Will The America Invents Act Post-Grant Review Improve The Quality Of Patents? A Comparison with the European Patent Office Opposition
Ethics and Business Law; Finance
Date of this version
America Invents Act, patent, post-grant review, European Patent Convention
After years attempting to reform its sixty-year old patent law, in September 2011 the United States enacted the Leahy-Smith America Invents Act. Significant among the changes are a number of new trial like proceedings through which third parties may challenge patentability at the U.S. Patent and Trademark office once the patent has issued. This chapter focuses on post-grant review, the broadest of the proceedings that provide an early opportunity to challenge patents. Post-grant review is meant to provide an efficient and less expensive alternative to litigation and to improve the overall quality of patents issues in the U.S. Post issuance review systems have long been debated in the U.S. in academic, legal and business circles as a way to reduce the incidence of invalid or poor quality patents in a more cost efficient manner. Advocates have looked to the European Patent Office which for almost four decades has decided post grant oppositions under the European Patent Convention. The America Invents Act incorporates features of the European opposition into post-grant review, including a nine month window for instituting and action and broad grounds to request revocation that mirror those used in litigation. This chapter explores some of the substantial differences that will make post-grant review in the U.S. a less effective tool for improving the quality of patent than European opposition.
THE CHANGING FACE OF AMERICAN PATENT LAW AND ITS IMPACT ON BUSINESS (DANIEL R. CAHOY & LYNDA J. Oswald, eds., Edward Elgar Publishing Ltd., 2013)