The Reexamination Power of Patent Infringers and the Forgotten Inventor

Author:Douglas Duff
Position:Registered Patent Agent. J.D., 2013, Capital University Law School; B.S. Mechanical Engineering, 2005, Wright State University
Now threatened, an inventor’s rights were once secured. Protection of
the inventor dates back to our founding fathers drafting directly into the
United States Constitution the availability of patents “[t]o promote the
Progress of Science and useful Arts, by securing for limited Times to
Authors and Inventors the exclusive Right to their respective Writings and
Discoveries.”1 The American patent system, established by the U.S.
Constitution, relies upon providing incentive for three types of activities.2
The patent system must provide incentive for the inventor to invent, to
disclose, and to risk capital.3 Furthermore, the incentive offered by the
government in its patent bargain with the inventor must come with
minimal interference to foster the motivation of an inventor to invent, to
Copyright © 2013, Douglas J. Duff.
* Registered Patent Agent. J.D., 2013, Capital University Law School; B.S. Mechanical
Engineering, 2005, Wright State University. The autho r is a former patent examiner at the
United States Patent and Trademark Office and a former design engineer employed in the
fluid machinery industry. The author would like to thank Professor Stephen Grant and Paul
Roderer for their feedback and the author’s wife, Angela, for her steadfast support.
1 U.S. CONST. art. I, § 8, cl. 8. William Thornton, a superintendent of patents during the
Nineteenth Century, “viewed the patent system as an institution designed to serve and
reward inventors.” Andrew P. Morriss & Craig Allen Nard, Institutional Choice & Interest
Groups in the Development of American Patent Law: 1790–1865, 19 SUP. CT. ECON. REV.
143, 156 (2011).
2 John B. Campbell, Jr., What’s the Deal Now? A Business Perspective Analysis of the
U.S. Patent System and Recent Changes to the Patent Laws, 10 TEX. INTELL. PROP. L.J. 293,
297 (2002).
3 Id. See also Thomas L. Irving et al., The Significant Federal Circuit Cases
Interpreting Section 112, 41 AM. U. L. REV. 621, 622–23 (1992) (“The modern U.S. patent
system has three purposes: first, to encourage invention by offering potential rewards to the
individual inventor; second, to encourage industry to assume the risks of financing research,
developing products, and introduci ng new products to the marketplace; and t hird, to
discourage an atmosphere in which industrial design and technological development are
clouded in secrecy, and scientific progress is hidden from the public.”).
disclose, and to invest.4 Only when this delicate contractual balance is
struck will the patent system serve to advance technological progress.5
Patent reexamination has become such a colossal and powerful
administrative instrument that it threatens to disrupt this delicate balance
and destroy patent rights previously granted through the patent bargain.6 A
multitude of reexamination benefits for third parties reveals a dominant
method to supplement or replace litigation when a reexamination petitioner
seeks to terminate the patent rights of an inventor. These third party
reexamination requesters are typically accused infringers, but may include
anonymous competitors.7 Infringer-friendly reexamination characteristics
4 Chief Justice Marshall articulated the contract metaphor of patent law in Grant v.
Raymond, 31 U.S. 218, 242 (1832). The recognition of a quid pro quo contract between the
United States and the inventor continues today. J.E.M. Ag Supply, Inc., v. Pioneer Hi-Bred
Int’l, Inc., 534 U.S. 124, 142 (2001) (“The disclosure required by the Patent Act is ‘the quid
pro quo of the right to exclude.’”). See also John C. Hughs, The Disruption of the U.S.
Constitutional Symmetry of Intellectual Property to Gain Conformity with an International
Property Framework; A Road to a Global Market or a Tripping Point to the Gradual
Collapse of the U.S. Economy?, B.C. INTELL. PROP. & TECH. F., June 8, 2004, at 1,
CONSTITUTION.pdf. Due to the ex parte nature of ad ministrative patent proceedings, the
government represents the people of the United States as th eir agent. Eric D. Zard,
Comment, Patentability of Human Genetic Information: Exploring Ethical Dilemmas
Within the Patent Office and Biotechnology’s Clash with the Public Good, 6 UNIV. OF ST.
THOMAS L.J. 486, 491 (2009). While the USPTO serves the inventor, the American people
are the parties affected by the granting of patent righ ts. Id.
5 Hughs, supra note 4, at 1–2.
6 The term “inventor,” as used throughout this Article, refers to every type of inventing
entity. However, the increasing power of reexamination especially harms individual
inventors. Christopher A. Cotropia, The Individual Inventor Motif in the Age of the Patent
Troll, 12 YALE J. L. & TECH. 52, 57 (2010). See also Mark D. Janis, Rethinking
Reexamination: Toward a Viable Administrat ive Revocation System for U.S. Patent Law, 11
HARV. J.L. & TECH. 1, 37 (1997) (quoting a USPTO commissioner who “testified that the
time and expense associated with judi cial resolution of the patent validity issue p laced
‘special hardships on small businesses and individual inventors.’”).
7 Stefan Blum, Note, Ex Parte Reexamination: A Wolf in Sheep’s Clothing, 73 OHIO ST.
L.J. 395, 412 (2012). “Infringers” or “accused infringers,” as referenced throu ghout this
Article, may include parties accused o f infringing a patent, active infringers th at have not
been discovered, or anonymous third parties such as competitors of the inventor wishing to
infringe. The term “infringer” is u sed frequently in the present analysis t o emphasize that
and rules, recent case law that makes the validity of previously granted
patents now questionable, and new patent legislation that expands the
scope of reexamination at the United States Patent and Trademark Office
(USPTO) give accused infringers greater power now than ever before.
This unprecedented power erodes the incentives that form the basis of the
patent system and disrupts the delicate and longstanding balance between
inventors and the government. The continued use and expansion of
reexamination will discourage the patenting efforts of inventors as the core
purpose of patent law—the incentive for inventors to invent, to disclose,
and to invest—is stifled, and the patent rights of inventors are
compromis ed.
A. Acquisition of Patent Rights
The relationship between a patent applicant and the USPTO is a
delicate contractual relationship.8 The government offers a patent
applicant an exclusive right to make, use, sell, or import9 an invention if
the inventor discloses certain information, performs certain tasks, and pays
certain fees.10 After spending the energy, time, and resources to create a
new and useful invention, an inventor must decide whether to expend
additional energy, time, and resources to protect that invention at the
As part of the price to obtain patent rights, an inventor must do more
than simply pay a large amount of money.11 The inventor must discl ose
the invention to the public in a formal patent application and pay filing,
an infringer benefits most from reexamination while being the least deserving of
empowerment at the United States Patent and Trademark Office.
8 Brenner v. Manson, 383 U.S. 519, 534 (1966) (“The basic quid pro quo . . . for
granting a patent monopoly is the benefit derived by the public from an invention with
substantial utility.”). See also Eldred v. Ashcroft, 537 U.S. 186, 216 (2003) (“[I]mmediate
disclosure is not the objective of, but is exacted from, the patentee. It is the price paid for
the exclusivity secured.”).
9 35 U.S.C.A. § 271(a) (West 2012).
10 35 U.S.C.A. § 111(a)(1)–(3) (West Supp. 2012).
11 The financial cost of obtaining a patent can be as much as $30,000. Damon C.
Andrews, Why Patentees Litigate, 12 COLUM. SCI. & TECH. L. REV. 219, 223 (2011).

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