SECTION 151 This relates to publication of applications and issuance of the patent. The former is necessitated by the system established by H.R. 5924, for opposition and public use proceedings. As such, it is obnoxious to the individual and small corporate inventor. SECTION 154 This section changes the present law which measures the term of the patent from the grant of the patent. The latter is intended to give the inventor or applicant a set number of years for the patent term, 17. This latter system is calculated so as not to penalize the applicant for delays in examination occasioned by the Patent Office, or by delays occasioned by refilings or delays occasioned by interferences. This change to measuring the patent from the date of filing will cut down on some abuses by applicant arising in connection with deliberate delays and interferences in repeated refilings. However, it is only acceptable if the Congress is willing to meet the necessary budget demands of the Patent Office for more examiners, better quarters, etc., to insure a normal backlog of no more than three (3) or four (4) years. SECTIONS 191-194 These are entirely new and establish the machinery for a deferred examination system if the Advisory Council so directs. This is a very illogical procedure which is predicated to cut the (theoretical) backlog of the Patent Office. As such, no application which is placed on file is part of the backlog until an examination is requested. As such, the theoretical backlog of the Patent Office is zero (0) when the Act (H.R. 5924) goes into effect. In the alternative, the hope of deferred examination is that some people will not proceed with examination within the time specified for such action. As in the opposition proceeding, when one not the applicant calls for examination, his identity shall be kept secret. In addition, the procedure calls for the payment of an additional fee for examination of the application. As such, the individual or small corporate inventor is again put at a disadvantage. He must pay an additional sum for examination of his case and if he should seek to precipitate action in another's case which may be germane to his situation, he will have to pay for that, too. This is a most controversial system established by H.R. 5924 and should be fought vigorously. It favors those with the ability to pay and could result in more "secrecy" in the final analysis. It would appear to offer little advantage based upon the apparent lack of success of a similar program in The Netherlands. SECTION 251 This section, which concerns the elimination of certain reissue procedures to correct issued patents is less logical under the new system than under the old (present) laws. A reissue patent is granted to correct a deficiency in a previously issued patent. It can only be applied for under certain conditions and if it broadens the scope of the previous patent grant it must be filed within 2 years of the original patent. The reissue does not extend the term of protection. It merely runs until the end of the term of the original patent. The reissue procedure has grown up over the years due to the rather pedantic manner in which claims in a patent are obtained and interpreted in this country. In the United States we have a "peripheral" claim drafting technique and interpretation and even a slight mistake in drafting patent claims can be fatal to an otherwise meritorious invention. In Europe where the preliminary application filing and registration systems (no examination of applications) abound, the more liberal and central claim drafting technique is followed. This technique is more liberal to the patentee and allows greater latitude in the interpretation of claims. Logically, in an effort to follow the system established by H.R. 5924, together with the elimination of the broadened reissue, H.R. 5924 ought to establish the central claim drafting techniques and the central interpretation technique by the Courts. SECTION 253 This removes a procedure available to the patentee under the present law, which is calculated to either correct for inadvertence in overclaiming or to avoid a rejection by the Patent Office based upon so-called double patenting. This is a refinement in the laws like the broadening reissue, which accounts for very few patents or applications. It should be preserved under a peripheral claim drafting and interpretation technique. SECTION 256 This change is beneficial and avoids many collateral attacks upon patents based upon misjoinder or non-joinder of inventors in otherwise valid patents. SECTION 257 This constitutes a new procedure, which is conducted ex parte (between the Patent Office and patentee) for the purpose of cancelling a patent on the request of a third party. This is a procedure which favors those with the ability to pay. SECTION 271 The new subsection (b) is desirable and covers the importation of infringing goods. However, in H.R. 5924 the section qualifies the availability of the remedy by predicating it upon the lack of available patent protection abroad. This is contrary to the suggestion by the Presidential Commission. The Presidential Commission's suggestion should be followed. SECTION 273 This is a most complex section which attempts to cover up some of the ills resulting from the use of an invention during the period after publication of the application and before grant of the patent. It sets up certain criteria for establishing the ad interim liability by an unauthorized user, but it specifies that the applicant or inventor must license the invention to the unauthorized user. This is most unfair and shows another facet of the bill, a diminution of the patent right. SECTION 294 This is a most deceiving provision. While it appears to be acceptable and fair if a patent is first declared invalid, it does not take into consideration a situaton where a patent claim is declared invalid after having been held valid once, twice or more times. Again the corollary holding is not included, i.e., that a decision holding a claim valid shall be given equal weight or at least not overturned unless clearly erroneous. Again, if the Presidential Commission wanted to avoid the problem and still do something about the abuse it is attempting to remedy, it should establish a centralized Court of Appeals (perhaps an expanded CCPA), where all District Court decisions would be heard in patent, trademark and copyright matters, etc. COMMENTARY COMPARISON OF H.R. 7454 WITH THE CURRENT PATENT LAWS 1. Sections 12, 13 and 14 have been eliminated from the Current Act and the following Section included as Section 12: "SEC. 12. Research and studies The Commissioner shall conduct a program of research and development to improve and expedite the handling, classification, storage and retrieval of patents and other scientific and technical information. 