of a rule such as is included in section 100 (h) (1) of S. 2597 under which patents are considered prior art only on the basis of their U.S. filing dates, and their foreign filing dates are ignored in this consideration.

RECOMMENDATION NO. II: PRELIMINARY APPLICATIONS

As explained above in connection with the discussion of the grace period, the President's Commission recommended in the Patent Reform bill the establishment of a system whereby an applicant could obtain an early legal filing date for his invention by filing a preliminary application. Such a preliminary application would be very desirable if a first-to-file system is adopted and if the present grace period is eliminated. On the other hand, if a modified first-to-file rule were to be enacted and a grace period retained, there would not be the same necessity to provide for preliminary applications. However, even if preliminary applications were eliminated because of the adoption of a modified first-to-file rule, it has been suggested that it might be desirable to make complete applications more flexible by providing that applicants, for a period of one year, could delay submission of all but $10 of the filing fee, claims, and formal patent drawings. This flexibility could provide a savings for applicants who decided at the end of the year to file an international application under the proposed Patent Cooperation Treaty or to abandon or to publish the application. Therefore, if the Committee were to recommend a modified first-to-file system, it may wish to consider providing such flexibility for complete applications.

RECOMMENDATION NO. III: EXCEPTIONS TO PRIOR ART

The President's Commission recognized the need for "temporary protection" for an invention displayed at an official international exhibition and further recommended that an unauthorized public disclosure of an invention derived from an inventor or his assignee shall not constitute prior art against the inventor provided he files a complete application within six months of an unauthorized public disclosure.

The provision for a six-month personal grace period contained in Senator Long's Amendment No. 182 (noted above), or the provision of a one-year absolute grace period of section 100 (h) of S. 2597, would obviate the need for specific exemptions from prior art as recommended by the President's Commission, and they are omitted from S. 2597.

RECOMMENDATION NO. IV: CLASSES OF PATENTABLE SUBJECT MATTER

Section 106 of S. 1042 implements the recommendation of the President's Commission that computer programs be specifically excluded from patentable subject matter. The Commission's recommendation followed from its view that searches would not be feasible in this area, and that, without such a search, the patenting of computer programs would amount to mere registration. The Commission further noted that the "creation of programs has undergone substantial and satisfactory growth in the absence of patent protection and that copyright protection for programs is presently available."

S. 2597 contains no similar or analogous provision.

Although there have been no specific judicial determinations as to whether computer programming is or is not patentable subject matter, the Patent Office has taken the view that computer programs are not patentable under present law, and no patent has been issued on a computer program per se. Section 106 of the bill would codify this interpretation by providing that computer programs are not patentable. It is our opinion, however, that there are some difficulties involved in finding an adequate definition for computer programs and that it may be premature to enact legislation in this area at the present time. If section 106 of the Patent Reform bill were to be excluded from any patent legislation which the Committee recommended, we would urge that the legislative history reflect that the omission was not intended to pass judgment on the question of patentability of computer programs.

RECOMMENDATION NO. V: ASSIGNEE FILING AND JOINDER OF INVENTORS

Assignee filing

Under existing law, an application for patent must be made by the inventor himself except under special cicumstances, for example where he is deceased or

otherwise unavailable; and an application must be signed by the inventor. To simplify filing for patents resulting from organized and cooperative research and development, the Commission recommended that the owners of inventions, as well as the inventors themselves, be permitted to file patent applications. This recommendation is adopted in S. 1042 in section 111(a).

Prior to publication of the application, on the other hand, section 115 (b) of S. 1042 requires that a declaration or oath of originality be made by the inventor and that a specific assignment be recorded in the Patent Office.

S. 2597 adopts in section 111 a provision permitting owners as well as inventors to file patent applications; however, this provision differs from that recommended by the Commission in that it does not require, during the pendency of the application, a declaration or oath of originality by the inventor or a specific assignment of the invention. Sections 111(a) and 115 of S. 2597 merely require, in applications filed by the owner of the invention, a declaration of originality by the owner and a statement of facts supporting the allegation of ownership of the invention. S. 2597 also permits, in section 111(b), applications to be filed by an agent of the inventor or owner "provided the application is ratified by the signature of the inventor or owner within six months."

