substitution

• Idle Free v. Bergstrom, IPR2012-00027 (PTAB 2013)

Using Inter-Partes Review Against Parallel

Proceedings

• Fresenius USA, Inc. v. Baxter Int’l, Inc., No. 2012-1334, -1335,

2013 U.S. App. LEXIS 13484 (Fed. Cir. July 2, 2013)

• Fresenius’ Implications for Accused Infringers

• Apotex Inc. v. Alcon Pharmaceuticals Ltd., IPR2013-00012 (PTAB

Mar. 19, 2013) – Using IPR as Leverage

Contact: Richard P. Gilly

Akerman LLP

Intellectual Property Practice Group

750 9th Street, N.W.,Suite 750

Washington, D.C. 20001

202.393.6222

richard.gilly@akerman.com

www.akerman.com

19

Third Party Validity Challenges in

the European Patent Office

Presented by:

Arnie Clarke, Partner, European Patent Attorney

February 2014

• Review the two systems which 3rd parties can use to

challenge validity in the EPO

• Briefly touch on 3rd party observations under Article 115 EPC

• Focus on pros and cons of EPO Opposition system from an

Opponent’s perspective

Overview

• Predominantly pre-grant procedure

• Written submissions

3rd Party Observations – Article 115 EPC

The Good

• Can be filed at any time • Almost exclusively pre-grant, but can be

used post-grant

• Can be filed by anyone

• May be anonymous

• No official fees

• All grounds of invalidity may be raised • Including clarity (Article 84 EPC) may be

raised (if pre-grant)

The Good – 3rd Party Observations

The Bad

• ‘Observer’ is not party to the

proceedings

• Must be in an official EPO language

• Frequently ignored by the EPO

The Bad – 3rd Party Observations

• Post-grant

• Inter-partes

• “Essentially contentious proceedings between parties of equal

standing.” [G9/91]

• Around 5% of European patents are opposed each

year

Oppositions

2008 2009 2010 2011 2012

European patents granted 59,810 52,446 58,108 62,112 65,687

Patents opposed 2,840 2,695 2,766 2,945 2,994

Decisions in opposition cases 1,982 2,314 2,309 2,234 2,021

The Good

• Central revocation/limitation procedure

• Has effect for all designated EPC states

• Good chance of success with little risk

• ~ 40% of opposed patents are revoked

• ~ 30% maintained in amended form

• ~ 15% of oppositions are rejected

• the rest are remitted or lapse

The Good

• Cheap relative to national litigation

• World IP Review study shows that or

randomly selected oppositions that went to

appeal, the total cost over four to six years

ranged from $45,000 to $80,000

• Average national litigation in only one

designated state is ~ $350,000

• Low official fees

• Opposition fee is about $1000

• Heavily subsidised - covers about 5% of the

actual cost of the proceedings to the EPO

The Good

• Very experienced technically qualified

“judges”, especially at the Board of

Appeal level

• Relatively flexible procedure

• Can file an opposition, then do nothing

• Practical approach to late filed evidence

• If you withdraw the Opposition, the EPO

can continue examination of its own

volition

The Good

• No need to rely on new evidence

• Can cite the same art as considered by

Examiner during prosecution

• Can be anonymous

• Straw man

• The parties bear their own costs

• Useful for speculative oppositions

• No cost for withdrawal

The Good

• Primarily written proceedings

• Relatively predictable structure

• Can flush out defences and amendments

at an early stage

• Grounds for opposition broadly reflect

EPC requirements for grant – types of

attack are not substantially limited

• Can file comparative data, affidavits, prior

use evidence

• Procedure completed with a hearing • Usually lasts for one day

• Decision given immediately with written

reasons provided later

The Good

• Decisions of the Opposition Division are

appealable

• Opponent not estopped from challenging

validity again in national proceedings

• Failed opposition is not directly prejudicial to

any subsequent national court proceedings

• A final decision to revoke a European patent

is binding

The Good

• EPO takes a strict approach on

added subject matter issues

• Can lead to inescapable traps

which can be very advantageous

from the point of view of the

Opponent

The Good

The Bad!

