Doubling Up the Horses in Midstream: Enhancing U.S. Patent Dispute Resolution by the PTO's Adoption of the JPO's Hantei Request System

Authors

Gino Cheng, Benjamin N. Cardozo School of Law

Abstract

For entities seeking to preempt or defend against adverse claims of infringement, navigating the present U.S. patent dispute resolution system is a thorny path. Judicial standing requirements hinder a potential defendant from fully assessing its risks before making and placing in jeopardy certain investments or assuming negotiation costs, thereby increasing its accountability, the financial stakes, and the probability of retaliation. While the standing doctrine has become more favorable to would-be licensees over time, a readily accessible opining mechanism for infringement would usher in still more benefits, including those unachievable through either litigation or conventional forms of alternative dispute resolution. Although the United States Patent and Trademark Office currently lacks Congressional authorization, the agency, due to its familiarity with patent claims and technical expertise, would be a prime candidate for administering such an advisory determination procedure, comparable to the Hantei Request System offered by the Japanese Patent Office. Moreover, the domestic implementation of this system by the PTO will not suffer the same disadvantages endemic to Japan's legal system.

Disciplines

Comparative and Foreign Law | Dispute Resolution and Arbitration | Environmental Law | Intellectual Property Law | Law | Medical Jurisprudence

Recommended Citation

Gino Cheng, Doubling Up the Horses in Midstream: Enhancing U.S. Patent Dispute Resolution by the PTO's Adoption of the JPO's Hantei Request System, 9 Cardozo J. Conflict Resol. 489 (2008).
Available at: https://larc.cardozo.yu.edu/cjcr/vol9/iss2/18