Patent Law and Theory
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Patent Law and Theory

A Handbook of Contemporary Research

Edited by Toshiko Takenka

This major Handbook provides a comprehensive research source for patent protection in three major jurisdictions: the United States, Europe and Japan. Leading patent scholars and practitioners join together to give an innovative comparative analysis both of fundamental issues such as patentability, examination procedure and the scope of patent protection, and current issues such as patent protection for industry standards, computer software and business methods. Keeping in mind the important goal of world harmonization, the contributing authors challenge current systems and propose necessary changes for promoting innovation.
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Chapter 8: Patent Office Oppositions and Patent Invalidation in Court: Complements or Substitutes?

Jay P. Kesan


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 profits and licensing fees accruing to patent holders guarantees that the creator of any valuable invention will...

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