2. Section 25 has been cancelled from the current Act and the following Section 25 substituted in its place: "SEC. 25. Oath and declaration in lieu of oath "(a) An oath to be filed in the Patent Office may be made before any person within the United States authorized by law to administer oaths, or, when made in a foreign country, before any diplomatic or consular officer of the United States authorized to administer oaths, or before any officer authorized to administer oaths in the foreign country in which the applicant may be, whose authority shall be proved by certificate of a diplomatic or consular officer of the United States, and such oath shall be valid if it complies with the laws of the state or country where made. "(b) The Commissioner may by rule prescribe that any document to be filed in the Patent Office and which is required by any law, rule, or other regula tion to be under oath may be subscribed to by a written declaration in such form as the Commissioner may prescribe, such declaration to be in lieu of the oath otherwise required. "(c) Whenever such written declaration is used, the document must warn the declarant that willful false statements and the like are subject to punishment including fine or imprisonment, or both. 3. Section 100 has added thereto the following language: "(e) The term 'applicant' means any person who has filed an application for patent as provided in this title. 4. Section 105 is added as follows: "SEC. 105. Computer programs not patentable. "A plan of action or set of operating instructions, in whatever form presented, to cause a controllable data processor or computer to perform selected operations shall not be patentable. 5. Section 111 is deleted from the current Act and new Section 111 substituted as follows: "SEC. 111. Application for patent "(a) An application for patent may be filed by either the inventor or the owner of the invention sought to be patented. The application shall be made in writing to the Commissioner, shall be signed by the applicant and include the name of each person believed to have made an inventive contribution, and shall be accompanied by the prescribed fee. An application filed by a person not the inventor shall include, at the time of filing, a statement of the facts supporting the allegation of ownership of the invention. "(b) A complete application for patent shall include: "(1) a specification as prescribed by section 112 of this title; "(2) a drawing as prescribed by section 113 of this title; and "(3) if filed by the inventor, an oath prescribed by section 115(a) of this title. 6. Sections 115 and 116 have been deleted from the current Act and the following sections substituted: "SEC. 115. Oath of applicant "(a) The applicant for a patent, if he is the inventor, shall make oath that he believes himself to be the original inventor of the subject matter sought to be patented and shall state of what country he is a citizen. (b) The applicant for a patent, if he is not the inventor, shall prior to the grant of a patent: “(1) file an oath by the inventor containing the averment prescribed in subsection (a) of this section and "(2) record in the Patent Office an assignment, if ownership resulted from an assignment, or proof of ownership, in other cases. "(c) The applicant who has filed an application for patent pursuant to section 117 of this title may make the oath required by subsection (b) of this section, so varied in form that it can be made by him. "SEC. 116. Joint inventors "(a) When two or more persons have made inventive contributions to subject matter claimed in an application, they shall apply for a patent jointly and each sign the application and make the required oath, or, if the application is filed by some other person having the right to do so, they shall be named as the inventors. "(b) In an application for patent for a joint invention, it shall not be necessary for each person named as joint inventor to be a joint inventor of the invention asserted in each claim. "(c) If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Commissioner, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may publish the application and grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application. 7. Section 118 has been deleted from the current Act and the following substituted in its place: "SEC. 118. Action when no oath or assignment can be obtained "Whenever an application is filed by someone not the inventor and the inventor refuses to execute the oath required by section 115(b) (1) of this title or an assignment, or cannot be found or reached after diligent effort, the Commissioner may, on proof of the pertinent facts and a showing by the applicant that such action is necessary to preserve the rights of the parties, and on compliance with such regulations as he prescribes, grant a patent in the name of the inventor. 8. The second paragraph of Section 119 has been deleted from the current Act and the following paragraph substituted in its place. "(b) No application for patent shall be entitled to this right of priority unless the claim thereof and a certified copy of the original foreign application, specification and drawings upon which it is based are filed in the Patent Office within six months of the application filing date. Such certification shall be made by the Patent Office of the foreign country in which filed and show the date of the application and the filing of the specification and other papers. The Commissioner may require a translation of the papers filed if not in the English language and such other information as he deems necessary. 9. Section 121 has been deleted from the current Act and the following Section substituted in its place: "SEC. 121. Divisional applications "(a) If two or more independent and distinct inventions are claimed in one complete application, the Commissioner may require the application to be restricted to one of them. The Commissioner may by rule dispense with signing and execution in the case of an application directed solely to subject matter described and claimed in the original application. "(b) The validity of a patent may not be questioned for failure of the Commissioner to require the application to be restricted under subsection (a) of this section, nor may the validity of either of two or more patents resulting from and in accordance with a requirement under said subsection (a) be questioned solely because of the existence of several patents, if the subsequent application is filed in accordance with the provisions of section 120 of this chapter. 10. Section 135 has added thereto the following paragraph: "(e) In making determinations of priority under this section and other sections of the Statute the parties shall be able to show any and aiì such dates for the respective acts but shall only be entitled to rely upon dates of conception and reduction to practice no earlier than two years prior to the date of filing the first filed parent application for patent in the United States Patent Office. 