Lesson Learned: Contrasting the Canadian and European Patent Experiences with Key AIA Provisions

Spring 2012

By: Deirdre E. Sanders and Alexander Adam, Ph.D

Boston Patent Law Association Newsletter

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The recently-amended Leahy-Smith America Invents Act (“AIA”) will bring about significant reform to the U.S. patent system, including changes to the conditions for patentability and the creation of a new third-party post-grant review system.  On November 30, 2011, the BPLA International and Foreign Practice Committee sponsored a breakfast seminar on how Canadian and European patent practices compare to these AIA provisions.  Committee co-chair Deirdre Sanders introduced the speakers, Hélène D’lorio, of Gowling Lafleur Henderson LLP in Montreal, and Bert Oosting, of Hogan Lovells International LLP in Amsterdam.  The speakers offered personal insights into the challenges they face within their respective patent systems, using an effective compare-and-contrast style of presentation.

First Inventor to File under the AIA

Under the AIA, the United States will switch from a “first to invent” to a “first inventor to file” system for patent applications filed on or after March 16, 2013.  In addition to patents and printed publications, prior art can include art in public use, on sale, or available to the public anywhere in the world before the effective filing date of the claimed invention.  However, if an inventor discloses his or her invention and then files an application within the one-year grace period, any third-party disclosure of the claimed subject matter between the inventor’s disclosure and the filing date will not count as prior art.  More details can be found in §3 of the AIA.

Canadian Modified First-to-File System

Ms. D’Iorio explained that Canada has used a modified first-to-file patent system with a one-year grace period for public disclosures since 1989.  She cautioned that an application must be filed in Canada to stop the one-year clock running.  The filing of a PCT application within the grace period meets this requirement because the PCT filing date is deemed to be the Canadian filing date.  Also, because there is no provisional application practice, applicants must file a full application within one year of public disclosure and the application must fully support the recited claims to meet Canada’s utility requirement.

European Strict First-to-File System

Mr. Oosting stated that Europe has a strict first-to-file system.  Like Canada and the U.S., between different inventors claiming the same invention, the first to file in Europe will be entitled to a patent, barring any exceptions.  Unlike Canada and the U.S., however, Europe has no grace period for public disclosure.

Post-Grant Review Proceedings under the AIA

Beginning on September 16, 2012, post-grant review proceedings will give third parties a new avenue to challenge newly issued patents.  Any person who is not the owner of a patent may file a petition with the USPTO within nine months after the date of grant.  The petition must identify all real parties in interest, each claim being challenged, grounds on which the challenge is based, and evidence that supports the challenge.  It must include all supporting patents, printed publications and affidavits or declarations of supporting evidence and opinions.  The patentee may respond, to a limited extent.  Post-grant review is not authorized unless the Director determines that it is more likely than not that at least one of the claims challenged is unpatentable or that there is a novel or unsettled legal question.  The Director’s determination of whether to institute post-grant review is final and unappealable.  The Patent Trial and Appeal Board conducts the proceedings and makes a final determination, which is appealable, within 12-18 months.  More details can be found in §6 of the AIA.

European Opposition Proceedings

Similar to the AIA post-grant review procedure, the European post-grant opposition must be lodged before the Opposition Division of the EPO within nine months after grant of a patent.  However, unlike the AIA, the identity of the real party in interest does not need to be disclosed.  Thus, Mr. Oosting said, the use of a “straw man” to file an opposition is not uncommon.  Grounds for opposition include added matter/extension of subject matter, sufficiency/enablement, support/clarity (for amendments filed during the op-position), novelty/priority, and inventive step.  Unlike the AIA, there is no threshold (e.g., “more likely than not”) that must be met before a European opposition can proceed.

Although the EPO may take evidence from witnesses or experts during a special witness hearing session, it tends to disfavor this procedure.  There being no discovery or depositions, all evidence must be found within documents.  Mr. Oosting listed several strengths of European oppositions, noting that they are relatively inexpensive and, if successful, result in revocation of a European patent for all designated Contracting States.  He also noted that this harmonized revocation of a European patent for all designated Contracting States.  He also noted that this harmonized approach for revocation obviates the need for separate national actions.

Canadian Reexamination Proceedings

In contrast to Europe and the U.S., Canada has no opposition practice.  However, it does have a reexamination procedure.  According to Ms. D’Iorio, reexamination in Canada is a quick and inexpensive procedure that can lead to the cancellation of a patent.  Any person can request reexamination at any time after issuance of a patent.  Even the patentee can request reexamination, for example, when the scope of the granted patent is too broad.  The reexamination procedure is entirely in writing.  Grounds for reexamination only include novelty and obviousness based on prior art patents, patent applications open for public inspection, and printed publications.  The request, which must set forth the pertinence of the prior art, is sent to the Reexamination Board, which has up to three months to determine whether it raises a substantial question of patentability.  If the Board determines that no substantial new question of patentability has been raised, its decision is final and not subject to appeal.  However, if the Board determines that a substantial new question of patentability is raised, it will notify the patentee who must then respond within three months.  The patentee can amend or add new claims, as long as the claim scope is not broadened.  The requester cannot participate in the reexamination proceeding beyond the initial request.

Looking Forward

Strategic management of a multinational patent portfolio will require consideration of these patentability factors and post-grant review procedures, including the distinctions of each jurisdiction’s requirements, standards and mechanisms, in order to maximize the value of the patent estate.  For more information, including copies of the seminar materials, please contact Deirdre Sanders at Deirdre.Sanders@hbsr.com.