• Can be slow compared to national

litigation

• 9 month deadline!

• No discovery

The Bad

• Cannot raise lack of clarity as a

ground of opposition

• Can be raised during amendment

• Complex case law and procedures

• The young and inexperienced can

quickly find themselves in trouble

The Bad

• Allows for Patentee amendment

• Within certain limits

• Can be late in procedure

• on day of hearing!

• Auxiliary Requests

• Patentee usually has a plan B

• Submissions must be in official

EPO language

The Bad

Not Sure?

• Is cheap justice no justice?

• Very popular system due to cost

• But has been criticised by some national judges

• Very little reliance on expert witnesses

• Relevance depends on facts

• But it’s what makes it cheap

• Examiner bias?

• The granting examiner is one of three Opposition Division members

• efficiency vs bias towards rejecting the opposition?

Not Sure?

• Geographical bias?

• Do patents derived from European originating priority

applications fare better in opposition than those from non-

European origins?

Not Sure?

Any Questions?

Arnie Clarke

Partner

European Patent Attorney

arnie.clarke@gje.com

Tel: +44 20 7655 8500

Gill Jennings & Every LLP

The Broadgate Tower

20 Primrose Street

London, EC2A 2ES

United Kingdom

www.gje.com

CHALLENGING 3rd PARTY

PATENT APPLICATIONS AUSTRALIA

PETER HUNTSMAN

Davies Collison Cave, Partner

FICPI, President of Honour

FICPI ABC MEETING BARBADOS

27 FEBRUARY 2014

45 AUSTRALIA – 3rd PARTY CHALLENGES THE OPTIONS

- SECTION 27 NOTICE TO PATENT OFFICE

- From 18m Publication to Grant

- SECTION 59 OPPOSITION TO GRANT

- Within 3m of Advertisement of Acceptance/Allowance

- SECTION 97 RE-EXAMINATION

- From Grant for 3rd Parties

- BUT From Acceptance/Allowance for Commissioner

AUSTRALIA – 3RD PARTY CHALLENGES S27 NOTICE

- Prior to Grant, but Usually Prior to Acceptance/Allowance

- Letter to Commissioner Detailing Concerns

- Only Possible for Novelty and Inventive Step

- For Inventive Step Need Evidence from Expert re CGK

- Can be Done Incognito

- No Further Involvement After Filing Notice

- Copy Sent to Applicant, but No Action by Applicant Required

- Examiner Considers Notice and Issues Exam Report if Agrees with Relevance

- No Bar on Subsequent 3rd Party Actions

46

AUSTRALIA – 3RD PARTY CHALLENGES OPPOSITION TO GRANT 1

- PROCEDURE - 1

- Simple Notice Of Opposition

- Within 3m of Advertisement of Acceptance/Allowance

- Statement of Grounds and Particulars

- Within 3m of Notice

- Identifies Each Ground (eg Novelty) to be Relied Upon

- Identifies Particulars of Each Ground

- Eg for Novelty Each Piece of Prior Art and Explanation of Relevance

- Opponent’s Evidence in Support

- Within 3m of SOGP

- Statutory Declaration(s) from Expert(s)

- Evidentially Factual Presentation of Case

- Establish CGK

47

AUSTRALIA – 3RD PART CHALLENGES OPPOSITION TO GRANT 2

- PROCEDURE 2

- Applicant’s Evidence in Answer

- Within 3m of EIS being Filed

- Statutory Declaration(s) from Expert(s)

