We recently completed a trip to the European Patent Office (EPO) in Munich, Germany, attending an appeal of an Opposition in front of the Board of Appeal. After having experienced several Opposition proceedings at the EPO, I can’t help thinking about how I wish the United States Patent and Trademark Office (USPTO) could have proceedings that are this efficient and effective. Here are a few of my observations:
First, the parties receive a decision from the Board immediately following the proceeding. This is great for our clients, either way the decision goes, as we can begin right away on mapping a strategy moving forward.
Second, the proceeding is iterative, as each issue is taken up one at at time and the Board provides their decision on that one issue before continuing the hearing. For example, we began with “clarity” issues in the claims (somewhat analogous to 35 U.S.C. 112 issues in the USPTO). Both the patent owner and petitioner made their arguments, there was a constructive conversation with the Board, and then the parties were told to leave the hearing room while the Board deliberated. The Board then called the parties back into the room and announced their decision. Within minutes, the next issue was discussed using the same process, for example, novelty and inventive step challenges.
Third, and I believe very importantly, a patent owner is given an opportunity to amend their claims through an “auxiliary request.” Unlike USPTO proceedings, an unlimited number of auxiliary requests may be presented to the Board, typically of narrowing scope with successive auxiliary requests. While the Board is very critical and thorough with their consideration of auxiliary requests, to me it seems like a productive way to arrive at a more correct claim scope. Although it was a very long and exhausting day for both parties and the Board, I feel strongly that this sort of proceeding really “rung out” the patent and there is so much more certainty afterwards.
Finally, a shout out to our foreign associates in Germany, the Dreiss law firm (https://www.dreiss.de), for yet another victorious proceeding at the EPO. Both Thomas Knapp and Angelika Langöhrig (very experienced with appeals) were brilliant, …and they even allowed me to speak in front of the Board on a couple of issues. (Shocking, right, I wanted to have a say in the arguments?!)
Perhaps this can be a topic of discussion for the new Patent Public Advisory Committee (PPAC), which is now accepting nominations through July 24, 2016: http://www.uspto.gov/about-us/news-updates/uspto-seeks-nominations-patent-and-trademark-advisory-committees-2
If you have any questions related to this topic, please contact Kelly K. Burris at kelly@burrisiplaw.com.