OPPOSITION AND REVOCATION PROCEEDINGS IN

PATENT CASES

INTRODUCTION

Opposition and cancellation proceedings in the Patent Office are known in the United States in connection with trademark cases. When an application to register a trademark on the Principal Register is found allowable by the examiner, the mark is published in the Official Gazette. Within 30 days (subject to extension) after this publication, any person having the necessary standing may file a notice of opposition and be heard. After a registration is issued any person having the necessary standing may petition to cancel the registration. There is no time limit for cancellation in the case of registrations on the Supplemental Register and registrations under the old law which have not been republished under section 12 (c) of the Trademark Act of 1946; with respect to registrations on the Principal Register under the act of 1946 and old registrations which have been republished there is a time limit of 5 years except as to certain grounds, such as abandonment, fraud, etc. Any ground upon which registrations could be refused or held invalid if granted can be raised in an opposition or cancellation. The procedure in both proceedings is similar. The initial pleading, the notice of opposition or petition to cancel, is filed in duplicate and a copy sent to the respondent by the Office. There is a time within which the respondent must file an answer and thereafter times within which each party may present testimony. An oral hearing is held before an examiner who decides the case. From the decision of the examiner there is an appeal to the Commissioner of Patents, whose decision may be reviewed by the courts. Oppositions are filed in about 7 percent of trademark applications published for opposition, and petitions for cancellation are brought against about 1.2 percent of registered trademarks.

Many countries have such proceedings in the Patent Office in connection with patent cases. Trademark oppositions and cancellations in the United States have been first mentioned for the similarity in form, but the reasons for having them in patent cases would not necessarily be entirely the same as the reasons in trademark cases. Considering only the 23 countries which have issued more than about 1,000 patents a year in recent years, 10 do not have oppositions; these are Argentina, Belgium, Canada, Czechoslovakia, France, Italy, Mexico, Spain, Switzerland, and the United States. Oppositions are found in Australia, Austria, Brazil, Denmark, Germany, Great Britain, Hungary, Japan, the Netherlands, New Zealand, Norway, Sweden, and the Union of South Africa. Remarks made here are limited to the countries mentioned.'

1 Summaries of the patent laws of all countries, which indicate the presence or absence of opposition and cancellation proceedings in the Patent Office, giving a few details, are found in Manual for the Handling of Applications for Patents, Designs, and Trade Marks Throughout the World, published by Octrooibureau Los en Stigter, Amsterdam, 1936, a looseleaf book which is kept up to date by substitute and added pages.

There is no necessary relation between the absence of an examination system of issuing patents and the presence of oppositions. In Belgium, France, Italy, Spain, and Switzerland, where patents are issued without examination for novelty, there are no oppositions. On the other hand, countries such as Germany, the Netherlands, and Sweden, which have strong examination systems, also have oppositions, and the other countries mentioned as having oppositions also have examination systems, although in a few it may be nominal. As far as the countries which have been mentioned are concerned, oppositions are not used as a substitute for the examination system of granting patents since those which do not have examination also do not have oppositions. The opposition then serves to supplement and check the examination system, rather than to replace it, and is generally regarded as part of the examination system. This fact is illustrated by the new patent law of Switzerland which came into effect on January 1, Under the prior law there are no provisions for examination of applications or for oppositions. The new law contemplates introduction of the examination system by installments and the Federal Council is at present authorized to institute examination with respect to applications filed for subject matter in two classes only. Oppositions are provided for as a step in the examination and there will still be no oppositions with respect to the applications in the unexamined classes. The existence of opposition procedure in countries having the examination system of granting patents is a recognition of the fact that ex parte examination cannot be complete and perfect, and the interested public is given an opportunity to participate in the prevention of the issuance of invalid patents.

The procedure in the oppositions has some general resemblance to the procedure in oppositions in trademark cases here. When the Patent Office has finished its examination and determined that it will allow the patent, a notice is published in the official patent journal of the country. At this time the application becomes open to public inspection and obtaining of copies; in a few countries the entire specification is available in printed form. Within a specified period members of the public may oppose the grant of the patent. The periods allowed vary from 8 weeks to 4 months in different countries, with a few permitting extensions. The grounds upon which an application can be opposed are in general the same as the grounds upon which a patent can be refused or invalidated. Some details concerning these proceedings in a few countries will be given.

Proceedings before the Patent Office to revoke or cancel a patent are not as common as opposition proceedings. They are found in Austria, Germany, Great Britain, Japan, Mexico, New Zealand, and the Union of South Africa, with time limits in some cases (Great Britain, 1 year; Japan, 5 years; Mexico, 5 years in certain cases; New Zealand, 1 year). These proceedings serve the purpose of extending the opposition period, of providing a method of adjudicating the validity of a patent which is in general cheaper and quicker than a proceeding in court would be, and in some countries constitute a substitute for proceedings in court insofar as adjudication of the validity of a patent is concerned.

