3.4.1
Post-grant validity – the rebuttable presumption of
patent validity
The most fundamental aspect of the validity of the patent is that patenting requirements are fulfilled. Once a patent is granted, those requirements are deemed to be met and the patent is presumed to be valid.175 That presumption is, however, rebuttable. Specifically, after the patent grant, the validity of the issued patent can still be challenged in this respect. As a result, the granted patent can be invalidated or revoked.
For example, the validity of a granted European patent may be opposed by any third party. The post-grant opposition against the European patent needs to be filed within nine months from the time the patent grant was published in the European Patent Bulletin EPC.176 Thus, even after the grant, the applicant still has a nine- month period of uncertainty regarding the final validity of the European patent. It is
172 Earlier, in the U.S., the patent term was different. For applications filed before June 8, 1995 and for patents that were still in force on that date, the patent term was either 17 years from the issue date of the patent or 20 years from the filing date of the earliest U.S. or international (PCT) application of which priority is claimed, the longer term applying. The term was brought into conformity with TRIPS by the Uruguay Round Agreements Act; Pub L. 103-465, 108 Stat. 4809, enacted December 8, 1994.
173 For example, in case the USPTO fails to examine a patent application time, the patent term may be extended. This extension is known as a Patent term adjustment (PTA). Also, the Drug Price Competition and Patent Term Restoration Act (Hatch-Waxman Act) of 1984 provides patent holders on approved patented products with an extended term of protection under the patent to compensate for the delay in obtaining Food And Drug Administration (FDA) approval. 174 However, Paris Convention provides a grace period for the payment of the maintenance fees,
during which it is possible to restore the rights in force, subject to the payment of a surcharge. Paris Convention, Art. 5bis.
175 Cf. 35 U.S.C.§ 282(a): “A patent shall be presumed valid. (--)” 176 EPC Art. 99.
not until after this period has elapsed, without any opposition filed, that the European patent is valid. In cases where one or more oppositions are filed, the applicant needs to go through opposition proceedings177 before it is finally determined as to whether the invention is granted a European patent. The opposition can be filed based on a limited number of grounds specified in the EPC.178 Notably, the grounds are essentially the same aspects which are examined in the prosecution, which confirms that the presumption of the validity of the patent is rebuttable.
In the U.S., the so-called America Invent Act (AIA)179 brought a number of changes to the previous U.S. patent system, the most significant changes to the post- grant proceedings. AIA introduced three new proceedings to challenge the validity of claims in the already issued U.S. patents: post-grant review180, inter partes
review181 and covered business method review182, and they complement the re-
examination that in the past was the only procedure for challenging the validity and
which remains in force in an ex partes form.183 The new post-grant review equals to the opposition proceedings pursuant to the EPC and aligns the earlier very different U.S. rules with the other patent systems of the world also in this respect.
The grounds and mechanisms for disputing the already granted patent vary depending on the country and the proceedings to be used but the essential thing for the patent holders is that it is indeed possible to challenge the validity of the already granted patent based on issues that have not been sufficiently addressed in the prosecution of the patent application. This can be for example a prior art document that the applicant has failed to disclose to the USPTO as part of his IDS duty184, which is why the examiner has not considered its relevance.185 Despite the slightly different mechanisms of disputing the validity of a patent there exists a normative global consensus regarding the criteria and the requirements for the validity of patents in the international patent system. All the applicants – whether an individual inventor or an assignee – are obliged to follow the same rules in order to achieve a valid patent. All companies, including multinational corporations, seeking patents 177 Parties to opposition proceedings are defined in EPC Arts. 99(3) and 105(2).
178 EPC Arts. 100, 100(a), 100(b) and 100(c).
179 The Leahy-Smith America Invents Act (AIA), effective as of September 16, 2012. 180 35 U.S.C. § 282(b)(2) or (3).
181 35 U.S.C. § 102 or § 103. 182 AIA, Section 18.
183 AIA, Section 6, Post-grant review proceedings.
184 35 C.F.R. § 1.56, Duty to disclose information material to patentability.
