Problem Patents: Is Reexamination Truly a Viable Alternative to Litigation?

June 16, 2012

The United States Patent and Trademark Office (PTO) recently granted a number of “obvious” patents, which beg the question: is everything patentable? According to the Supreme Court in holding that an artificially-created, oil-eating bacteria was patentable, patentable subject matter consists of “anything under the sun made by man.” Although the Court’s definition of patentability appears broad, statutory limitations still apply, and inventions are supposed to be innovative, novel, and non-obvious.
In the past decade, the PTO has allowed the patenting of numerous obvious products and methods, including the American staple of peanut butter and jelly. Such patents, which are problematic because they are obvious, improperly remove products and methods from the public domain. The PTO should supply the public with an efficient means to contest the validity of such “problem patents” that may have been issued improperly. In response, Congress created the process of reexamination and recently amended reexamination to include broadened rights for third party requesters, under a new provision for optional inter partes reexamination.
This new provision is intended to encourage third parties to use reexamination for patent validity issues and reduce the volume of litigation concerning validity. However, inter partes reexamination still has major faults and deficiencies which make its use unattractive and risky to the third party requester.
This Comment will discuss the current condition of the reexamination system for a third party requester. It will focus on the recent provision for optional inter partes reexamination, its problems and deficiencies, and whether this provision is truly a viable alternative to litigation as envisioned by Congress. It will then discuss pending amendments to optional inter partes reexamination proposed during the summer of 2001, which, when enacted, will help to relieve some of the provision’s current deficiencies. Finally, it will propose additional changes which should be made to the inter partes provision before it will truly be a viable alternative to litigation for a third party complainant. As the reexamination system currently stands, reexamination is not a viable alternative to litigation, or a means for the public to question the validity of problem patents.