In all of the foreign countries which have been mentioned, except Austria, Germany, Japan, and Mexico (which have revocation actions in the Patent Office), it is possible to institute an action in court to revoke or cancel a patent,

When the examination of an application for patent has been completed and the application is found allowable, the application (complete specification) is "accepted," which is the word used in England equivalent to "allowed" used in the United States. A notice is sent to the applicant and an entry appears in the Official Journal (Patents) 3 stating that the application has been accepted and specifying a date on which the application will be open to public inspection. This date is somewhat later than the date of the Official Journal in which the notice appears. The Official Journal has a section with the heading "Complete Specifications Accepted" and some paragraphs of explanation, the first two (taken from the issue for June 8, 1955) reading:

The applications in the following list and the specifications filed in pursuance thereof will be open to public inspection on August 3rd, 1955, and this date will be the date of the publication of the complete specifications for the purposes of the Patents Act, 1949 (see Section 13 (3)).

Any person interested may give notice of opposition to the grant of a Patent on any of the applications included in the list by filing Patents Form No. 12 at any time within three months after the date given above.

The listing gives the applicant's name, title of the invention, filing date, serial number, and a number which will be the patent number. The date on which the application is open to public inspection is referred to as the publication date of the application. Printed copies of the specifications are available on the date of publication. The heading in the Official Journal from which the two paragraphs have been quoted concludes with the following paragraph:

Printed copies of the specifications will be on sale at the Patent Office, 25, Southampton Buildings, Chancery Lane, London, W. C. 2, on the above-mentioned date, or as soon as possible thereafter; price 3s. Od. per copy (including postage).

These are the printed copies which are received in the United States Patent Office and referred to as patents; they are not yet patents and a few will never be.

The patent rights of the applicant begin on the date of publication rather than on the date of the granting (sealing) of the patent, i. e., the remedy against infringers begins with the date of publication. However, an infringement suit cannot be instituted until after the patent has actually been sealed, although recovery can be had back to the date of publication. Such a provision protects the applicant to a large extent against delays due to an opposition. Since a British patent expires 16 years from the date of the filing of the complete. specification, its expiration date would not be affected by any delays due to oppositions.

An annotated edition of the British patent statute has been published by the Chartered Institute of Patent Agents, The Patents Act, 1949, London, 1950. The two most recent texts on British patent law are Terrell and Shelley on Patents, ninth edition, London, 1951, and Patents for Inventions, by T. A. Blanco White, second edition, London, 1955, which give fuller details on the legal aspects of opposition and revoca. tion proceedings than are given here.

This is the official publication of the British Patent Office which corresponds to the Official Gazette of the U. S. Patent Office.

A period of 3 months from the date of publication is allowed within which any person interested may oppose the grant of the patent. The period of 3 months cannot be extended. Oppositions are limited to "any person interested" and the opposer must show some reason peculiar to himself to entitle him to oppose. The field perhaps corresponds in a general way to that under our own Trademark Act, which limits oppositions to "any person who believes that he will be damaged." The opposer must have a real, definite, and substantial interest, such as an actual manufacturing or trading interest in the subject matter, ownership of a prior filed patent claiming the same invention, or be a person from whom the invention has been unlawfully derived.

The notice of opposition must be made on a prescribed form stating the ground or grounds on which the opposer relies, and be accompanied by a statement in duplicate setting out fully the nature of the opposer's interest, the facts upon which he relies, and the relief which he seeks. The Patent Office sends a copy of the notice of opposition and of the accompanying statement to the applicant. The applicant has 6 weeks within which to file an answer, called a counterstatement, setting out fully the grounds upon which he contests the opposition, and must serve a copy on the opponent. Within 6 weeks from the receipt of the answer, the opposer may file evidence in support of his case, serving a copy on the applicant. Within 6 weeks from the receipt of the opposer's evidence or from the expiration of the time within which it might have been filed, the applicant may file evidence in support of his case, serving a copy on the opponent. The opposer may thereafter, within 6 weeks, file rebuttal evidence. On the completion of the evidence there may be an oral hearing of the case at the request of either party and the case is thereupon decided.

The evidence which is filed is in the form of affidavits and the case is ordinarily decided on the exhibits (prior publications, patents, etc.) and the affidavits. The Comptroller has the power to compel the attendance of witnesses and hear the evidence orally, but it is not the practice to do so. Either party may request that the witnesses on the other side attend the hearing for the purpose of cross-examination but this is not often done. The majority of cases are terminated without trial.

Proceedings are not conducted by the Comptroller himself but he is usually represented by one of a group of senior officials of the Patent Office known as superintending examiners. These officials, of whom there are six, have functions corresponding somewhat to those of supervisory examiners (in having supervisory jurisdiction over a number of examining divisions) and examiners in chief (in having in effect some appellate jurisdiction over examiners) in the United States Patent Office.

The opposition may be sustained in whole or in part or not sustained at all. If there is anything novel and patentable in the case it is the practice to give the applicant an opportunity to amend the claims and the description.

Amendment of the notice of opposition may be permitted and leave may be obtained to file additional evidence. Since the application is still pending, additional references may be cited by the Patent Office; the Office has the power to refuse the patent apart from the opposition proceeding.

1