TY - JOUR AU - Mercado, Raymond A. PY - 2013/07/31 Y2 - 2024/03/28 TI - Ensuring the Integrity of Administrative Challenges to Patents JF - Science and Technology Law Review JA - stlr VL - 14 IS - 2 SE - Articles DO - 10.7916/stlr.v14i2.3978 UR - https://journals.library.columbia.edu/index.php/stlr/article/view/3978 SP - AB - <p>As part of the most sweeping reform of patent law in 60 years, the&nbsp;America Invents Act (“AIA”) expanded administrative procedures for&nbsp;challenging patents, shifting more responsibility for adjudicating patent validity to the U.S. Patent &amp; Trademark Office (“PTO”). &nbsp;Yet&nbsp;the PTO, which has limited experience administering full-blown adversarial proceedings and conducting discovery, is expected by many observers to encounter severe difficulties implementing the&nbsp;newly created proceedings—leaving them dangerously vulnerable to&nbsp;fraud and abuse. &nbsp;In an effort to ensure the integrity of the new&nbsp;proceedings, this article draws lessons from practitioners’&nbsp;experience with existing patent reexamination processes. &nbsp;Reviewing the state of the discourse regarding the use and abuse of&nbsp;patent reexamination, and bringing to light hitherto ignored&nbsp;legislative history, the article offers the first empirical evidence&nbsp;concerning the nature and extent of misconduct in reexamination. &nbsp;Consistent with anecdotal evidence adduced in previous&nbsp;scholarship, data presented here from a survey of more than 100&nbsp;patent practitioners reveal that 25.5% of respondents reported some&nbsp;form of misconduct on the part of those challenging patents in&nbsp;reexamination. &nbsp;Notably, these results are comparable to those&nbsp;reported in studies of misconduct in the courts, suggesting that&nbsp;significant levels of misbehavior at the PTO have gone undeterred&nbsp;and uncompensated by protections which, though available to other&nbsp;victims of sham litigation in the courts, are sorely lacking in the PTO&nbsp;context. &nbsp;Accordingly, it is argued that the integrity of the PTO’s&nbsp;administrative procedures can be ensured by a damages remedy,&nbsp;which would simultaneously deter misconduct and compensate&nbsp;patent owners when it does occur. &nbsp;A private right of action, this&nbsp;article contends, would incentivize those most attuned to impropriety&nbsp;(the patent owners) to come forward and take the lead in enforcing&nbsp;good conduct in administrative validity challenges, preserving scarce&nbsp;PTO resources. &nbsp;Strict pleading standards from the outset, among&nbsp;other things, can protect such a remedy from becoming a “plague”&nbsp;on legitimate use of opposition procedures in the way an unfettered&nbsp;inequitable conduct defense impaired the patent application process.&nbsp;The public interest in robust patent opposition procedures must be&nbsp;balanced with the patent owner’s right to reap the benefit of his&nbsp;property and the investment in research it represents.</p> ER -