that some means outside the patent system should be developed for the protection of new and original ornamental designs. 2. Plants: A patent may be granted today on any new and distinct variety of specified types of asexually reproduced plants. The statute imposes the requirement of unobviousness for patentability. In practice, however, patents are granted if the Department of Agriculture notifies the Patent Office that, as far as it can determine, the plant variety is new, and the examiner finds no art indicating the contrary. While the Commission acknowledges the valuable contribution of plant and seed breeders, it does not consider the patent system the proper vehicle for the protection of such subject matter, regardless of whether the plants reproduce sexually or asexually. It urges further study to determine the most appropriate means of protection. 3. Programs: Uncertainty now exists as to whether the statute permits a valid patent to be granted on programs. Direct attempts to patent programs have been rejected on the ground of nonstatutory subject matter. Indirect attempts to obtain patents and avoid the rejection, by drafting claims as a process, or a machine or components thereof programmed in a given manner, rather than as a program itself, have confused the issue further and should not be permitted. The Patent Office now cannot examine applications for programs because of the lack of a classification technique and the requisite search files. Even if these were available, reliable searches would not be feasible or economic because of the tremendous volume of prior art being generated. Without this search, the patenting of programs would be tantamount to mere registration and the presumption of validity would be all but nonexistent. It is 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. Application Filing and Examination V To prevent delay, which may be detrimental to the owner of an invention, while retaining safeguards to protect the rights of the inventor, it is recommended that: 1. Either the inventor or assignee may file and Any application filed by the assignee shall 2. Every application shall include, at the time 3. Omission of an inventor's name or inclusion 1. The present patent act requires (with specified exceptions) that the inventor, at the time of filing, must sign the application and make an oath or declaration that he made the invention. Occasionally, inventors are unavailable or unwilling to sign an application immediately after it is prepared. Moreover, it is sometimes difficult to determine the identity of an inventor at the time the application is prepared. Delay in complying with the requirements has resulted in loss of rights to the application owner. Such delay would be more serious when the effective filing date is treated as the date of invention. The intent of this recommendation is to simplify the formalities for filing an application by allowing the owner of the patent rights to sign and file the necessary papers. Many detrimental delays thus would be avoided. Before publication of the application, however, the assignee must provide both a declaration of originality and a specific assignment from the inventor to safeguard the interests of the inventor and the public. The present statutory exceptions which allow an interested party to file an application when the inventor is deceased, is incapacitated, cannot be found or refuses to cooperate, would be continued to prevent forfeiture of rights. 2. At present, it is often difficult to determine who should be named as the inventor in any given application. A contributing factor is court rulings that for a valid patent to be granted to joint inventors, each person named must have been a joint inventor with respect to each claim in the patent. Many complex inventions result from the combined efforts of persons working separately, often at different times and in different sections of an organization. In such cases, adequate protection may be impossible because all of the claims required for protection cannot be presented properly in a single application, and the individual contributions cannot properly be made the subject matter of separate patents. This recommendation would simplify the initial determination of who should be named as inventors in a given application and render it unnecessary for each person named to be the joint inventor of the invention asserted in each claim in a patent. 3. Today, a patent in which a sole inventor is incorrectly named will be held invalid. In the case of joint inventors, the omission or improper inclusion of a name will not necessarily invalidate a patent; however, correction procedures may be burdensome and the issue of whether correction is required can become an item of costly litigation. This recommendation is intended to avoid a holding of invalidity, as above mentioned, as well as to facilitate correction of applications and patents. VI Claim for a priority date must be made when a complete application is filed. This recommendation would require 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. Present practice allows a claim for priority to be delayed until the final fee is paid. Early knowledge of the priority date on which an applicant intends to rely would become more important with the adoption of a first to file system. Such knowledge would be necessary for proper determination, without wasted effort on the part of the Patent Office, of what references may be used as prior art against an application. VII Publication of a pending application shall oc- An applicant, for any reason, may request An application shall be "republished" prompt- The only printed publication now made by the Patent Office of an application is that which occurs upon the issuance of a patent. Today, such publication can be delayed significantly beyond two years from the effective filing date of an application. This recommendation sets an outside limit on the time for publication. An application, unless abandoned and kept secret, would be made available to all concerned within a reasonably short time. Early publication could prevent needless duplication of the disclosed work, promote additional technological advances based on the information disclosed, and apprise entrepreneurs of their potential liability. An applicant would be permitted to abandon his application prior to the time for publication and retain the invention in secrecy. Alternatively, an applicant could have his application published promptly after filing, with or without abandonment, which would make his disclosure available earlier for prior art or interim liability purposes. However, the Commissioner could refuse such publication where the subject matter is nonstatutory, immoral, or the like. In the case of an application which is given a notice of allowance, or in which an appeal is filed to the Board of Appeals, within the eighteen to twenty-four months after its earliest effective filing date, immediate publication would permit citation of prior art by the public (Recommendation No. XI). Republication after a notice of allowance or the filing of an appeal would be required if amendments to the claims or specification are made after the first publication. Printing costs should not be increased substantially since republication could consist merely of a notice, published in the Official Gazette, with copies of the allowed claims prepared and made available to the public. When considered appropriate by the Commissioner, integrated copies of the specification and drawings could be prepared and made available. VIII This recommendation is intended to prevent the repetitive filing of dependent applications. It is designed to eliminate undue postponement of the publication of the scope of protection granted, bring the United States into accord with international practice, and permit more efficient Patent Office examination. 90-355 0-68-pt. 1- -6 17 |