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Short thoughts on post-grant opposition March 9, 2009

Posted by Brian Schar in Patent prosecution, USPTO.
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In the spring, a young man’s fancy turns to thoughts of baseball, but a middle-aged man’s thoughts turn once more toward yet another round of patent “reform” legislation.

In the early draft of this year’s bill, the long-controversial topic of post-grant opposition survives.  At least, this time around, the opposition period is limited to one year from issue, which is far more reasonable than last year’s nebulous first and second window periods which could have extended years past issuance.  A one-year opposition period places USPTO procedure in greater conformance with EPO procedure, which allows a nine-month window.

I will not attempt to provide a value judgment as to post-grant opposition here, other than to state for the record that (1) I am opposed to it, and (2) it is a tacit admission by the USPTO that it cannot do its job.  What I’d rather do is point out why, logistically, post-grant opposition is doomed to failure as a practical matter.  Approximately 5% of granted applications in the EPO are opposed.  Assume that a similar 5% of granted applications in the US are opposed.  In 2007, 167,000 patents issued in the US.  Five percent of that number is approximately 8000 oppositions.

The BPAI heard 3485 appeals in FY2007.  As it stands, the BPAI is overloaded with that amount of work.  Now imagine the BPAI trying to decide 8000 oppositions a year, on top of the 3000+ appeals a year that it handles.  Post-grant oppositions would more than triple the amount of work on the BPAI’s plate.   The pendency for appeals is measured in years, not months.  That pendency would only increase, and the pendency for oppositions out of the gate would almost certainly be years long as well.

Congress – as well as the USPTO – should think long and hard about the practical consequences of post-grant opposition in any so-called patent reform legislation this year.

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