Improving patent quality through post-grant claim amendments: a comparison of European opposition proceedings and U.S. post-grant proceedings.

• Author: Turchyn, Jennifer R.
• Position: NOTE

Congress enacted the Leahy-Smith America Invents Act to encourage innovation, strengthen U.S. patents, and achieve greater uniformity with foreign patent systems. The America Invents Act introduced two new post-grant patent validity proceedings: inter partes review and post-grant review. The new U.S. proceedings are similar to European opposition proceedings, but there are significant differences in the extent of the patent owner's ability to amend claims, the patent's claim construction, the patent owner's evidentiary burden, and the procedural requirements. The U.S. proceedings result in a very limited opportunity for amendment and a high percentage of invalidated patents. In contrast, European opposition proceedings are generally more conducive to upholding patents, whether in original or amended form. The current U.S. practice for amending claims in post-grant proceedings should be changed to both achieve balance between claim vitality and extent of opportunity to amend, and to serve the America Invents Act's goals of strengthening patents and encouraging innovation. A full adoption of the European opposition claim amendment practice, particularly the claim construction standard and expansive opportunity for amendment, would fail to balance claim vitality and ease of amendment, favor patent owners, and disserve the goals of the America Invents Act. This Note nevertheless advocates for adoption of certain European characteristics to improve U.S. post-grant proceedings.

TABLE OF CONTENTS INTRODUCTION I. THE LANDSCAPE OF PATENT CLAIM AMENDMENTS LEADING UP TO ENACTMENT OF THE AMERICA INVENTS ACT A. Patent Claim Amendments Prior to the America Invents Act B. Background and Legislative History of the America Invents Act II. A COMPARISON OF CLAIM AMENDMENTS IN POST-GRANT PATENT VALIDITY PROCEEDINGS IN EUROPE AND THE UNITED STATES A. Patent Owners in the United States Have a More Limited Opportunity to Amend Patent Claims in Post-Grant Proceedings than Patent Owners in European Opposition Proceedings B. The Claim Construction Standard in The United States Is More Likely to Result in Invalidation of Patent Claims than the European Standard C. Patent Owners in U.S. Post-Grant Proceedings Are Subject to a More Onerous Evidentiary Burden than Patent Owners in European Opposition Proceedings D. U.S. Procedural Requirements Are More Burdensome than European Procedural Requirements III. SOMETHING NEEDS TO CHANGE: WHY THE U.S. APPROACH IS NOT WORKING A. Balancing Ease of Claim Invalidation with Opportunity for Amendment B. Serving the Goals of the America Invents Act IV. A NEW WAY UNDER THE AIA: WOULD EUROPE'S APPROACH WORK FOR THE UNITED STATES? A. Europe's Approach Is Unsuitable for the United States B. A Way Forward in the United States CONCLUSION INTRODUCTION

President 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. patents (5) and defend against nonpracticing entities (6)--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. (8)

The 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. (17)

The 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. (20)

Both 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. (23) Opposition proceedings are common; about 5.5 percent of all granted patents are eventually challenged. (24) And about one third of opposed patents are amended during European opposition proceedings. (25)

Although the United States was previously reluctant to adopt a European-style mechanism for third parties to contest patent validity, (26) resistance has decreased over time. U.S. patent attorneys previously viewed European opposition proceedings as antipatent, fearing that the proceedings resulted in the harassment of patent owners (27) and left the patent owners believing that the proceedings were "time and money-consuming nonsense." (28) Nonetheless, Congress recognized that third parties, such as competitors, are often in the best position to discover prior art that would invalidate a patent. Consequently, Congress introduced ex parte reexamination proceedings in 1980 with the hope of strengthening the quality of U.S. patents. (29) In 1999, the United States introduced the inter partes reexamination proceeding to permit some third-party participation in post-grant validity review of patents. (30) After the introduction of patent reform legislation, including postgrant opposition proceedings in 2005, (31) the 2011 AIA finally created the first true U.S. patent opposition proceedings.

The new U.S. post-grant proceedings are popular (32) and have been successful in providing a quick administrative alternative to litigation, but the process of amending claims in these proceedings has been problematic. The Board rarely grants motions to amend in U.S. post-grant proceedings. (33) This limited opportunity for amendment stands in contrast with the historic balance between patent claim vitality and the opportunity to amend claims. Furthermore, the current amendment practice disserves the AIA goals of strengthening patents and stimulating innovation, because it minimizes the opportunity for patent owners to amend claims and discourages inventors from disclosing inventions. European opposition proceedings are similar to U.S. proceedings, (34) and certain aspects of the European proceedings can serve as a model for U.S. claim amendment practice in AIA post-grant proceedings.

This Note contends that the United States could benefit from adopting characteristics of European opposition proceedings, particularly a modified auxiliary request process to increase the opportunity for U.S. patent holders to amend patent claims. Part I provides a summary of patent claim amendment practice prior to the AIA and a background of the AIA's enactment. Part II compares several aspects of claim amendment practice in U.S. post-grant proceedings with the parallel practice in European opposition proceedings to demonstrate that European proceedings are significantly more favorable to patent owners. (35) Part III discusses flaws with the current U.S. approach to claim amendments in AIA post-grant proceedings. Part IV analyzes the suitability of the European approach for the United States and proposes adoption...