While the S. 2597 approach would simplify the obtaining of patents by owners or assignees, we question whether it provides sufficient protection for the rights of the inventors. S. 2597 does include as a safeguard the requirement that the inventor be served by first class mail with a copy of an application field by an owner within ten days after filing of the application. We believe, however, that this places an unfair burden upon the inventor, since it compels him to take positive action to overcome assertion by another of title to his invention. Moreover, the absence of an oath by the inventor would foreclose an important avenue for learning of prior public uses and other potential statutory bars. In addition, the absence of a specific assignment from the inventor to the owner-applicant could lead to uncertainties as to the right of the applicant to the patent. For these reasons, the Department strongly opposes the assignee filing provisions of S. 2597 in favor of those of S. 1042.

Joinder of Inventors

Section 116 of present title 35 provides that "when an invention is made by two or more persons jointly, they shall apply for patent jointly." Patents typically contain a number of claims, each defining the invention in varying terms. The existing section 116 has been interpreted as requiring each person named as a joint inventor to be a joint inventor with respect to each claim in an application. This technical requirement gives rise to numerous problems. Both S. 1042 [§ 116(b)] and S. 2597 [§ 116(b)] would remove this technical requirement by providing that "in an application for patent for a joint invention, it shall not be necessary for each person named as a joint inventor to be a joint inventor of the invention asserted in each claim." We support this provision.

Both S. 1042 [§ 111(d)] and S. 2597 [§ 111 (e)] would simplify the correction of incorrectly named inventors by providing that "omission of an inventor's name or inclusion of the name of one not an inventor, without deceptive intent, may be corrected at any time, in accordance with regulations established by the Commissioner." [See also § 256 of S. 1042 and S. 2597.]

Again we support such a provision. It removes unnecessary technical problems in existing law.

RECOMMENDATION NO. VI: CLAIM FOR PRIORITY DATE

Under section 119 of present title 35, a claim for priority based on an earlier foreign filed application must be made in the U.S. application before the U.S. patent is granted, or at such time during the pendency of the U.S. application as required by the Commissioner, but not earlier than six months after the filing of the U.S. application. Under section 120, a claim for the priority of the filing date of an earlier filed U.S. application may be made at any time during the pendency of the later filed application.

The President's Commission recommended that "any claim for a priority date based on an earlier U.S. or foreign application must be made at the time a complete application is filed." The Patent Reform bill adopts this recommendation in sections 119 (b), 120(a) (4), and 120(b) (4). S. 2597 in part adopts this recommendation by requiring that a claim for foreign priority must be made at the time of filing, but "amendment of such claim may be made during examination or reexamination of the application" [§ 119 (b)]. S. 2597 requires that a

claim for priority based on an earlier filed U.S. application must be made "at the time of filing the later application, or by amendment thereof" [§ 120 (a) (4)]. We support the proposal of the President's Commission regarding the time for claiming a priority date since such claim provides a basis for determining what references may be applied as prior art against an application and, with regard to a claim for priority based on an earlier filed U.S. application, affects the term of the patent. However, where the later application no longer claims the subject matter of the earlier application or where the applicant is able to show due cause for failure to assert a priority claim at the time of filing, the Committee may wish to consider including provisions for amending a claim of priority.

RECOMMENDATION NO. VII: PUBLICATION

Patent applications, under existing law, are retained in confidence by the Patent Office until a patent is granted, at which time publication of the invention occurs. The Commission recommended that pending applications, regardless of their status, be published within eighteen to twenty-four months of their earliest effective filing date, or earlier if the case were found allowable, or upon the applicant's request.

The recommendations of the Commission are adopted in S. 1042 in sections 123 and 151.

S. 2597, on the other hand, would permit publication only after an application was found to be allowable by the Patent Office, following an examination, or earlier at the request of the applicant [§§ 123, 151].

We support the proposal of the President's Commission for early publication of pending patent applications. As the Commission noted, early publication would not only prevent needless duplication and promote technological advances, but it would also advise members of the public of their potential liability.

The question of whether there should be automatic publication of all applications within eighteen to twenty-four months of their filing date is not critical in view of the projected work schedules of the Patent Office. Under these schedules, a large majority of applications can be fully examined and either allowed or finally rejected within twenty-four months after their filing dates. However, we regard it as quite important that an application be published upon the filing of an appeal or the declaration of an interference since these proceedings are frequently quite lengthy and could unduly delay publication of the application involved.

