The Post-Grant Life: Coordinating & Strategizing Challenges of Issued Patents in Multiple Continents

Abstract

With the enactment of the Leahy-Smith American Invents Act (AIA), U.S. patent law gained a new post-grant opposition system and the Patent Trial and Appeal Board (PTAB). While the U.S. post-grant opposition system has some similarities to the post-grant systems, such as that in the European Union, Japan, South Korea, Canada, and Australia, there are also notable differences. Navigating one’s own post-grant system can be challenging, but doing so in multiple patent offices around the world is daunting. Differences in these proceedings not only present the potential for parties to make costly errors, but also to engage in strategic behavior. This Article discusses one such opportunity to engage in strategic behavior, one that is available due to a lack of international harmonization in the various post-grant systems around the world. In short, while the post-grant opposition system in the United States includes multiple estoppel statutes, there are no analogous estoppel statutes in many other post-grant systems, including that in the European Union and Japan. Because of this lack of harmonization, parties may test the strength of a competitor’s patent in multiple venues, as well as determine a competitor’s tolerance for financing simultaneous proceeding around the world.

Keywords: patent; post-grant patent; international law; estoppel