2014 FICPI ABC MEETING · Brett Slaney February 27, 2014 . Pre-Grant Options •Filing Prior Art...
Transcript of 2014 FICPI ABC MEETING · Brett Slaney February 27, 2014 . Pre-Grant Options •Filing Prior Art...
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
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
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
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
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