About

Spring 2012

By: Deirdre E. Sanders and Alexander Adam, Ph.D

Boston Patent Law Association Newsletter

View Link

The recently-amended Leahy-Smith America Invents Act (“AIA”) will bring about significant reform to the U.S. patent system, including changes to the conditions for patentability and the creation of a new third-party post-grant review system.  On November 30, 2011, the BPLA International and Foreign Practice Committee sponsored a breakfast seminar on how Canadian and European patent practices compare to these AIA provisions.  Committee co-chair Deirdre Sanders introduced the speakers, Hélène D’lorio, of Gowling Lafleur Henderson LLP in Montreal, and Bert Oosting, of Hogan Lovells International LLP in Amsterdam.  The speakers offered personal insights into the challenges they face within their respective patent systems, using an effective compare-and-contrast style of presentation.

First Inventor to File under the AIA

Under the AIA, the United States will switch from a “first to invent” to a “first inventor to file” system for patent applications filed on or after March 16, 2013.  In addition to patents and printed publications, prior art can include art in public use, on sale, or available to the public anywhere in the world before the effective filing date of the claimed invention.  However, if an inventor discloses his or her invention and then files an application within the one-year grace period, any third-party disclosure of the claimed subject matter between the inventor’s disclosure and the filing date will not count as prior art.  More details can be found in §3 of the AIA.

Canadian Modified First-to-File System

Ms. D’Iorio explained that Canada has used a modified first-to-file patent system with a one-year grace period for public disclosures since 1989.  She cautioned that an application must be filed in Canada to stop the one-year clock running.  The filing of a PCT application within the grace period meets this requirement because the PCT filing date is deemed to be the Canadian filing date.  Also, because there is no provisional application practice, applicants must file a full application within one year of public disclosure and the application must fully support the recited claims to meet Canada’s utility requirement.

European Strict First-to-File System

Mr. Oosting stated that Europe has a strict first-to-file system.  Like Canada and the U.S., between different inventors claiming the same invention, the first to file in Europe will be entitled to a patent, barring any exceptions.  Unlike Canada and the U.S., however, Europe has no grace period for public disclosure.

Post-Grant Review Proceedings under the AIA

Beginning on September 16, 2012, post-grant review proceedings will give third parties a new avenue to challenge newly issued patents.  Any person who is not the owner of a patent may file a petition with the USPTO within nine months after the date of grant.  The petition must identify all real parties in interest, each claim being challenged, grounds on which the challenge is based, and evidence that supports the challenge.  It must include all supporting patents, printed publications and affidavits or declarations of supporting evidence and opinions.  The patentee may respond, to a limited extent.  Post-grant review is not authorized unless the Director determines that it is more likely than not that at least one of the claims challenged is unpatentable or that there is a novel or unsettled legal question.  The Director’s determination of whether to institute post-grant review is final and unappealable.  The Patent Trial and Appeal Board conducts the proceedings and makes a final determination, which is appealable, within 12-18 months.  More details can be found in §6 of the AIA.

European Opposition Proceedings

Similar to the AIA post-grant review procedure, the European post-grant opposition must be lodged before the Opposition Division of the EPO within nine months after grant of a patent.  However, unlike the AIA, the identity of the real party in interest does not need to be disclosed.  Thus, Mr. Oosting said, the use of a “straw man” to file an opposition is not uncommon.  Grounds for opposition include added matter/extension of subject matter, sufficiency/enablement, support/clarity (for amendments filed during the op-position), novelty/priority, and inventive step.  Unlike the AIA, there is no threshold (e.g., “more likely than not”) that must be met before a European opposition can proceed.

Although the EPO may take evidence from witnesses or experts during a special witness hearing session, it tends to disfavor this procedure.  There being no discovery or depositions, all evidence must be found within documents.  Mr. Oosting listed several strengths of European oppositions, noting that they are relatively inexpensive and, if successful, result in revocation of a European patent for all designated Contracting States.  He also noted that this harmonized revocation of a European patent for all designated Contracting States.  He also noted that this harmonized approach for revocation obviates the need for separate national actions.

Canadian Reexamination Proceedings

In contrast to Europe and the U.S., Canada has no opposition practice.  However, it does have a reexamination procedure.  According to Ms. D’Iorio, reexamination in Canada is a quick and inexpensive procedure that can lead to the cancellation of a patent.  Any person can request reexamination at any time after issuance of a patent.  Even the patentee can request reexamination, for example, when the scope of the granted patent is too broad.  The reexamination procedure is entirely in writing.  Grounds for reexamination only include novelty and obviousness based on prior art patents, patent applications open for public inspection, and printed publications.  The request, which must set forth the pertinence of the prior art, is sent to the Reexamination Board, which has up to three months to determine whether it raises a substantial question of patentability.  If the Board determines that no substantial new question of patentability has been raised, its decision is final and not subject to appeal.  However, if the Board determines that a substantial new question of patentability is raised, it will notify the patentee who must then respond within three months.  The patentee can amend or add new claims, as long as the claim scope is not broadened.  The requester cannot participate in the reexamination proceeding beyond the initial request.

Looking Forward

Strategic management of a multinational patent portfolio will require consideration of these patentability factors and post-grant review procedures, including the distinctions of each jurisdiction’s requirements, standards and mechanisms, in order to maximize the value of the patent estate.  For more information, including copies of the seminar materials, please contact Deirdre Sanders at Deirdre.Sanders@hbsr.com.

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