Improving Patent Quality Through Post-Grant Claim Amendments: A Comparison of European Opposition Proceedings and U.S. Post-Grant Proceedings

IntroductionPresident Obama signed the Leahy-Smith America Invents Act ("AIA") into law on September 16, 2011.1 The AIA introduced the most significant change to U.S. patent law in over half of a century.2 One of the AIA's most meaningful changes was the creation of new post-grant patent-challenge procedures at the United States Patent and Trademark Office ("USPTO").3 These new administrative procedures allow third parties to contest the validity of issued patents without going to federal court.4 A desire to strengthen U.S. patents5 and defend against nonpracticing entities6-that is a patent holder "that [does] not practice the invention, but instead licenses or asserts its patents to generate revenue"-drove the introduction of U.S. post-grant proceedings.7 The AIA also sought to achieve uniformity with other patent systems throughout the world, which have embraced post-grant patent-challenge procedures for several years.8The AIA's post-grant proceedings offer several advantages when compared to U.S. district court litigation, such as a shorter timeline and the involvement of technical experts. The Patent Trial and Appeal Board ("Board") of the USPTO conducts the proceedings. Made up of administrative patent judges with legal and technical expertise, the panel is well suited to navigate the complex scientific concepts embodied in patents.9 The AIA procedures serve as quick, cost-effective alternatives to district court litigation over patent validity.10 District court patent validity judgments generally either invalidate patent claims or uphold patent claims as "not invalid."11 In contrast, the new administrative proceedings offer a third outcome: upholding patent claims in an amended form.12 This possibility of amendment enables fine-tuning of patents that will make them more resilient to future challenges. The elimination of invalid patents and the fine-tuning of valid patents will strengthen the U.S. patent pool by increasing the average quality of patents.The AIA permits patent owners to attempt to amend potentially invalid patent claims rather than having the Board invalidate the claims. However, outcomes from the first three years of the new proceedings suggest that the opportunity to amend is extremely limited.13 Although the AIA contemplates multiple chances at amendment, the Board rarely affords patent owners more than one opportunity in practice.14 The number of procedural requirements that a patent owner must meet before the Board will consider the technical merits of a proposed claim further limits a patent owner's ability to amend patent claims.15 Patent owners are also subject to an unfavorable claim construction and high evidentiary burden in motions to amend.16 As of November 2015, the Board has only granted five motions to amend.17The European Patent Office conducts comparable post-grant patent validity proceedings called "opposition proceedings," but the opportunity to amend patent claims is greater in the European Patent Office than in the USPTO. The Implementing Regulations for European opposition proceedings permit patent owners to make amendments to the description, claims, and drawings.18 As in the United States, however, new matter that the disclosure does not support is prohibited.19 Amendments in European opposition proceedings often take the form of a main request and one or more secondary requests, called "auxiliary requests," to be considered in the alternative.20Both U.S. post-grant proceedings and European opposition proceedings require patent owners to prove the patentability of proposed amended claims. But European proceedings are limited to a showing of patentability over prior art that is already cited in the proceeding.21 In contrast, patent holders in the United States must show patentability over all prior art known to the patent owner.22 Finally, European opposition proceedings are conducted on a much more flexible timeline than U.S. post-grant proceedings, and this timeline favors substantive examination of proposed amendments over adherence to rigid procedural rules. …