Improving patent quality through post-grant claim amendments: A comparison of european opposition proceedings and U.S. post-grant proceedings

Abstract

Congress enacted the Leahy-Smith America Invents Act to encourage innovation, strengthen U.S. patents, and achieve greater uniformity with foreign patent systems. The America Invents Act introduced two new post-grant patent validity proceedings: inter partes review and post-grant review. The new U.S. proceedings are similar to European opposition proceedings, but there are significant differences in the extent of the patent owner’s ability to amend claims, the patent’s claim construction, the patent owner’s evidentiary burden, and the procedural requirements. The U.S. proceedings result in a very limited opportunity for amendment and a high percentage of invalidated patents. In contrast, European opposition proceedings are generally more conducive to upholding patents, whether in original or amended form. The current U.S. practice for amending claims in post-grant proceedings should be changed to both achieve balance between claim vitality and extent of opportunity to amend, and to serve the America Invents Act’s goals of strengthening patents and encouraging innovation. A full adoption of the European opposition claim amendment practice, particularly the claim construction standard and expansive opportunity for amendment, would fail to balance claim vitality and ease of amendment, favor patent owners, and disserve the goals of the America Invents Act. This Note nevertheless advocates for adoption of certain European characteristics to improve U.S. post-grant proceedings.