a substantial ground of rejection not previously asserted, the applicant requests reexamination, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention." (The examination section now specifies references to "prior art". In addition, a phrase is added to make it clear that an applicant always has the right to amend after a new ground of rejection.) Section 133. Time for prosecuting application (no change). Section 135. Interferences. "(a) Whenever it appears that two or more applicants are seeking patents on the same invention, the Commissioner shall issue a patent to the applicant, otherwise entitled thereto, whose application has the earliest effective filing date. "(b) A junior applicant dissatisfied with the issue of a patent on the senior application may amend his application within one year after the issuance of the patent to claim the same subject matter and request a decision on the question of priority of invention. Such decision shall be made by a board of at least three members of the Board of Appeals sitting as a Board of Patent Interferences, based on evidence submitted in the form of affidavits and authenticated physical exhibits and documents or copies thereof. If the decision is that the junior applicant is the prior inventor, the Commissioner may issue a patent to him. "(c) If an appeal is taken from the decision of the Board of Patent Interferences under section 141 or section 145 of this title and the court adjudges priority of invention of any claim of a patent adversely to the patentee, such judgment, when final, shall constitute cancellation of the claim from the patent, and notice thereof shall be endorsed on copies of the patent thereafter distributed by the Patent Office." (A simplified procedure prevents maintenance of secrecy during an interference and provides for a quick and inexpensive decision in the first instance. A thorough inquiry into the facts can be obtained later by proceeding under section 145 or 291.) Section 136. Citation of prior art. "Citations of prior art that bear on the subject matter of an application or patent may be submitted to the Patent Office 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. "(a) Such citations shall appear on all copies of the application or patent distributed thereafter by the Patent Office, but shall be distinguished from prior art cited by the Patent Office unless actually reviewed by the examiner before allowance of the application. "(b) An applicant or patentee shall have the right at all times to restrict his claims, by amendment or by disclaimer or by reissue as may be appropriate, to avoid any adverse effect such additional prior art may have on the validity of his claims. "(c) A defendant in an infringement suit who prevails against a patentee because of prior art cited after allowance of the application may be entitled to a judgment for his attorneys' fees, in the absence of timely restriction by the patentee. "(d) Neither citation nor failure to cite known prior art shall be an estoppel or in any other manner affect the right of a patentee and of an alleged infringer to a judicial determination of validity of a patent." (Permissive citation by any one, not requiring any action, but putting every one interested in the patent on notice of existence of previously uncited prior art, is immensely preferable to the slow, cumbersome, and expensive procedure typified by section 136 of S-1042.) Section 137. Burden of proceeding. "An applicant who has filed an application for patent in proper form shall not be denied a patent without a showing of good cause therefor as specified in this title. After a rejection or objection or requirement, the applicant shall have the burden of proceeding, and shall be entitled to a patent unless the preponderance of available evidence establishes a basis for denial of the requested patent." (The unfairness of the attempt to impose a "burden of persuasion" on applicants, which the Commissioner is doing without statutory authority, calls for corrective action.) CHAPTER 13-REVIEW OF PATENT OFFICE DECISION (The sections of this chapter are based on S-1042 with such changes as are needed to provide properly for interference appeals. These sections include the much needed reform of procedure omitting the previous requirement for “reasons of appeal".) Section 141. Appeal to the Court of Customs and Patent Appeals. "An applicant dissatisfied with the decision of the Board of Appeals or any party dissatisfied with the decision of the Board of Patent Interferences may appeal to the United States Court of Customs and Patent Appeals, thereby waiving his right to proceed under section 145 of this title." Section 142. Notice of appeal. "When an appeal is taken to the United States Court of Customs and Patent Appeals, the appellant shall file in the Patent Office a written notice of appeal directed to the Commissioner, within such time after the date of the decision appealed from, not less than sixty days, as the Commissioner appoints." Section 143. Proceedings on appeal. "The Patent Office shall transmit to the United States Court of Customs and Patent Appeals certified copies of all the necessary papers and evidence designated by the appellant and any additional papers and evidence designated by the Commissioner. The Commissioner may appear in court by his representative and present the position of the Patent Office. The court shall, before hearing an appeal, give notice of the time and place of the hearing to the Commissioner and to each other party." Section 144. Decision on appeal. "The United States Court of Customs and Patent Appeals shall hear and determine such appeal on the evidence produced before the Patent Office and transmitted to the court under the provisions of section 143 of this title. Upon its determination the court shall return to the Commissioner a certificate of its proceedings and