If the automatic publication provisions of S. 1042 were eliminated as proposed in S. 2597, it would be quite important, in our view, that there be mandatory publication of applications upon appeal and the declaration of an interference.

RECOMMENDATION NO. VIII: CONTINUING APPLICATIONS

Under existing law, a continuation application (i.e., an application containing the same technical subject matter as a previous application) must be filed in order to obtain the date of the previous application "before the patenting or abandonment of or termination of proceedings on" the earlier filed application (see section 120). It is also provided that a "continuation application" may obtain the benefit of the filing date of an earlier filed application and, in turn, may be "similarly entitled to the benefit of the filing date" of still another earlier filed application. The President's Commission recommended first that a continuation application must be filed before the abandonment or allowance of, or an appeal in, the earlier filed application, and second that the benefit of the filing date for an application may not be preserved through a chain of subsequently filed applications. S. 1042 adopts in section 120 (b) the Commission's recommendation.

S. 2597 would retain existing law with respect to the time of filing a continuation application (i.e., merely before the end of prosecution of the earlier filed application) and also would specifically permit the preservation of the filing date through a chain of any length of consecutively filed continuation application [$120 (a)].

The Commission's recommendation would provide assurance that an applicant could not delay unduly the issuance of a patent by the filing of a chain of continuation applications. On the other hand, the provision under which a patent would expire twenty years from the earliest U.S. filing date (rather than seventeen years from the issue date as at present, see Recommendation No. XVIII) would serve to discourage such delaying tactics. Thus, if the twenty-year term

provision is adopted, implementation of the Commission's recommendation with regard to continuing applications becomes less important.

RECOMMENDATION NO. IX: STANDBY OPTIONAL DEFERRED EXAMINATION

The President's Commission recommended that legislation be enacted to give the Secretary of Commerce standby authority to institute a system of deferred examination. Under the recommended system, an application would be examined only upon the request of the applicant or third parties during the first five years following its date of filing. The Commission recommended that such a system be established by the Secretary of Commerce only if necessary in view of an increasing backlog.

The Patent Reform bill in sections 191-194 would provide authority to the Secretary of Commerce to institute a system of deferred examination if the Secretary determined such action to be in the public interest.

In testifying on these sections, the Department of Commerce has expressed the view that it would not institute a system at the present time even if the authority were provided, and that if the present workload schedules and plans for international cooperation come into effect, the deferred examination system would not be necessary any time in the foreseeable future.

There are no provisions in S. 2597 for a deferred examination system. Although standby authority as provided in S. 1042 would be desirable, in our view, the maiter is not of major significance at this time in view of our anticipated work schedules.

RECOMMENDATION NO. X: BURDEN OF PERSUASION

There is at present no specific provision in title 35 as to whether an applicant has the burden of persuading the Patent Office that his invention is patentable. However, the Commissioner of Patents has instructed the examining corps that "any application covering an invention of doubtful patentability should not be allowed, unless and until such doubt is removed in the course of examination and prosecution, since otherwise the resultant patent would not justify the statutory presumption of validity, nor would it 'strictly adhere' to the requirement laid down by Congress in the 1952 act as interpreted by the Supreme Court.” The Commissioner was referring to the recent Supreme Court decisions, for example, Graham v. John Deere Co., Calmar Inc. v. Cook Chemical Co., and Colgate-Palmolive Co. v. Cook Chemical Co., 383 U.S. 1 (1966), which gave support to the position of the Presidential Commission in recommending that “an application for patent shall have the burden of persuading the Patent Office that a claim is patentable." This standard is written into the Patent Reform bill in section 137.

S. 2597 contains no similar provision.

Although we feel that the law presently places the burden of persuasion on the applicant, the Department would favor a statutory codification of this rule.

RECOMMENDATION NO. XI: CITATION PERIOD

Because patent applications are now retained in confidence by the Patent Office until the issuance of a patent, there can be no formal procedure permitting third parties to know about pending applications and submit to the Office reasons why a patent should not be issued. The President's Commission recommended the establishment of a citation period prior to issuance of the patent, which would follow the publication of a pending application found allowable. Under this procedure, third parties would be permitted to cite prior patents and publications relevant to the patentability of the invention, to institute public use proceedings to uncover undocumented prior art, and to oppose the issuance of the patent on the ground that the inventor named in the application derived the invention from someone else. S. 1042 incorporates this recommendation, principally in sections 136 and 151.

