The present first-inventor system encourages early publication and availability to the public by elimination of most hazards and has maximum effect on stimulation of competitive research.

The present first-inventor system is essential to the U.S. requirement of full and complete disclosure of how to practice the invention and to the U.S. practice of application examination and definition of the grant through peripheral claims. Countries with a first-to-file system operating at all successfully are either non-examination countries, or do not require the U.S. type of disclosure and claims. It is therefore not a feature which can be successfully adopted for the sake of "harmonization” with other industrial nations.

Certainly the imperfection of interference practice is no reason for abolishing the first-inventor rule. A step in the direction of simplifying interferences has already been made through the new Patent Office interference rules and their full effect, which could be quite beneficial, is not yet known.

We propose further steps-the elimination of interference declaration by the Patent Office as between applicants and the grant of patent to the first applicant with right in a subsequent applicant to provoke a simplified procedure in the Patent Office to determine priority.

Many of the faults with present interference proceeding are traceable to the imposition on the Patent Office, an administrative agency, of a task it is not really equipped to perform-the determination of first inventorship on the basis of evidence produced in the same manner as in a proceeding in court. If the evidence produced in the same manner as in a proceeding in court. If the evidence is confined to affidavits with supporting documents and exhibits, the Office would be able promptly to reach a priority decision based on the preponderance of such evidence in the light of existing legal concepts of conception, diligence and reduction-to-practice.

In the few cases in which the loser of the priority contest considers cross-examination of his opponent as necessary, that right could be had in a de novo proceeding conducted in a District Court either through instigation of such proceeding by a losing junior or through the present interfering patent statute (Title 35, Section 291) in the case of a losing senior. In neither case would the public be unduly prejudiced or unduly benefited by the rival inventors continuing their contest in the Courts.

One substantive change in law is contemplated. A foreigner could present his evidence of first inventorship in the same manner as a U.S. citizen and the place where the invention is made would be immaterial. This would promote international harmony in patents since our experience is that foreign criticism of U.S. interferences is not so much directed to the first-inventor system as the fact that foreigners are not permitted to prove acts performed abroad where their inventive activity naturally occurs.

Our principle would assure no delay in publication of subject matter due to priority contests. When combined with a patent term dating 20 years from filing (see Principle E) it would provide the mechanism of and strong incentive for prompt disposal of priority contests.

No substantive rights of an inventor would be destroyed, and grant to the first applicant giving rise to a prompt right of action against infringers would strongly discourage delay in filing.

Our principle achieves the objectives desired with respect to interference practice, without the disastrous effects to the U.S. system of granting patents on the basis of first-to-file.

B. A grace period is beneficial to the applicant and to the public and should be preserved.

The Commission's proposed First-to-File system eliminates the one-year period of grace before publication or public use of an invention becomes a statutory bar. There is some recognition that this would prevent necessary testing in the market place as well as early discussion in the scientific community, and this defect is supposedly cured by institution of preliminary applications (Recommendation II). The problem of derivation is also recognized (Recommendation III) but the right given by the Bill Section 105 to negate improper disclosure of one one's invention requires proof both of derivation and breach of confidential disclosure, which encourages theft and makes the exception-to-grace-period-elimination almost incapable of affording any relief.

We hold that a grace period as in the present law should definitely be preserved.

The grace period is beneficial for the same reasons as retention of the firstinventor rule. It makes it possible for inventions to be tested, modified and developed into the best possible form and for patent applications to describe inventions fully in the manner in which they are commercialized. Description before commericialization is actually impossible in many instances since the invention arises only as the commercialization occurs. The grace period results in the "weeding out" of inaccurate concepts and unworthy ideas and leads to quality in applications which are actually filed. It provides time for the applicant to compare the invention with the prior art with the result that fewer applications which do not advance the art are required to be filed.

The grace period encourages early availability of technology to the public. It permits exchange of scientific results through open discussion at technical meetings and publication in technical journals at an earlier time and in a more useful fashion than if the public first heard of an invention through patent teachings. It eliminates research duplication, leads to improvments at an earlier date and encourages disclosure to the public of the inventor's full effort in reducing the invention to practical form, which might never occur if only the concept were published by another without sufficient details to actually instruct the art.

