What Other Companies Face Similar Dilemmas of Inter Partes Review

EP Opposition and Usa Inter Partes Review Decisions Go Paw In Hand

It is frequently desirable to obtain patent protection for inventions both in Europe and the The states. As a result, competitors frequently look to Europe and the The states as of import jurisdictions for challenging the validity of a patent. Patents can be challenged at the European Patent Office by opposition or at the US Patent and Trademark Part by post-grant proceedings such as inter partes review (IPR). Information technology is difficult to predict the occurrence or outcome of patent validity challenges. However, analysis of recent opposition and IPR proceedings indicates that European patents having a related US patent challenged by IPR were far more than likely to exist opposed, and that proceedings in related European and U.s. patents are quite often decided in a like style.

A data set of IPR petitions filed between January 2014 and May 2016 that received a final written conclusion was reviewed.[i] 48% of the Usa patents challenged in those IPRs had a related European patent granted, with 26% of those European patents existence opposed. Since only most 4-v% of all European patents were opposed in this time frame,[two] European patents having a related U.s.a. patent challenged by IPR were about five times more likely to be opposed.

Moreover, 37% of the opposed European patents having a related US patent challenged by IPR were in patent families having ii or more opposed European patents (Table 1). Accordingly, a meaning proportion of opposed European patents having a related United states patent challenged past IPR were related to other opposed European patents.

Table 1

Opposed EP patents having a related US patent challenged by IPR…

...were in a patent family unit having:

3%	2 related EP patents opposed
22%	three related EP patents opposed
12%	iv related EP patents opposed

37%	two or more related EP patents opposed

As shown in Figure 1A, 57% of opposed European patents having a related U.s.a. patent challenged by IPR were revoked as event of the opposition, 25% were maintained in amended class, and viii% of the oppositions were rejected. Comparison of these findings to all European oppositions in 2015 (Figure 1B)[iii] shows that opposed European patents having a related United states patent challenged by IPR were nearly 2 times more likely to be revoked. Oppositions of European patents having a related US patent challenged by IPR were also about four times less likely to be rejected outright by the Opposition Division. Therefore, oppositions of European patents having a related U.s.a. patent challenged by IPR were very successful for patent challengers, with 82% of patents beingness amended or revoked. Considering that 69% of all European patents opposed in 2015 were amended or revoked, oppositions of European patents having a related U.s. patent challenged by IPR were even more successful for patent challengers.

Figure 1

Furthermore, analysis of opposition decisions in European patents having a related US patent challenged by IPR revealed that 90% of the oppositions had a similar result as the IPR (eastward.g., at least some claims found unpatentable in the IPR, and the patent revoked or maintained in amended form in the opposition). But 10% of the oppositions had a different upshot than the IPR (eastward.m., all claims establish patentable in the IPR, and the patent revoked or maintained in amended form in the opposition). Thus, the result of an opposition or IPR is indeed a stiff indicator of the result of an IPR or opposition in a related patent.

European oppositions and US IPRs have proven to exist valuable tools for patent challengers, even more than so when used in parallel. As such, patent owners should await such dual attacks for their valuable patents and take measures to strengthen their portfolios to heighten the chance of survival in post-grant challenges.

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_{[i] Data are excerpted from Patent Office Litigation, 2nd Ed., Ch. 23, Peter Jackman and Lori Brandes (2017).}

_{[ii] Data from the 2014 and 2015 Annual Reports of the European Patent Office (http://www.epo.org/about-us/annual-reports-statistics/annual-report/2014... http://world wide web.epo.org/about-us/annual-reports-statistics/annual-report/2015.html).
[iii] Information from the 2015 Annual Written report of the European Patent Office.}

© 2022 Sterne Kessler National Law Review, Volume VII, Number 167

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Dr. Brandes is an associate in the firm's Biotechnology/Chemical Group where she counsels domestic and international clients on the grooming, prosecution, and management of complex worldwide patent portfolios. She is as well experienced in applied science transfer, invalidity, noninfringement, freedom-to-operate and patentability opinions, and due diligence investigations.  Specifically, she works with clients to obtain and enforce patents in areas such every bit biotechnology, immunology, biofuels, pharmaceutical formulations, and food science.  Dr. Brandes has also been involved in U...

Mr. Jackman is a director in the Biotechnology/Chemical Group.  His  practice includes counseling clients in areas such as global patent portfolio procurement and management strategies, FDA/ANDA practice, technology transfer, invalidity, noninfringement, freedom-to-operate and patentability opinions and due diligence investigations.  He has also written and prosecuted patent applications domestically and internationally in areas such as immunology, genomics, molecular and jail cell biology, recombinant Deoxyribonucleic acid technology, transgenics, bioprocessing, avant-garde biofuels, microbiology,...

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