185 It should be noted that certain post-grant proceedings, such as re-examination (35 U.S.C. § 302), can also be utilized by the applicant itself, for example based on some new material found to be relevant, in order to strengthen the patent that is already granted. Ultimately also in such a case it is a question of challenging – or in case of the applicant desiring to confirm – the validity of the already granted patent.
for inventions made either by their employees or collaboration partners are bound by the same rules regarding the patentability and the patent procedure. However, national security provisions can have impact on the patent validity in certain countries, irrespective of the validity of the patent from the point of view of the patentability.
3.4.2
National security provisions affecting the validity of
patent
As a general rule, the applicant is free to choose in which country the invention is patented first, namely in which patent office the first patent application for the invention is filed. However, there is an exception to this general rule regarding the freedom of choice. Many of the national patent laws contain specific regulations called national security provisions which impose restrictions on the place for filing the first patent application in certain situations, justified by national security. According to these provisions it is required that inventions made within a territory or by residents (or nationals) of the country are first filed locally within that country.
As an alternative to the first filing requirement, national security provisions usually provide an opportunity to obtain special security clearance. In order to file the first patent application outside the country, the applicant should seek a special
foreign filing license from the national patent office. Depending on the jurisdiction,
this permission process is not necessarily the most straightforward, nor the fastest, option but it provides applicants with an alternative manner to proceed. In addition, this option enables dealing conflict situations in “global inventions”, when two or more filing requirements are in conflict and should be complied with simultaneously.186
Failure to comply with national security provisions can lead to invalidation of a later-granted patent. However, the effect of the non-compliance is territorial as is the patent protection. In some countries sanctions for not complying with regulations also include criminal punishment for the attorney who filed - or the person(s) causing a patent application to be filed - contrary to these rules. It is worth noting that such a punishment can apply to all persons who are involved in the patenting process in the company and who can possibly affect the place of filing. Therefore, it is very important for companies operating in countries containing these provisions to be aware of, and to comply with, them when patenting inventions made by their employees or subcontracted inventors, in order to avoid any loss of patent rights.
3.4.3
Property aspect – transition to valid entitlement
There is yet an additional aspect affecting the possibilities to utilize a patent. In cases where the applicant is not the inventor, a typical scenario when companies patent inventions made by their employees or subcontracted inventors, there needs to be a
valid assignment in place from the inventor in order for the applicant to be entitled
to act as an assignee in the patent application. The aforementioned applies to assignees of all kinds, both to natural persons and companies. The mechanisms for assigning rights are different in contractual and statutory regimes. In contractual regimes the transfer of rights is a matter of contractual arrangement already included in the employment contract. In statutory regimes there is often a specific employee invention legislation in place, and a number of requirements need to be fulfilled for the assignment from the inventor to the employer to be valid. The assignment of rights can sometimes involve multiple parties and in such a situation there needs to be an unbroken chain of title originating from the inventor to the applicant assignee. For example, at multinational companies having global R&D and thus employees all over the world, employed by the subsidiaries of the parent company, the rights in the first place are vested in the employing subsidiary whereas patent applications are typically filed in the name of the parent company. Thus, there needs to be a chain of title from the inventor to his or her own employer and then subsequently to the applicant company. The same applies to inventions made in collaboration in those jurisdictions where the invention first needs to be assigned to the inventor’s employer, company B, prior to assigning to company A.
Moreover, for the assignment of the invention made in the course of the employment to be valid, there needs to be some sort of consideration from the employer-assignee to the employee-assignor. This can be a specific monetary payment or a part of the normal salary. However, it is a very country-specific issue as to whether the employer needs to compensate the employee-inventor for taking the rights to the invention. In so-called “paid-to-invent” –countries, as the name of the doctrine might imply, employees are considered to have been compensated also for their innovative activities in the form of their normal salary. Thus, the employer is not obliged to pay any extra for the rights to inventions made by them. In contradistinction, the countries with employee invention (or equivalent) legislation often provide obligatory, usually “fair and reasonable” compensation, remuneration, for the employee-inventor but the criteria and level of the compensation differ from one country to another.