11. Section 141 has been cancelled from the Act and the following section substituted in its place: "SEC. 141. Appeal to Court of Customs and Patent Appeals "An applicant dissatisfied with the decision of the Board of Appeals may appeal to the United States Court of Customs and Patent Appeals. A party to an interference dissatisfied with the decision of the Board of Patent interferences on the question of priority may appeal to the United States Court of Customs and Patent Appeals. 12. Sections 145 and 146 have been cancelled from the current Act. 13. Section 152 has been deleted from the current Act and the following substituted in its place: "SEC. 152. Issue of patent to assignee. "Patents may be granted to the assignee of the inventor of record in the Patent Office, upon the application made by the inventor or assignee as otherwise provided by this title. 14. Section 154 has been deleted and the following substituted in its place: "SEC. 154. Contents and terms of patent "(a) Every patent shall contain a grant to the applicant, his heirs or assigns. of the right, during the term of the patent to exclude others from making, using, or selling the invention throughout the United States, referring to the specification for the particulars thereof. A copy of the specification and drawings shall be annexed to the patent and be a part thereof. "(b) The term of a patent shall expire twenty years from the date of filing the application in the United States or, if the benefit of the filing date in the United States of a prior application is claimed, from the earliest such prior date claimed. In determining the term of the patent, the date of filing any application in a foreign country which may be claimed by the applicant shall not be taken into consideration. "(c) The term of a patent whose issuance has been delayed by reason of the application having been ordered kept secret under section 181 of this title shall be extended for a period equal to the delay in issuance of the patent after the notice of allowability referred to in Section 183 of this title. 15. The following paragraph was added to Section 184: "(c) A retroactive license may be granted at any time notwithstanding the fact that a corresponding United States application has matured into a patent. Such retroactive license shall have the same force and effect as if granted during the pendency of said application. 16. The third paragraph of Section 251 has been changed to read as follows: "(c) The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent. 17. Section 256 was deleted and the following substituted in its place: "SEC. 256. Correction of named inventor "Omission of an inventor's name or inclusion of the name of a person not an inventor, without deceptive intent shall not affect validity of a patent, and may be corrected at any time by the Commissioner in accordance with regulations established by him or upon order of a Federal Court before which the matter is called in question. Upon such correction the Commissioner shall issue a certificate accordingly. 18. The following was added to Section 271: "(e) Whoever, without authority of the patentee, imports into the United States, for purposes of trade or use in trade or industry, a product made in another country by a process patented in the United States shall be liable as an infringer. COMMENTARY H.R. 7454 (S. 1691) H.R. 7454 is designed to update the Patent Act of 1952, which effected major reforms to the Patent Laws which have served this country's needs exceptionally well. This bill takes into consideration the practical desires and interests of the individual inventor, the small corporate inventor and the profession, not to mention the large corporation and the public interest as well. H.R. 7454 effects changes to meet today's needs for the mutual benefit of all concerned. The Patent System in this country has evolved over the years from decisions of the Federal Courts and proceedings in the Patent Office involving the Government, the public, the profession and the inventor. It therefore has undergone small, but evolutionary change at least since 1836. Those who are not concerned with the Patent System on a day-to-day basis might be inclined to think that little, if any, change has taken place since our Founding Fathers wrote into the Constitution of these United States a provision whereby Congress was charged with the responsibility of awarding a privilege to inventors in an effort to promote the progress of the useful arts. Such is not the case. One need only delve into the hearings and reports at the time the 1952 Act was being debated in the Congress to find the answer to this question. Over the years the examination (Patent) system in this country has worked well. Economists who feel that invention and economic growth are "terra incognita" are coming to the increasing realization that the Patent System in this country plays a significant role in economic activity. The Patent System in this country must have accounted for some good, because the world faces a "technology gap" when it measures up to the United States. The Soviet certainly has caught up with the economics of a strong patent system as evidenced by its new domestic and foreign policy concerning patents and patent licensing. The Patent System in this country is directly responsible for income from abroad well in excess of 600 million dollars a year. With a budget of about 35 million dollars for 1967, it would appear that the Patent System is more than self-sustaining. In addition, when one considers the investment of capital and employment of labor as a result of new inventions and the fact that close to 60% of the patents granted in this country are worked during the effective life of the patents, there is no doubt that it is substantially self-sustaining. The Patent System in this country is somewhat unique as Patent Systems go because it is available on a practical basis to all segments of our economy, large and small, private and public. It also promotes early disclosure of the detailed technology encompassed within a formal patent application, because our system holds out to the first inventor the grant of a patent after examination, which patent, when granted, has a presumption of validity. There are no requirements for working the patent or paying maintenance fees to keep the patent in effect after grant. There are no long drawn-out and costly procedures during or after the grant of a patent, whereby the intended patentee can be worn away by opposition, public use and cancellation proceedings. In addition, the secrecy of the patent application in the Patent Office before grant of the patent does not promote secrecy of the technology. The commitment as to the scope of the invention covered by the application is delayed and held |