Third, by affording protection, a patent system encourages early public disclosure of technological information, some of which might otherwise be kept secret. Early disclosure reduces the likelihood of duplication of effort by others and provides a basis for further advances in the technology involved.

Fourth, a patent system promotes the beneficial exchange of products, services, and technological information across national boundaries by providing protection for industrial property of foreign nationals.

Having satisfied itself as to the worth of a patent system, the Commission then undertook an extensive analysis of the many studies of U.S. and foreign patent systems. The Commission also sought and received additional views, criticisms and suggestions from numerous sources, including business and trade associations, individual patent practitioners, patent law associations, groups and individuals within the Patent Office, educators, inventors, scientists, businessmen, and other interested parties. From these sources the Commission identified numerous broad areas of concern.

Recognizing that it could not consider adequately all the matters of potential concern in the limited period of its existence, the Commission selected a number of areas with which it felt it could deal most effectively. In making this choice, the Commission took into account several factors, including its own membership, present investigations by other executive and legislative groups, and the potential contribution the Commission could make in any given area.

Within the boundaries thus defined, the Commission identified the following objectives:

1. To raise the quality and reliability of the U.S.
patent.

2. To shorten the period of pendency of a patent ap-
plication from filing to final disposition by the
Patent Office.

3. To accelerate the public disclosure of technological
advances.

4. To reduce the expense of obtaining and litigating
a patent.

5. To make U.S. patent practice more compatible with
that of other major countries, wherever consistent
with the objectives of the U.S. patent system.

6. To prepare the patent system to cope with the ex-
ploding technology foreseeable in the decades

ahead.

Many of the problems related to these objectives are intertwined. An attempt to solve or reduce a problem at one point of the system can expose or create a dislocation at another. Separate and uncoordinated solutions to individual problems would yield a gerrymandered patent system full of internal contradictions and less efficient than the one we now have. is this circumstance-not any claim to superior wisdom-which led the Commission to propose the following changes, all as part of one interrelated and coherent plan.

It

RECOMMENDATIONS

Patentability of Inventions

I

The following recommendation would result in several significant changes in present practice: (a) when two or more persons separately apply for a patent on the same invention, the patent would issue to the one who is FIRST TO FILE his application; (b) there would be no grace period; (c) foreign knowledge, use and sale would be included as prior art; and (d) there would be revised criteria for the form of prior art.

Prior art shall comprise any information,
known to the public, or made available to the
public by means of disclosure in tangible form
or by use or placing on sale, anywhere in the
world, prior to the effective filing date of the
application.

A disclosure in a U.S. patent or published com-
plete application shall constitute prior art as of
its effective (United States or foreign) filing
date.

(a) In a first to file system, the respective dates of "conception" and "reduction to practice" of the invention, presently of great importance in resolving contested priority for an invention claimed in two or more pending applications or patents, no longer would be considered. Instead, the earliest effective filing date would determine the question of priority. This necessarily follows from the provision that the disclosure in a patent or published complete application shall constitute prior art as of its effective filing date. Interference proceedings thus would be abolished.

Important considerations dictate this departure from our present practice. A first to file system will: encourage prompt disclosure of newly discovered technology; substitute for the delays and expense of interference proceedings a fair and inexpensive means by which an inventor can establish priority; and bring U.S. practice into harmony with that prevailing in almost all other industrial nations.

The Commission believes it is as equitable to grant a patent to the first to file as to the one who wins an interference. Many circumstances may determine the winner in either case. But the first to file is more apt to be the inventor who first appreciated the worth of the invention and promptly acted to make the invention available to the public.

(b) Regardless of the time the invention was made, any relevant information, known or made available to the public, antedating the effective filing date of the first application containing the subject matter on which the claim to such invention is based, would constitute prior art as to such claim. Even the applicant's own earlier disclosure would bar the grant of a patent if made public before the earliest effective filing date to which the particular claim was entitled. As a result, there would be no grace period, and the question of whether the invention is obvious would be considered as of the filing date, rather than as of the time the invention was made.

This change would speed the examination procedure in the Patent Office by eliminating the time-consuming consideration of affidavits presently submitted to establish an earlier date of invention and thus overcome prima facie prior art. Also, the applicant no longer would need to maintain extensive records now required to corroborate such affidavits, or thereafter, to prove his actual date of invention in an infringement suit.

Greater international uniformity would also be achieved, since the present grace period has no counterpart in most foreign systems. Further, inventors no longer would forfeit their foreign patent rights through disclosures made in reliance on the U.S. grace period.

(c) Foreign knowledge, use and sale would be included as prior art. Present arbitrary geographical distinctions would be eliminated. The same high standard of proof now required for showing domestic public knowledge, use or sale would also be applied to such foreign prior art.

The anomaly of excluding, from prior art, public knowledge, use or sale in a border town of Mexico or Canada, and including the same kind of disclosure in Alaska or Hawaii, would be eliminated.

This change would prevent the granting of valid U.S. patents on inventions which would be unpatentable abroad, because of long use or sale there. It would be another step toward conformity with European patent laws and would promote acceptance of a common definition of universal prior art. Additionally, it would promote the establishment of international scientific data banks, thus eliminating one of the barriers to the useful exchange of search results among patent offices of various countries.

(d) "Printing," presently a technical requirement in certain circumstances, would no longer be necessary for a publication to constitute prior art. Instead, any information made available to the public in a tangible (non-oral) form, prior to the effective filing date, could so serve.

Such a change would establish as a logical and modern standard of the form of prior art: that either publicly known or made available to the public in a preservable form. It should end present disputes and avoid future controversy, by accepting as prior art typewritten copy, microfilm, computer print-out, or any other tangible expression of technological data, made available to the public.

(e) The disclosure in a patent or published complete application would have, as its effective filing date, the date of its earliest filing in the United States or a foreign country. This would resolve present uncertainty caused by conflicting court decisions.