Without the grace period the individual inventor, who is still an important factor in progress, could not demonstrate worth of his invention for the purpose of securing financial backing, and would be at a decided disadvantage in comparison with heavily-financed and organized research.

The grace period is not a real "booby-trap" with respect to foreign patent protection since large concerns interested in foreign patents can easily control publication dates and only a few civil-law non-examination countries such as France and Italy negate novelty on the basis of "prior public use anywhere", the meaning of which is itself uncertain.

No sound reasons for elimination of a grace period have been presented. The Commission says it would eliminate affidavits antedating references, but this would be offset by the need to review inexpertly prepared preliminary applications for the same purpose of antedating references.

The only other asserted benefit is international uniformity, but no real uniformity of foreign laws exists now. This is a subject best explored in connection with revision of the International Convention since it is quite possible that other countries may wish to move toward a more effective grace period harmonizing with our system.

With respect to international search reports, there is such a great variation in national definitions of prior art that an effective international search would need be made with reference both to the earliest possible priority date and the latest (generally one or two years apart). Each country would then merely delete from the search report any publication which is too late under local law or which fails to qualify for some other reason such as unavailability in the country at the priority date. Here again, we cannot unilaterally achieve harmonization with thhe diverse laws of foreign countries, and should proceed very cautiously in attempting to do so.

The ability to file preliminary applications is no substitute for the grace period. If a preliminary is to have any value in establishing rights it must disclose all features to be claimed in the complete application and its preparation could not be entrusted to one lacking knowledge of the patent law. It would be of no more value than the British provisional which experience has shown to require doubled effort and to lead to many undesirable complications.

The proposal for preliminary applications of a kind which can be filed by laymen, and which will not be published as a part of the patent, poses a particularly troublesome problem, since the complete application may be quite different in form and content. This would make it very troublesome to determine to what extent each claim may be entitled to the benefit of the date of the preliminary application. Even worse, when the patent is cited as prior art, it will be impossible to determine from the printed patent whether the subject matter relied on in it is actually in the preliminary application, which means that the effective date of a reference will not be ascertainable without examination of the Patent Office file.

The case for retention of the one-year grace period is in our opinion a very convincing one.

C. Prior art which bars grant of a valid U.S. patent on an invention shall include:

1. Public use or sale in this country of an embodiment of the invention before the grace period or before the applicant's date of invention.

2. Publication of the invention or of the fact of public use or sale of an embodiment thereof in any country, provided that such publication was both known and available in tangible form to persons in this country before the grace period or before the applicant's date of invention.

The proposals of the Commission with respect to prior art are accepted in part. Thus, with respect to public use in foreign countries, there should be a reasonable test as to qualification of the use as "public" for the purposes of our domestic patent law. Similarly, with respect to publication, the qualifying word "printed” may be somewhat obsolete, but there should be some test having a reasonable relation to the purpose.

First, a public use or sale in this country should continue to be a bar. It can be proven with reasonable facility under the Federal Rules of Civil Procedure. This does not apply to foreign acts even though close to our border, because of differences in laws and procedures.

Before discussing foreign uses, consideration should be given to manner and place of proof. "Public use" proceedings are not now provided for in the statute, although they are mentioned in the rules of the Patent Office and are occasionally commenced. They are even more troublesome and expensive than interference proceedings. It is surprising to find the Commission strongly urging complete abolition of interferences and at the same time proposing to make general use of another similar procedure.

This seems to stem from the false notion that perfection can be achieved, with absolutely all prior art considered by the examiner so that all patents will be impregnable. Since this goal can only be approached, a more reasonable statement of the role of the Patent Office is needed. The Patent Office can properly be expected to deal with published prior art but should leave the far more difficult defenses which require taking of testimony to be dealt with in the courts after litigation is commenced. Public use proceedings in the Patent Office should be eliminated.

A foreign use may be known to people in the locality, yet be completely unknown everywhere else, and particularly in the United States. In such a situation, progress is best promoted by an incentive to create the same invention in this country so it can be put to use here. When that is done by an act of original invention, patent protection should not be destroyed because an intensive search after the event may turn up an unknown use in a distant place.

