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3 Yale Symp. L. & Tech. [1] (2000-2001)

handle is hein.journals/yjolt3 and id is 1 raw text is: Yale Symposium on Law and Technology Fall 2000 Reexamination: A Viable Alternative to Patent Litigation? I Dale L. Carlson and Jason Craintt Cite as: 3 YALE SYMP. L. & TECH. 2 (2000) <http://lawtech.law.yale.edu/symposium/00/speechcarlson.htm> I. INTRODUCTION I I am sure that everyone in the room recognizes the significance of patent law in the popular press these days. At the outset, you may recall an article entitled Patently Absurd that appeared in the New York Times a couple of weeks ago.1 The article spoke to the issue of business method patents in light of the State Street Bank decisionz and raised the question of whether such patents have gone too far in extending the concept of patent protection. The author, James Gleick, hypothetically invents a procedure for simultaneously walking and chewing gum, and he shows drawings for the patent of this procedure, which he numbers the two-trillion-and-something patent. J2 While Gleick's vision may appear more than a little far-fetched, recent concern over the state of patent law has led Congress to pass legislation reforming patent reexamination procedures. The most significant change made by the legislation is the introduction of what is called inter partes reexamination. The effects of this new procedure will remain uncertain for the next one to two years. However, a preliminary study of inter partes reexamination suggests it will provide a viable alternative to patent litigation in many cases. II. SOME REFORM INITIATIVES A. The Patent and Trademark Office 3 The Patent and Trademark Office (PTO) has begun to respond to the sorts of issues being raised in the popular press about its methodology for conducting business method patent examinations. They have posted enhanced procedures for performing examinations on their website.1 Those procedures include using two examiners rather than one and conducting a more enhanced search protocol from the beginning. The PTO's enhanced examination hopefully enables them to act more cautiously before allowing a patent to issue on walking and chewing gum simultaneously in the first instance. B. Congress and the American Inventors Protection Act of 1999 4 In legislation that was recently enacted, the American Inventors Protection Act of 1999,4 one of the sections relates to reexamination- and another relates to the so-called First Inventor Defense Act of 1999.6 The First Inventor Defense Act of 1999 provides a defense against charges of patent infringement for a party who in good faith reduced the subject matter of the invention to practice at least one year before the effective filing date of the relevant patent and used the subject matter commercially before the effective filing date. The defense is limited to methods of doing or conducting business.

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