Sunday, November 08, 2009

Does the US need European style oppositions?

In a post titled Study Concludes U.S. Would Benefit From EPO-Style Opposition , the 271Blog quotes from the Graham/Harhoff study pushing PGR:

This market power either allows the patentee to extort licensing fees, or force competitors to invent around the respective patent. But even when we draw a conservative scenario, and assume a very low social cost figure of $1 million on average for these patents, our benefit-cost ratios still indicate that the benefits of such an institution compares very favorably to its costs.

In a comment to the post, Roy Marsh writes:

Mr Zura, I have to disagree with your title. I think the good professors are saying that PGR would be a disaster for the USA. Here's why:

1. Throughout their Paper they have in mind a low cost PGR process. They think it costs each party at the EPO about USD20k. They say a PGR that costs each party USD 500k would do more harm than good.

2. In their very last paragraph, they note that administrative Decisions in the PTO can be appealed, all the way to the CAFC. What they fail to point out is that, when the EPO revokes a patent in opposition proceedings, that's it. End of story. There is simply no appeal instance beyond the EPO.

3. They should also point out that a patent granted by the EPO is a bundle of national patent rights. The last chance a competitor has, to kill that patent in all 40 EPO countries, in one fell swoop, is in opposition proceedings at the EPO. Omit to do that, and it's a trudge around as many of those 40 jurisdictions as are needed, to discipline the patent owner. A prospective Opponent at the USPTO does not go through the same calculation of "last chance for a central knock-out blow" does he?


IPBiz adds to this that many US companies (especially in the chemical area) use European oppositions to resolve disputes BEFORE they are adjudicated in the US. Since these folks have come to an understanding about how they resolve things, adding a US procedure is redundant.

IPBiz notes that Mr. Zura gives a link to the SSRN abstract of the paper (where's the full paper?) and that Mr. Zura neglects to mention Professor Harhoff's PREVIOUS pushing of an opposition procedure for the US. [Abstract for Separating Patent Wheat from Chaff: Would the U.S. Benefit from Adopting a Patent Post-Grant Review?]

Note the IPBiz post Is the patent system "broke"? mentioning Post-Grant Reviews in the U.S. Patent System - Design Choices and Expected Impact, Bronwyn H. Hall and Dietmar Harhoff [19 Berkeley Tech. L.J. 989 (2004)] wherein Hall/Harhoff cited to Cecil D. Quillen, Jr., The U.S. Patent System: Is It Broke? And Who Can Fix It If It Is?, One can readily see that Hall/Haroff were infected with mis-assumptions about the state of "patent quality" in the US.

Note a separate paper in 2004 with co-authors Graham and Harhoff: Bronwyn H. Hall & Stuart J. H. Graham & Dietmar Harhoff & David C. Mowery, 2004. "Prospects for Improving U.S. Patent Quality via Post-grant Opposition," Law and Economics 0401002, EconWPA. NBER Working Papers 9731, National Bureau of Economic Research, Inc.[Graham and Harhoff pushing opposition in 2009 is not exactly a news flash]

Note even earlier papers:

Stuart J. H. Graham & Bronwyn H. Hall & Dietmar Harhoff & David C. Mowery, 2003. "Post-Issue Patent "Quality Control": A Comparative Study of US Patent Re-examinations and European Patent Oppositions," Industrial Organization 0303009, EconWPA. [Downloadable!]
Other versions:
Stuart Graham & Bronwyn Hall & Dietmar Harhoff & David Mowery, 2002. "Post-Issue Patent "Quality Control": A Comparative Study of US Patent Re-examinations and European Patent Oppositions," Department of Economics, Working Paper Series 1046, Department of Economics, Institute for Business and Economic Research, UC Berkeley. [Downloadable!]
Stuart J. H. Graham & Bronwyn H. Hall & Dietmar Harhoff & David C. Mowery, 2002. "Post-Issue Patent "Quality Control": A Comparative Study of US Patent Re-examinations and European Patent Oppositions," NBER Working Papers 8807, National Bureau of Economic Research, Inc. [Downloadable!] (restricted)
Harhoff, Dietmar & Reitzig, Markus, 2002. "Determinants of Opposition Against EPO Patent Grants - The Case of Biotechnology and Pharmaceuticals," CEPR Discussion Papers 3645, C.E.P.R. Discussion Papers.

http://ipbiz.blogspot.com/2005/05/in-their-haste-to-prepare-amicus-brief.html: [The argument of Hall and Harhoff is silly. Lee was a case in which the CAFC reversed the Board. The CAFC would have the same authority to reverse the findings of the PTO in an opposition. An opposition procedure, contrary to Hall and Harhoff would not affect what was going on in Lee. ]

http://ipbiz.blogspot.com/2009/09/coming-sikahema-on-patent-oppositions.html

http://ipbiz.blogspot.com/2009/07/shane-report-questions-need-for.html

**UPDATE. As to the comment by Stu Graham below, Dr. Ebert (aka "Mr. Lawrence") references:


Concerning citations, SSRN, oppositions and Graham

1 Comments:

Blogger Stu Graham said...

Mr. Lawrence writes in the above blog "IPBiz notes that Mr. Zura gives a link to the SSRN abstract of the paper (where's the full paper?)." On SSRN, downloading a paper can be accomplished by clicking the conveniently named "DOWNLOAD" button immediately above the title of the paper. As with most things, one should not rely upon hearsay to jump to conclusions. Please download and read the piece yourself before prejudging.

12:51 PM  

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