- Evidentially Factual Presentation of Case

- Establish CGK

- Opponent’s Evidence in Reply

- Within 2m of EIA being Filed

- Strictly in Reply to EIA

- Same and/or New Declarants

- Extensions Available, but Very Difficult

- Applicant can Amend Anytime, Opposition Usually On Hold

48

AUSTRALIA – 3RD PARTY CHALLENGES OPPOSITION TO GRANT 3

- PROCEDURE 3

- Hearing

- Usually Within 2-6m of EIR being Filed

- Written Submissions Required

- Arguments Based on Evidence Before IPA Delegate

- Cross-Examination Rare and Not Wanted by IPA

- Usually Over 1-2 Days

- Decision

- Usually Within 3-6m

- Opposition can be Partially Successful

- Applicant may be Invited to Amend to Overcome

- Appeal

- To Federal Court, Within 21 Days

- On Decided Claims, any Amendment Put On Hold

49

AUSTRALIA – 3RD PARTY CHALLENGES OPPOSITION TO GRANT 4

- GROUNDS and PARTICULARS

- Applicant not Entitled

- Not Patentable

- Not a Manner of Manufacture

- Not Novel or Lacks Inventive Step

- Not Useful – Does not Meet Promise of Specification

- Secretly Used In Australia

- Human Beings or Process for Their Generation

- Does Not Satisfy Section 40(2) or (3)

- Invention not Sufficiently Disclosed

- Best Method not Disclosed

- Claims

- Not Clear and Succinct

- Not Supported by Disclosure

50

AUSTRALIA – 3RD PARTY CHALLENGES OPPOSITION TO GRANT 5

- ISSUES

- Opponent Involved Throughout

- No Interest Required, so can be Incognito

- Time Pressures

- Expensive – US$50,000 - 200,000

- Difficulty of Getting Independent Evidence in Time Available

- Declarants Not to be Led

- Amendment can Itself be Opposed – Simplified Procedure

- Basis of Decision Where Doubt is Balance of Probabilities

- Opposition Rarely Completely Successful

- Instead May Serve to Strengthen Resultant Patent

- No Bar on Opponent Seeking Revocation After Grant

51

AUSTRALIA – 3RD PARTY CHALLENGES RE-EXAMINATION?

- Not Available to 3rd Party Until After Grant

- But, Information may be Provided to IPA Between Acceptance and Grant, who may Then Initiate Re-Exam’n

- Relatively Broad Grounds

- Not Patentable, as for Opposition Except Prior Secret Use

- Section 40(2) or (3)

- Difficulty of Establishing Lack of Inventive Step, as above

- Can be Done Incognito

- 3rd Party not Involved after Providing Information

- Examiner Issues Exam Report to Applicant

- Relatively Cheap

52

AUSTRALIA – 3RD PARTY CHALLENGES PROS & CONS

- ALL

- Difficulty of Establishing Lack of Inventive Step

- SECTION 27 NOTICE

- Limited Grounds

- No Further Involvement After Filing Notice

- Relatively Cheap

- OPPOSITION

- Broad Grounds

- Remain Involved, but Time Pressures

- Length of Process and Substantial Cost

- May Simply Serve to Strengthen Resultant Patent

- RE-EXAMINATION

- 3rd Party Cannot Force Prior to Grant

- Broader Grounds, but Otherwise as S27 Notice

53

THANK YOU Questions?

PETER HUNTSMAN

phuntsman@davies.com.au

If Only CIPO Would Ask Us:

What Would a Perfect Third Party Challenge

System Look Like?

Brett Slaney February 27, 2014

What We Would Like to See (as Opponent)

• Inter partes (at least as an option)

– Both pre-grant and post-grant mechanisms

• Ability to raise any grounds for invalidation

• No deadline to file challenge

• Some form of discovery

• Ability to use expert witnesses

• Ability to present oral arguments

• Ability to appeal

• Result not prejudicial

• Technically trained board/judges/examiners

• Low cost

• Quick

What We Would Like to See

(as Applicant/Patentee)

• Limited grounds for opposing application/patent

• Ex partes procedure only

• Certainty - deadline to file challenge

• Ability to use expert witnesses

• Ability to appeal

• Technically trained board/judges/examiners

• Result is prejudicial

• Relatively high cost – avoids frivolous claims

• Quick

Is There a Perfect System?

• Should haves: – Cost high enough to discourage frivolous actions, but

significantly lower than using the courts

– Technically trained board/judges/examiner

– At least one inter partes option

– Relatively quick

• Debatable: – Representation – lawyers only?

– Discovery

– Experts

– Oral component

– Effect on judicial proceedings

Thank You!

Brett J. Slaney

Partner/Patent Agent

Blake, Cassels & Graydon LLP

416-863-2518

brett.slaney@blakes.com