Intellectual Property Owners Association (IPO)

CONCLUSION

As can be seen, the proposals are extensive, complex and in many cases interrelated.

While some of the proposals are controversial, the majority represent true improvement with broad-based support. We know that this is a long road but we are confident that the

Subcommittee can fashion a bill with the best of the proposals and make major improvements in

the patent system.

***

Appendix A: IP Suits Filed in U.S. District Courts, 1995-2004

Appendix B: Patent Suits, Patent Application Filings and Patent Grants, 1995-2004

Appendix C: IPO Recommendations on Post-Grant Opposition Proceedings

Appendix D: Citations to Sources on Injunctions in Patent Cases

on (IPO)

A1

Intellectual Property Owners Association (IPO)

APPENDIX C

IPO Resolution on Establishing a Post-Grant Opposition System

As revised at the 11/09/2004 Board Meeting and approved by the IPO Board of Directors

RESOLVED, that the Intellectual Property Owners Association supports amendment of the patent laws to establish post-grant opposition proceedings in which patentability of issued claims can be reviewed by Administrative Patent Judges of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office, provided such proceedings include the following attributes:

1. [Time for Filing] - Any request for a post-grant opposition must be made no later than 9 months after the date of the patent grant;

2. [Grounds] - Any ground of patentability, with the exception of "best mode” (35 U.S.C.§ 112, 1) and derivation (35 U.S.C. § 102(f)), may be raised in the request, but no issues of priority of invention (35 U.S.C. § 102(g)) nor enforceability shall be considered;

3. [Threshold Showing] - Any party requesting initiation of an opposition proceeding shall be required to make a threshold showing of unpatentability of at least one claim of the patent before the patent owner is required to respond to the opposition;

4. [Discovery] - Discovery from a party to an opposition shall be limited to cross-examination of declarants;

5. [Additional Evidence] - Following initiation of a post-grant opposition proceeding, the party requesting the proceeding shall not be permitted to advance a new ground of unpatentability in the opposition proceeding;

6. [Claim Amendments] - The patent owner shall have the right to amend its claims in its response to the initial request and after any new prior art is presented by an opponent after filing its initial request;

7. [Other USPTO Proceedings] - No party to the opposition proceeding shall be prevented by the opposition proceeding from filing other concurrent or subsequent proceedings in the United States Patent and Trademark Office;

8. [Standard of Proof] - The standard of proof to be applied for determining unpatentability of a claim during a post-grant opposition proceeding shall be the clear and convincing evidence standard;

9. [Estoppel] - A judgment in favor of patentability of any claim in the opposition proceeding shall estop the opposer from challenging validity of that claim in other proceedings on the basis of evidence and prior art presented during the opposition proceeding;

10. [Duty of Disclosure] - The patent owner's duty of disclosure during the opposition shall be no greater than that applicable to a party in litigation before a Federal court;

11. [Length] - The opposition proceeding shall conclude within 12 months of the expiration of the 9month post-grant request period and any patent claim surviving the opposition proceeding unamended

Intellectual Property Owners Association (IPO)

APPENDIX C (continued)

shall be subject to day-for-day patent term adjustment for any period of pendency of the proceeding beyond the 12 months, excluding delays caused by the patent owner;

12. [Identity of Opposer] - Any party requesting initiation of a post-grant opposition proceeding must disclose its identity to the patent owner in the opposition proceeding;

13. [Infringement Suit] - In the event an infringement action is brought against an accused infringer prior to the filing of a post grant opposition request by the accused infringer, then any opposition proceedings involving the patent shall be stayed until the infringement action is finally resolved;

14. [Appeal] - Judicial review of a post-grant opposition proceeding shall be exclusively by way of appeal to the Court of Appeals for the Federal Circuit;

15. [Consolidation] - Multiple oppositions against a single patent shall be consolidated into a single opposition action following the expiration of the nine-month filing period; and,

16. [Right to Hearing] - Parties to an opposition shall have the right to a hearing before the decision of USPTO on the opposition is reached.