decision, which shall be entered of record in the Patent Office and govern the further proceedings in the case." Section 145. Civil action. "An applicant dissatisfied with the decision of the Board of Appeals or any party dissatisfied with the decision of the Board of Patent Interferences may, unless appeal has been taken to the United States Court of Customs and Patent Appeals under section 141 of this title, have remedy by civil action against the Commissioner in the United States Court of Customs and Patent Appeals if commenced within such time after such decision, not less than sixty days, as the Commissioner appoints. If a party appeals from the decision of the Board of Patent Interferences under section 141 of this title, any adverse party other than the Commissioner may elect within twenty days after the filing of the notice of appeal to have all further proceedings conducted under this section. In a civil action under this section any party may introduce any part of the record in the Patent Office and may also introduce any other evidence relevant to the issues. The judgment of the court shall be entered of record in the Patent Office and govern further proceedings in the case." (The extremely undesirable additional appeal from the CCPA to the Court of Appeals D.C. in section 147 of S-1042 is omitted, along with the very unfair "presumption of correctness" in section 148.) CHAPTER 14-ISSUE OF PATENT Section 151. Issue of patent (no change). Section 152. Issue of patent to assignee (no change). Section 153. How issued (no change). Section 154. Contents and term of a 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 the issuance of the patent resulting from inaction of the Patent Office during a secrecy order specified in section 181 of this title." (The provision for a 20-year term from filing is taken from S-1042 with minor clarification. The extension to compensate for delay resulting from a secrecy order should not be measured from a notice of allowability as proposed in S-1042 since that would permit an extension to be prevented by a refusal of the Patent Office to take any action.) CHAPTER 15-PLANT PATENTS (No change in sections 161–164.) CHAPTER 16-DESIGNS (No change in sections 171-173.) CHAPTER 17-SECRECY, ETC. Section 181. Secrecy of certain inventions, etc. (no change). Section 184. Filing of application in foreign country. (No change in first paragraph. Second paragraph revised as follows:) "The term 'application' when used in this chapter in relation to an application filed in a foreign country excludes any modifications, amendments, supplements thereto, or divisions thereof, unless significant added disclosure requiring separate consideration is found therein." (The previous language including rather than excluding amendments made innocent corrections a criminal act subject to severe penalties, and is here corrected.) Section 185. Patent barred for filing without license. "Notwithstanding any other provisions of law an applicant residing within the United States shall not receive a United States patent for an invention if he shall, without procuring the license prescribed in section 184 of this title, have made, or consented to or assisted another's making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention at any time during existence of a secrecy order or in the absence of a secrecy order at any time other than six months or moreafter filing an application for patent in the United States. A United States patent issued contrary to this section shall be invalid unless the license prescribed in section 184 is granted retroactively." (This section was inconsistent with 184 in failing to take into account the six month rule of 184, and also defective in literally prohibiting foreign inventors from obtaining U.S. patents without a special license. The revision corrects it in both respects.) Section 186. Penalty (no change). Section 187. Nonapplicability to certain persons (no change). Section 188. Rules and regulations, etc. (no change). PART III-PATENTS AND PROTECTION OF PATENT RIGHTS CHAPTER 25-AMENDMENT AND CORRECTION OF PATENTS Section 251. Reissue of defective patents. (No change except in last paragraph:) "No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within one year from the grant of the original patent." (The time for a broadened reissue is reduced to one year to correspond to the previous reduction of the grace period from two to one year.) (No changes are made in sections 252-256 of this chapter, but proposed section 257 of S-1042 providing for revocation proceedings is disapproved.) CHAPTER 26-OWNERSHIP AND ASSIGNMENT Section 261. Ownership; assignment (no change). Section 262. Joint owners (no change). Section 263. Licensable nature of patent rights. "(a) Applications for patent, patents, or any interest therein, may be licensed in the whole, or in any specified part, of the field of use to which the subject matter of the claims of the patent is directly applicable, and "(b) A patent owner shall not be deemed guilty of patent misuse merely because he agreed to a contractual provision or imposed a condition on a licensee, which has 1. a direct relation to the disclosure and claims of the patent, and 2. the performance of which is reasonable under the circumstances to secure to the patent owner the full benefit of his invention and patent grant. "(c) The "rule of reason" shall constitute the guideline for determining patent misuse." (The Commission's Recommendation XXII should be adopted to preserve and enhance the incentives to progress since no substantial detriment to offset the benefits can be foreseen.) CHAPTER 27-GOVERNMENT INTERESTS IN PATENTS Section 267. Time for taking action in government applications (no change). Section 268. Government owned patents belong to people. "Whenever any United States patent is owned directly or indirectly by any