S. 2597 provides almost identical provisions with the addition of another ground for opposition, namely that the inventor named in the application was not the first inventor of the invention [§§ 136, 151]. This latter ground follows from the provision in S. 2597 for limited priority contests.

This Department favors the citation period recommendation; however, if a modified first-to-file system of priority were to be adopted, we would favor modification of the additional ground for opposition included in section 136(d) (3) of S. 2597. To be consistent with the modified first-to-file principle, we would not

permit junior party applicants to raise the issue of prior inventorship under section 136 (d) (3). This modification would insure that patents would always issue to the first applicant to file and that any priority contest for patent rights would be carried out under section 137.

RECOMMENDATION NO. XIII: PRESUMPTION OF CORRECTNESS

There is no provision in existing title 35 regarding the weight to be given a Patent Office decision denying a patent claim when that decision is appealed. The United States Court of Appeals for the District of Columbia stated in Reynolds v. Aghnides, 148 U.S.P.Q. 245, that “doubt as to patentability is to be resolved in favor of the correctness of administrative action."

The President's Commission felt this should be the rule in all review of Patent Office decisions and recommended that "a Patent Office decision refusing a claim be given a presumption of correctness, and shall not be reversed unless clearly erroneous."

The Patent Reform bill, in adopting the Commission's recommendation, provides that "Patent Office decisions shall be given a presumption of correctness" and "shall be upheld unless . . . without substantial basis or not in accordance with law" [section 148].

S. 2597 has no similar provision.

In our view, Patent Office decisions should be given a presumption of correctness and we support this recommendation of the President's Commission; however, we do not regard the latter portion of this provision, which requires that Patent Office decisions be upheld unless without substantial basis or not in accordance with law, to be necessary.

RECOMMENDATION NO. XIV: REVIEW BY COURT OF APPEALS

Under existing law an applicant dissatisfied with a decision of the Patent Office may either (1) appeal on the record to the Court of Customs and Patent Appeals [§ 141] and thence to the Supreme Court by a writ of certiorari or (2) file a civil action against the Commissioner of Patents in the District Court for the District of Columbia [§ 145] with appeal to the Court of Appeals for the District of Columbia and reviewed by the Supreme Court by writ of certiorari. The President's Commission recommended that "Either the applicant or the Patent Office may appeal from a decision of the Court of Customs and Patent Appeals to the United States Court of Appeals for the District of Columbia Circuit, and from a decision of the latter court either may petition the Supreme Court for a writ of certiorari."

The Patent Reform bill follows the recommendation of the Commission in section 147 providing that any party or the Commissioner of Patents dissatisfied with the decision of the Court of Customs and Patent Appeals may seek a review by requesting permission of the U.S. Court of Appeals for the District of Columbia Circuit to allow an appeal.

S. 2597 would consolidate the review of all Patent Office decisions in the Court of Customs and Patent Appeals which would be increased by four judges making a total of nine sitting on the Court [28 U.S.C. 211 as would be amended by Sec. 2(a) of S. 2597]. The Court would have a trial part for civil actions under section 145 and an appellate part for appeals from the trial part and appeals from the Patent Office under section 141. The judges of the Court of Customs and Patent Appeals would "sit on the Court and in its divisions in such order and at such time as the Court directs" [28 U.S.C. 215 as would be amended by Sec. 2(a) of S. 2597]. Decisions of the Court might be reviewed by the Supreme Court by writ of certiorari.

In recommending Court of Appeals review of decisions of the Court of Customs and Patent Appeals, the Commission was endeavoring to eliminate conflicting decisions on points of substantive law and to achieve uniform standards of patentability. The Commission chose the Court of Appeals as the reviewing court because it is a court of general jurisdiction which is exposed to a broad spectrum of cases involving many fields of law.

On the other hand, S. 2597 would provide for direct review of Patent Office decisions solely by a special court of limited jurisdiction. S. 2597 would create a unique federal court in which there would be no clear line between the appellate body and the lower court and in which the judges of the same court could presumably review each other's decisions. In commenting on a similar arrangement provided for by S. 1691. Assistant Attorney General Donald F. Turner stated that the "proposal would further divorce the trial of patent cases from a trial