Open Prosecution: Towards Ex Ante Validation of Patents
32 Pages Posted: 27 Mar 2016
Date Written: March 27, 2016
Patents are unilateral declarations by an inventor which when approved by the patent office stand unchallenged for the remainder of its life. The only way by which its credibility or truth can be questioned, is by putting forward a challenge before a court of law. This is a hugely expensive and inefficient way to find the truth about patents. Open prosecution offers an ex ante opportunity to test the validity of patents. By transposing the point at which the validity can be challenged (usually the courts) and placing it within the patent office within the grant process at the patent office (for e.g. by the introduction of pre-grant opposition), open prosecution brings in the much needed peer-scrutiny of patents. This is not an alien thing to do. Open prosecution is similar to the re-examination procedure in the United States. The new patent law in the United States, the America Invents Act also allows for post-grant review of a patent. This recognizes the fact that it is primarily the competitors who are empowered to challenge the patent. By making the analysis ex ante, open prosecution not only empowers a resource-crunched patent office, but it also saves on future litigation time and costs. The evidence from 10 years of pre-grant opposition procedure in India, which can be regarded as the first step towards open prosecution, demonstrates the high rate of success of pre-grant opposition in invalidating patents. Open prosecution could thus be a boon for improving access to medicines.
Keywords: open prosecution, role of public, ex-ante validation, peer-review, validity of patents, internal validity, external validity, pre-grant opposition
JEL Classification: O31, 034
Suggested Citation: Suggested Citation