This blog presents my informal discussion of the patent opposition proceedings created by the America Invents Act, and provides links to useful sources such as statutory and regulatory history and commentary, as the implementation and understanding of the Act progresses.
Under the elaborate system established by the Act, the U.S. will have 6 different procedures for post-grant opposition of issued patents (derivation and post-grant review proceedings, inter partes review, ex parte reexamination, business method patent review, and interferences), as well as a new pre-grant “protest” procedure. As generally shown in the following chart, multiple post-grant opposition proceedings could be copending, although inter partes review can only be sought after the 9-month window for requesting post-grant review, or the termination of a post-grant review proceeding.
The strategic use of interrelated post-grant proceedings will provide complex and effective avenues for challenging the validity of important U.S. patents, and create a specialist bar of post-grant patent practitioners. Unlike interferences and derivation proceedings, the new post-grant review and inter partes review actions can be filed by anyone, without the necessity of first presenting claims to common subject matter.
Because the statute imposes strict and non-extendable time limits for USPTO decision, oppositions provide a concurrent, parallel path to rapidly challenge the validity of claims asserted in district court litigation, that involves both a lower burden of proof for the challenger, and a broader claim construction in the USPTO. These advantages are countered by the estoppel consequences of an adverse USPTO opposition decision, which can eliminate some or all of the defenses that might be asserted in district court.
The opposition provisions will become effective over a period of years, and during this period of graduated implementation the USPTO will face the challenge of extending the inter partes rules to incorporate and govern the new proceedings, and to resolve conflicts and inconsistencies in the Act.