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

Abstract

Third parties are now playing a key role in the processes leading to the grant, and validation, of patents. This article looks at the key differences between three systems of third‐party challenge, which have the common goal of providing patentees and their competitors with a forum, other than the courts, where issues of patent validity may be challenged and resolved. Those 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 do allow some conclusions to be drawn—including the suggestion that one reason for the differences in levels of use of the three systems may be the perceptions of US Patent and Trademark Office examiners and the culture that has built up within the US patent attorney profession. The degree 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.