Reexamination was introduced as a mechanism for curing potentially invalid patents, as an antidote to the public's and the judiciary's lack of confidence in the PTO and the patent system in general. Instead of a curative fix, however, the reexamination provisions are more akin to a diseased or lame leg on the body of U.S. patent law. Reexamination fails to support the burden of public confidence it was intended to carry. It does not act in harmony with other limbs on the body of patent law or with other bodies of U.S. or foreign law. Over the years, Congress has repeatedly introduced legislation to perform corrective surgery by adding to or cosmetically altering the existing reexamination laws. Instead of merely seeking to correct the existing problem, a more sound course of treatment would be to amputate the current reexamination proceedings in total. Congress could then provide a prosthetic leg-an invalidation procedure that does not look anything like the old limb but provides the same function. Such a procedure may be awkward at first but will eventually become natural. This Article explores the necessity of amputation and proposes a workable, realistic prosthetic invalidation procedure.
Part I will describe the history of patent reform legislation leading up to the passage of the original reexamination proceedings and continuing through Congress's most recent attempt to correct some major reexamination deficiencies via the American Inventors Protection Act of 1999 ("AlP A"). Part II will discuss and compare the original reexamination provisions, now known as "ex parte reexamination," and the new provisions added in 1999, known as "inter partes reexamination." Further, recent legislation to refine both reexamination provisions will be described. Part III will evaluate the shortcomings of both the ex parte and inter partes reexamination proceedings in light of theories and objectives of patent law. Part IV will consist of a comparative analysis of reexamination proceedings in the United States with the revocation and opposition proceedings that exist in Europe and Japan. Finally, Part V proposes a realistic recommendation that addresses these issues and considers justifications for this proposed system.
Kristen Osenga, Rethinking Reexamination Reform: Is it Time for Corrective Surgery, or Is it Time to Amputate?, 14 Fordham Intell. Prop. Media & Ent. L.J. 217 (2003)