This suggests that there should be some mechanism whereby a true adversarial proceeding can be conducted to determine whether a patent should have been issued at all. 148
Section 302 allows “[a]ny person at any time [to] file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301 of this title.”149 Could the reexamination process be used to mount an inoperability rejection? The limitations of such an approach are apparent. First, the reference to “prior art” (that is, the public knowledge available at the time of the invention)150 suggests that subsequent studies conducted after a patent has been filed would be useless in determining inoperability. Second, only printed publications or other patents are allowed as evidence. This would obviously preclude expert testimony that an invention violates a particular scientific principle. Third, under 35 U.S.C. section 151
303, the Director of the U.S. Patent and Trademark Office discretion to decide whether a reexamination will go forward,
whether the reexamination process is the proper venue for an after-the-
fact utility objection. Finally, the cost of reexamination ranges from $2,520 to $8,800, concerned citizens from raising objections. filing a request for which may preclude 154
However, a patent can also be challenged for inoperability by bringing a case against the patent holder in federal court. Unfortunately, the cost of prosecuting an action in federal court is at least as prohibitive as the cost of reexamination for interested third 155
so, there is no legal mechanism for a third party to challenge a patent during the application stage. Levine et al., supra note 147, at 1989.
See infra Part V.C for a discussion of possible postissuance solutions to
the problem of inoperable patents.
149. consisting bearing on
35 U.S.C. § 302. Section 301 of Title 35 refers to “writing prior art of patents or printed publications which that person believes to have a the patentability of any claim of a particular patent.” 35 U.S.C. § 301.
150. 151. 152.
BLACK’S LAW DICTIONARY 119 (8th ed. 2004). 35 U.S.C. § 301. This position was previously known as the Commissioner of Patents. See
Intellectual Property and Communications Omnibus Reform Act of 1999, Pub. L. No. 106-113, § 4732(a), 113 Stat. 1501A-582 (1999).
35 U.S.C. § 303(a) (“Within three months following the filing of a
the patent concerned is raised by the request . . . .”).
Cir. 1999) (involving a utility challenge brought before a federal court).
[35 U.S.C. section 302], of patentability affecting
http://www.uspto.gov/web/offices/ac/qs/ope/fee2006may15.htm (last visited Nov. 1,
See, e.g., Process Control v. HydReclaim Corp., 190 F.3d 1350 (Fed.
request for reexamination under the will determine whether a substantial
provisions of new question