Third-Party Patent Challenges in Europe, the United States and Australia: A Comparative Analysis

Abstract

The granting of a patent can no longer be seen solely as an arrangement between the patent applicant and the Patent Office. Third parties are playing a key role in the processes leading to the grant, and validation, of patents. This paper, a broadly descriptive piece, looks at the key differences between three systems of third party challenge which have the common goal of providing patentees and their competitors a forum, other than the courts, where issues of patent validity may be challenged and resolved. Those three systems are: post-grant opposition before the European Patent Office, pre-grant opposition in Australia and re-examination in the United States. Various aspects of the systems are looked at including an overview of the procedures, avenues of appeal and statistics on their use. Insufficient empirical evidence is available to permit a comprehensive assessment of which system is the most effective; however, the data available does allow some conclusions to be drawn – including the suggestion that one reason for the differences in level of use of the three systems may be the perceptions of USPTO examiners and the culture that has built up within the US patent attorney profession. The level of divergence in the three systems further indicates that more work needs to be carried out if reforms to the procedures are to be based on need rather than supposition.

Keywords: patents, opposition, re-examination' comparative analysis

JEL Classification: K00, K19, K39