Chief Judge Michel Questions Post-Grant Opposition Proceedings

Proposed Opposition Proceedings

Most of the patent reform bills that have been introduced in Congress during the last several years include a provision for a post-grant opposition proceeding.  After a patent is issued by the PTO, it could be challenged by a third party in a proceeding that takes place at the PTO, rather than in Federal court.  Such procedures are already in place in Europe and a few other jurisdictions.

The thought is that proceedings within the PTO are desirable because they would be cheaper than a going to court, they proceed more quickly than lawsuits in many jurisdictions, and there wouldn’t necessarily be a case-or-controversy requirement.  This means that a potential infringer could bring the opposition proceeding without waiting for the threat of a lawsuit by the patentee.

Last week, Paul R. Michel, chief judge of the Federal Circuit, spoke on at a forum on patents at the Federal Trade Commission.  Judge Michel questioned whether these types of proceedings would even work in the PTO.  He wondered whether the administrative judges are qualified and trained to handle discovery and cross-examination procedures.  Are the ALJs able to make factual findings and run a trial?  Perhaps oppositions will not be the boon to solving the perceived patent litigation problem in this country.  It is worth noting that Judge Michel does not perceive such a problem, as he notes that only a very small percentage of patents are litigated each year and a smaller percentage that proceed all the way to an invalidity verdict.

Inter Partes Reexamination

Judge Michel’s point is bolstered when you look to inter partes reexaminations.  Inter partes reexamination is a type of proceeding where a third party can participate at the PTO in a reexamination proceeding.  The challenger to the patent raises a new question of patentability and can then participate by filing comments and arguments in response to the patentee’s arguments.

Inter partes reexamination is still a relatively new procedure, but it has not been very widely utilized.  Shortcomings cited include the fact that the challenger is estopped from challenging the patent again in Federal court on any prior art cited during the reexamination proceeding and the lack of appeal option by the challenger.  The latter shortcoming was rectified when challengers were given the right to appeal.  In the five years since challengers were given the right to appeal, not a single appeal on the merits of a case has been decided by the PTO.

Questions that are worth asking before implementing an opposition procedure:

  • Is the PTO really equipped to handle a load of mini-patent trials?
  • Are ALJs equipped to conduct such trials?  Could they handle discovery, cross-examination, and factual finding?
  • Would opposition procedures be utilized more widely than inter partes reexamination?
  • Would oppositions really help with perceived problems with patent litigation in the US?

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