Kesan, Jay P. --- "Patent Office Oppositions and Patent Invalidation in Court: Complements or Substitutes?" [2009] ELECD 243; in Takenka, Toshiko (ed), "Patent Law and Theory" (Edward Elgar Publishing, 2009)

Book Title: Patent Law and Theory

Editor(s): Takenka, Toshiko

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781845424138

Section: Chapter 8

Section Title: Patent Office Oppositions and Patent Invalidation in Court: Complements or Substitutes?

Author(s): Kesan, Jay P.

Number of pages: 25

Extract:

8 Patent Office oppositions and patent
invalidation in court: complements or
substitutes?
Jay P. Kesan



1 Introduction
A patent can be a powerful tool. It grants its owner exclusive rights over a
particular technology by allowing him to exclude others from the use of that
technology. It allows the inventor to exploit her unilateral control over the
technology by charging other parties for the right to use the invention (i.e. a
license). Or the inventor can retain sole access to the technology ­ charging
supra-competitive prices for a good or service that no one else can produce
without permission. Either way, the patentee retains sole control over his
invention.
From an institutional perspective, the patent system is a two-stage bargain.
At the first stage, the U.S. Patent and Trademark Office (hereafter the `PTO')
grants patent rights to inventors after examining the prior art and the patent
application to determine whether the requirements for patentability are met. At
the next stage, in order to enforce their issued patent rights, patentees have to
resort to the federal courts and an action for patent infringement. Alleged
infringers may counter by challenging in court the scope, validity, and
enforceability of patent rights issued in the first stage. Thus, the patent system
itself contemplates a role for the courts that involves reviewing the work of the
PTO.
The patent regime is typically justified by the economic argument that the
benefits it creates outweigh the costs it imposes. The possibility of high prof-
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