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This also would avoid an anomaly whereby two applications, with the same effective filing date, would have different dates for the purpose of constituting prior art where one is based upon a foreign application. Further, it would appear to be a necessary adjunct of a first to file system, to prevent two patents from issuing on the same invention.

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To substitute for the present grace period, a first to file system should include some technique for allowing the inventor to seek support or test his invention in the marketplace. It also should encourage the free discussion of new discoveries in the academic and scientific communities. To meet these needs, a preliminary application, an "instant" form of disclosure to the Patent Office free from the delays and expense of a formal application, is proposed.

A preliminary application may be used to se-
cure a filing date for all features of an inven-
tion disclosed therein, if the disclosure subse-
quently appears in a complete application.
Requirements as to form shall be minimal and
claims need not be included.

One or more preliminary applications may be
consolidated into one complete application
filed within twelve months of the earliest pre-
liminary or foreign application relied on.

Under this recommendation an applicant would file a written description of his invention in a preliminary application, a document with minimal requirements as to form and needing no claims. This would permit early filing of an application, since it could be prepared by someone having little knowledge of patent law and procedure. Applicants should be made aware, however, that the protection afforded by a preliminary application will depend greatly upon the adequacy of the disclosure contained therein.

Additional preliminary applications could be filed to cover aspects of the invention developed subsequent to filing of the first

preliminary application. Records an inventor now must keep could be replaced by disclosures submitted to the Patent Office, where they automatically would be certified as to date. One or more preliminary applications also could be used to supplement the disclosure first presented in a foreign application.

Information contained in these applications could be disclosed to the public without risk, through publication or market testing, for example, as long as a complete application was filed within twelve months of the earliest preliminary or foreign application relied on. By a complete application is meant one which complies with present requirements for an application. Accordingly, many of the advantages of a grace period could be obtained without the associated problems.

Each claim in the complete application would be entitled, for the purpose of overcoming prior art, to the date on which its supporting disclosure was first fully presented in a validly asserted foreign, preliminary or earlier complete application. Also, disclosure in a complete application, if published, would constitute prior art as of its first presentation date.

The preliminary application technique would create no significant burden for the Patent Office. Preliminary applications need only be stamped with their date of receipt and stored pending the filing of a complete application, and even then would only be considered if the effective date of the complete application was brought into question.

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Prior art shall not include, as to the inventor
concerned, disclosures of an invention result-
ing from:

1. A display in an official or officially recog-
nized international exhibition; or

2. An unauthorized public divulgation of infor-
mation derived from the inventor;

As provided below.

1.

Two international treaties define and regulate "official and officially recognized international exhibitions." The Paris Convention for the Protection of Industrial Property requires that "temporary protection" be granted with respect to inventions exhibited at such exhibitions.

The United States has had no need for a special provision with respect to exhibitions because the present grace period protects against the adverse effect of disclosures occurring within one year before the filing date of an application. Since the Commission now suggests elimination of the grace period, a method to safeguard patent rights under these circumstances must be provided to conform to the Paris Convention.

It would appear that the preliminary application (Recommendation No. II) complies both with the spirit and the letter of the Paris Convention in providing temporary protection for inventions shown at international exhibitions. However, if a preliminary application proves not to satisfy the Convention, it is recommended that:

2.

A display at an official or officially recognized interna-
tional exhibition by an inventor, or assignee, shall not
constitute prior art against his complete application to
the extent that the information disclosed by the display
appears in a notice having the format of a preliminary
application; provided: that the notice is filed in the
Patent Office no later than the public opening of the
display and the complete application is filed within six
months after filing of the notice.

With respect to unauthorized public disclosures, it is recommended that:

An unauthorized public disclosure of information de-
rived from the inventor or his assignee shall not consti-
tute prior art against him, if, within six months after
said disclosure, a complete application for the invention
is filed by the inventor or assignee.

Any allegation, that a disclosure should not constitute
prior art because it was unauthorized, shall be consid-
ered by the Patent Office only if it is verified, sets forth
details establishing a prima facie case, and is accom-
panied by proof that notice has been served on the
party accused of making the disclosure.

If the party accused promptly contests the allegation,
the application shall not issue as a patent until the
matter is finally judicially determined in favor of the
applicant.

Currently, under certain circumstances, a disclosure will not bar the issuance of a patent if such disclosure was made within the grace period.

In the absence of this recommendation, an inventor or his assignee would lose his patent rights if an unauthorized public disclosure of the invention in any form (including patent applications or patents) was made prior to his filing an application. This recommendation furnishes a procedure to nullify the effect of such disclosure upon the inventor. It would allow the Patent Office to ignore alleged unauthorized disclosures as prior art in those instances where the allegation is not contested by the accused party. At the same time, it is designed to discourage an unsupported assertion that a disclosure should not be used to bar a patent. In a subsequent litigation, failure on the part of an accused party to contest the assertion in the Patent Office would not preclude reliance on such a disclosure to invalidate the patent.

The application would not receive the benefit of the date of the unauthorized disclosure for purposes of priority. Rather, any intervening untainted disclosure, occurring between the date of the unauthorized public disclosure and the application filing date, would constitute prior art as to the applicant. The unauthorized public disclosure also would constitute prior art as regards all other applicants.

IV

The classes of patentable subject matter shall
continue as at present, except:

1. All provisions in the patent statute for de-
sign patents shall be deleted, and another
form of protection provided.

2. All provisions in the patent statute for plant
patents shall be deleted, and another form
of protection provided.

3. A series of instructions which control or
condition the operation of a data processing
machine, generally referred to as a "pro-
gram," shall not be considered patentable
regardless of whether the program is
claimed as: (a) an article, (b) a process de-
scribed in terms of the operations performed
by a machine pursuant to a program, or
(c) one or more machine configurations
established by a program.

This recommendation would end the practice of granting patents on designs and plants. It also would eliminate whatever possibility exists under the present statute, if any, for directly or indirectly obtaining a patent covering a program or a patent covering the operation of a data processing machine pursuant to a program.

The Commission believes strongly that all inventions should meet the statutory provisions for novelty, utility and unobviousness and that the above subject matter cannot readily be examined for adherence to these criteria.

1. Designs: A patent now may be granted on any new, original and ornamental design for an article of manufacture. Despite the statutory requirement of unobviousness, patents on designs are now granted, in effect, solely on the basis of novelty. Courts often find these patents invalid on the ground that the design is obvious.

The Commission is aware of legislative proposals to protect ornamental designs against copying. Nevertheless, it believes

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