The America Invents Act creates two new methods for third parties to challenge issued patents in the U.S. Patent and Trademark Office (USPTO): inter partes review (IPR) and post-grant review (PGR). As explained in our earlier article, “IPR and PGR – They are NOT ‘American Oppositions’,” IPR and PGR differ markedly from opposition proceedings in other jurisdictions such as in the European Patent Office (EPO). Compared to EPO oppositions, IPR and PGR are much more expensive and proceed on a much faster schedule. Thus, the most successful IPR and PGR challengers will be highly prepared and focused from the outset.
In spite of those and other differences, challengers should consider coordinating an EPO opposition with a USPTO post-grant proceeding. For example, suppose a challenger has already opposed a patent in the EPO or USPTO. If the claim scope of the U.S. and European patents is similar, then the same novelty and inventive step arguments may apply and much of the leg-work needed for a successful petition in the other jurisdiction is complete. The resulting cost savings and efficiencies provide twice the bang for the buck. From the patentee standpoint, coordinating multiple post-grant proceedings is vital from both a cost saving and strategic perspective. Consistent arguments and positions across jurisdictions is key for successful future enforcement actions.
Coordinating oppositions with U.S. post-grant proceedings may be especially helpful in clearing an important freedom to operate obstacle. A challenger can now consider whether one or both venues provides the best strategic option. For example, because an IPR or PGR is intended to take no more than 1.5 years to complete, the challenger may obtain some relatively quick certainty on whether it is safe to operate. Alternatively, an EPO opposition is relatively inexpensive. Thus, a first strike at the EPO, with the threat of a possible IPR or PGR looming, may aid in settling an ongoing dispute, i.e. the patentee may wish to avoid an IPR or PGR challenge because of its high cost and short response deadlines. Thus, even merely threatening to file a PGR or IPR after institution of an opposition at the EPO might aid in settlement.
In summary, companies should consider how to leverage the relationship between EPO oppositions and U.S. post-grant challenges in order to find the most effective and cost efficient solutions.