Will the America Invents Act Post-Grant Review Improve the Quality of Patents? A Comparison with the European Patent Office Opposition

After six years of attempts to reform its sixty year old patent law, in September of 2011 the United States enacted The Leahy-Smith America Invents Act. The new law ushers in significant changes in U.S. patent law and practice, including moving the U.S. system towards alignment with the rest of the world by granting patents to the first inventor to file a successful patent application. It also institutes procedures for submitting patent validity questions back to the U.S. Patent and Trademark Office (PTO), including an entirely new system of post-grant opposition. Although a system of post-grant opposition has long been available in the European Patent Office, this marks a sea change in the U.S. Approximately 4% of all EPO patents are subjected to the process and studies suggests the more valuable or technologically important a patent the more likely it will trigger an opposition. Post-grant opposition has 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. Proponents argue allowing a patentee’s competitors to intervene will improve the quality of patents granted while educating U.S. patent examiners, particularly on issues concerning emerging technologies, an important function given criticisms leveled at the U.S. PTO concerning quality of patents granted. This chapter examines the proposed post-grant opposition processes in light of practice and experience within the European patent system. The paper focuses primarily on approaches to novelty and non-obviousness (inventive step) from the standpoint of EPO practice in oppositions. The author contends that post-grant oppositions could greatly improve the quality of business method and software patents, particularly if the U.S. follows European practices regarding prior art as part of the analysis