Challenging the Validity of Patents: Stepping in Line with EPO and US Jurisprudence

Thaddeus Manu

doi:10.1007/s40319-017-0633-7

Abstract

This document is an Accepted Manuscript of an article accepted for publication in International Review of Intellectual Property and Competition Law. Under embargo until 20 September 2018. The final publication is available at Springer via https://doi.org/10.1007/s40319-017-0633-7.

Highlights

The patent system was designed with the intention of promoting innovation, and the exclusive rights granted to patentees are subject to limitations.[1]
Given the conceptual reasoning that invalidly granted patents stand to prejudice the overriding public interest, a principle centrally established in the patent system, this article examines the extent to which states can implement legislative instruments on patent opposition to mitigate the potential consequences of granting questionable patents
Drawing on the jurisprudence containing substantive law and procedural requirements of patent opposition proceedings within the EPO and United States Patents and Trademarks Office (USPTO), the author argues that citizens in whose interests’ patents are granted have the right to participate in the patent system and to check that only inventions that deserve exclusive rights are granted patents

Summary

Introduction

The patent system was designed with the intention of promoting innovation, and the exclusive rights granted to patentees are subject to limitations.[1]. Added to this fact is the argument that some applicants, with a view to obtaining exclusive rights, may submit questionable patent applications.[20] The general meaning of a “questionable patent” relates to “poor quality” or any patent that has been granted improperly.[21] Where this is the case, it will provide a workable basis for invalidating such patents given its presumed inconsistency with the general statutory requirements. The conclusion is that, if WTO members without patent opposition mechanisms were to explore and strengthen their regimes, citizens, competitors and other interest groups would be able to detect and invoke key provisions to challenge the granting of invalid patents, while maintaining that the patent system is untainted and free from questionable patent claims

Deficient Prosecution and the Grant of Questionable Patents

Challenging the Validity of Patents

Justifying the Patent Opposition Mechanisms

28. UNCTAD-ICTSD

Findings

Conclusion