Similarly, with respect to publication, irrespective of whether "printing"" is involved, the test should be whether people in this country had means of knowledge, so that the invention did not have to be recreated by an independent act of original creation.

The Commission proposed as a test that prior art be "known to the public or made available to the public by means of disclosure in tangible form". We have made this slightly more specific to require that it be both known and available in tangible form to persons in this country. This would not require that complete information actually be in this country on the critical date but only that existence of the information be known here before the critical date, and that the complete information be then available in tangible form, so that persons in the United States will have actual, practical access to the information and not have to recreate it.

Our definition does not mention foreign patents separately, since they are merely one kind of source of information. Foreign patents should be treated as prior art only if they meet the same test as any other publication, but not if they are secret or are completely unknown in this country on the critical date. The other part of the Commission's proposal, that U.S. patents based on foreign applications be treated as prior art as of the foreign filing dates, is not approved, as it has no logical basis. This proposal is an outgrowth of a recent observation that combination of language of unrelated sections of the present statute would apparently justify such use of foreign dates as the effective dates of U.S. patents as prior art. The Commission's report states that this proposal would resolve uncertainty caused by conflicting court decisions, but the conflict has now been resolved in the opposite direction by reversal of the District Court of the District of Columbia so that the courts all agree now that this proposal is not supported by the existing statute.

It is not logical to use a foreign filing date as the effective "prior art" date of a U.S. patent but not to do so in the case of a foreign patent which has no

corresponding U.S. patent. In both cases it is best not to use the foreign filing date because of uncertainties as to whether the disclosure of the patent was actually in the originally filed foreign application.

Under the first-inventor system with a year of grace, it is also desirable te retain the present defenses of prior inventorship by another, and prior patenting by the same inventor in a foreign country, but no separate discussion of these defenses appears to be necessary.

D. Applications for patent should preferably be publishd as a part of the issued patent at the time of grant.

Consequently procedures should be such as to encourage prompt action by the Patent Office and prompt response by the applicant without time-consuming com plications, so that patents can be granted and published within one or two years, as was generally the case until recent years. Nevertheless: If the patent is not granted within two years, the application should be published if it appears to contain novel subject matter and if the applicant is given an opportunity to withdraw the application to avoid publication.

The U.S. patent system is in a real sense based on contract theory. The consideration from the applicant is full disclosure to the public of his invention, and the consideration from the Government, representing the public, is the patent grant. To require disclosure through publication at a given time after filing without then assurance of grant reduces the incentive to the inventor to seek a patent and pushes him toward the protection of secrecy, which is directly contrary to the objective of public disclosure of technological advances, the very objective sought by the Commission in its Recommendation VII.

Other objectives would also suffer in that publication of applications without regard to novelty of content would produce much duplication in disclosures (not even permitted in scientific journals) thereby adding "paper" only to the "explosion" with which one has to cope and inevitably lengthening the pendency of patent applications.

On the other hand, when there is delay in grant of a patent with a disclosure which does advance the art, and if the applicant wishes to waive some of his "quid-pro-quo", there should be provision for applicant-authorized pre-grant publication.

E. The term of a patent shall expire 20 years from the filing of the first United States application on which the applicant relies for an effective filing date for all or any part of his claimed invention.

The Commission's Recommendation XVIII as to measurement of the term of patents from filing rather than from the issue date is accepted, since it provides desirable incentives for expediting prosecution. Since this penalizes delay in filing dependent or related applications, we think there is no real necessity for time limits on filing of such applications proposed in Recommendation VIII.

The proposal of the Commission in Recommendation XX that a terminal disclaimer should not overcome a holding of double patenting is unsound. There has been great confusion about double patenting, which originally meant issuance of two patents to the same inventor on identically the same invention. Many patents have been rejected on this ground even though the inventions involved are not actually the same, but are alternative inventions or improvement inventions or otherwise closely related but different inventions. Where the inventions are by the same inventor and are patentable over other prior art, they are generally permitted to be claimed in a single patent, but in the past, requirements for restriction to a single invention were frequently followed by rejection for double patenting. This was so obviously unjust that two corrective provisions were placed in the 1952 revision of the statute.