government, domestic or foreign, or any agency thereof, said patent shall be deemed to belong immediately and irrevocably to the people of the United States, and every citizen and resident of the United States, whether individual or corporate, shall have the free right to use an practice the inventions thereof." (Since there is no Constitutional basis for the Government to grant patents to itself, and since the people have paid for creation of the inventions of Government patents, the people should be assured that such patents will never be used against them.) CHAPTER 28-INFRINGEMENT OF PATENTS Section 271. Infringement of patent. (No change except the addition of a subsection corresponding to 271(b) of S-1042:) "Whoever, without authority of the patentee, imports into the United States a product made in another country by a process patented in the United States, other than a product brought with him on entry into the United States for his personal use or use by a member of his family, shall be liable as an infringer." (This provision will replace the unsatisfactory section of the tariff act having the same purpose, without the limitations of the provision in S-1042.) Section 272. Temporary presence in the United States (no change). CHAPTER 29-REMEDIES FOR INFRINGEMENT OF PATENT AND OTHER ACTIONS (No change in this chapter, but proposed section 294 in S-1042 is disapproved, as it is considered to be undesirable to prohibit altogether a second suit after a patent is held invalid.) RESOLUTIONS OF THE PATENT, TRADEMARK, AND COPYRIGHT SECTION OF THE COLORADO BAR ASSOCIATION, RELATING TO PROPOSED REVISIONS OF THE U.S. PATENT LAWS RESOLUTION NO. 1: RE FIRST TO FILE CONCEPT The Section opposes a strict "first to file" determination of inventorship as placing an absolute premium on immediacy in filing which would tend to cause a severe decrease in the quality of applications filed, and greatly increase the amount of material which must be searched by the Patent Office. The Section proposes that the present one year statutory bar period be continued. The first person to file should prevail unless two applications on the same invention are filed within one year of each other, in which case an interference procedure should be utilized. RESOLUTION NO. 2: RE PRELIMINARY APPLICATIONS The Section opposes provision for preliminary applications because of the serious tendency to increase the amount of "trash" applications which may be filed and which may seriously compound the search problems of the Patent Office. The Section feels that permitting interferences between inventors who file within one year of each other will satisfactorily eliminate the need for preliminary applications and will encourage both reasonable quality and reasonable promptness in filing. RESOLUTION NO. 3: RE CITATION OF ART BY OTHERS The Section endorses an opposition type of period as now provided by the President's Commission Recommendations and by S. 1042, provided that prior art not cited during this period should not be permitted to be introduced in any proceeding thereafter. Rights of prior users of the invention should not be affected by the patent. The Section recommends that after termination of the periods provided in the Recommendations and the Senate Bill 1042, a patent should be conclusively presumed valid except on the basis of fraud. RESOLUTION NO. 4: RE PUBLICATION OF APPLICATIONS The Section endorses the early publication of applications as provided for in the Presidential recommendations and in Senate Bill 1042, except that the publication should occur 18 to 24 months after the earliest effective filing date or promptly after allowance or appeal, whichever comes last (and not "whichever comes first" as in the recommendations). This single change is necessary to prevent the applicant from suffering from a failure of the Patent Office to act promptly. RESOLUTION NO. 5: RE FEES TO BE SET BY THE COMMISSIONER OF PATENTS The Section opposes the setting of the fees by the Commissioner of Patents as providing insufficient control of Patent Office costs. The Section recommends that fees continue to be set by Congress, possibly based on the suggestions of a committee, and that fees should balance cost of operation of the Patent Office against the need for encouraging the patenting of American inventions. Mr. HERBERT FUCHS, RALPH F. CRANDELL, Section Chairman, 1966–67. Section Vice Chairman, 1966–67. Section Secretary, 1966–67. STATEMENT OF COMPUTER USAGE CO., INC. COMPUTER USAGE CO., INC., Mount Kisco, N.Y., July 24, 1968. Counsel, Subcommittee No. 3, U.S. House of Representatives, Committee on the Judiciary, Washington, D.C. DEAR MR. FUCHS: In response to your request of July 18th, we wish to submit the following statements: Computer Usage Company, Inc., was incorporated in 1955 as one of the very first companies to be organized to offer services in the field of "software", or the use and application of data processing techniques. Since that time we have responded to the increasing demand for these services, expanding from one small office in New York City into a nationwide concern with offices from coast-to-coast and over 800 employees. We mention this fact only to emphasize that the tremendous impact which data processing techniques has had on the day-to-day life of all segments of our society is an experience with which we are intimately acquainted and about which we may, perhaps, speak with some authority. The question as to whether computer programs are patentable under present legislation has yet to be resolved. The state of the art is changing constantly and is still in the process of evolution. No one can be certain of all the uses to which data processing will eventually be put or how these uses will be implemented. Now is certainly not the time to present the industry with as drastic a restriction as Proposed Section 106 would impose. |