The first correction was to prohibit the practice of requiring restriction and then rejecting claims because of the consequence of the requirement. The second was the authorization of terminal disclaimers.

The reason for terminal disclaimers was that one of the asserted justifications for double patenting rejections was that grant of the second patent would be an illegal extension of the patent monopoly beyond a single 17 year term. So by disclaiming the part of the term beyond the 17 year term of the first patent this attempted justification is eliminated. No reason for neutralizing this benefit has been explained. In any event, the measurement of the term from filing rather than from issue date largely eliminates the problem.

F. Broadened reissues should not be completely prohibited, but the time in which they may be sought should be reduced to one year.

Reissuance of patents to correct inadvertent errors arose by necessity, and

was approved by the Supreme Court, before there was any statutory authorization. This occured in a situation in which extension or broadening of protection was involved. Since then, the courts have declared that broadened reissues must be sought within a reasonable time, and the maximum time was finally declared to be two years, by analogy to the two year grace period then in effect. When the 1952 recodification was enacted, the decision law on this point was codified and the two year time limit on broadened reissues was fixed, even though the grace period had been reduced to one year a considerable time before then. This time limit is analogous to the rule against late claiming of subject matter disclosed but not originally claimed. Allowance of new claims of previously unclaimed subject matter is absolutely barred if the claims are first presented more than a year after a publication. In fairness to the public, the same rule should apply, regardless of whether the broadened claims are presented before grant, or after grant in an application for reissue, and regardless of whether the publication is by another or is the publication of the patentee's own patent.

Complete prohibition of broadened reissues proposed in Recommendation XVI would needlessly deprive patentees of protection in many situations in which the original claims fail to define the invention properly. Such a statutory prohibition could even be invoked to destroy patents when the change is actually only a clarification, because a technical analysis of the claims could make it appear that a slight extension of scope had occurred.

A revision of the statute limiting the time for presentation of broadened claims in reissues to one year is accordingly proposed.

G. Citations of prior art that bear on the subject matter of an application or patent may be made of record at any time by any one including the applicant or patentee. Notice shall be given to the applicant or patentee of any such citations submitted by others.

1. Such prior art shall be added to the list of prior art appended to the specification, and shall appear on copies subsequently sold, but shall be distinguished from prior art cited by the Patent Office unless actually reviewed by the examiner before allowance of the case.

2. An applicant or patentee shall have the right at all times to restrict his claims by amendment or disclaimer or reissue to avoid any adverse effect such additional prior art may have on the validity of his claims.

3. A defendant in an infringement suit who prevails against a patentee because of prior art so cited may be entitled to a judgment for his attorneys' fees, in the absence of review by the examiner or timely restriction by the patentee.

The Commission emphasized the importance of reliability of patents, which apparently means that if and when litigated the protection should be held by the court to correspond exactly to the apparent scope of the claims in the patents. Such a goal is obviously not realizable for two reasons. First, all the prior art can never be ascertained with any certainty, but the intensive searching during litigation almost always turns up significant prior art not previously cited. Second, the apparently proper scope of protection depends on the effect of the invention on actual progress of the art which undergoes change with time, and depends even more on the individuality of the person or persons judging the matter who more often than not will disagree.

Incidentally, the stated intention of the Patent Office to measure the quality of the examining operation and of its output of issued patents (Recommendation XII), and the proposal for periodic reviews by the statutory Advisory Council (Recommendation XXVI) show a commendable concern for improvement in quality. The exercise of judgment is inherently incapable of measurement and not much can be expected by concentrating on this phase of the operation which is already under the scrutiny of supposedly competent supervisors. Substantial improvement in classification and searching could be expected by subjecting these operations to the control of a completely independent search, which can be accomplished by requiring prior art known to applicants to be disclosed after (and not before) the examiner's search is reported. The requirement for independence of search would greatly enhance completeness of knowledge of prior art and would immediately disclose weaknesses in the classification and searching system so they could be corrected.

The elaborate procedures for learning of prior art recommended by the Commission include compulsory publication (Recommendation VII) followed by citation of prior art by the public (Recommendation XI), and another citation period and reexamination after allowance (Recommendation XI, chart 2) with conse