Unless a later filed application is: 1. A continuation application and is filed be- 2. A continuation-in-part application and is 3. A divisional application filed (a) on one of The later filed application shall not be entitled At present, an applicant may serially file continuing applications for an unlimited period of time and maintain his invention in secrecy. Such practice makes effective examination in the Patent Office more difficult and expensive, and indefinitely prolongs the time before the issuance of a patent and the resultant publication of the scope of protection granted. Permitting an applicant to file a continuation application during the indicated portion of the pendency of his original parent application would provide some latitude for one who felt that inadequate opportunity existed in the parent case to reach a clear issue. At the same time, it would avoid needless effort in preparing examiner's responses to appeal briefs, as well as unduly prolonged prosecution of the same invention. Requiring that a continuation-in-part application be filed before publication of the parent application, as would appear to be required if the provisions of the present Council of Europe Treaty and proposed Common Market Patent System were observed, normally would allow both the parent and continuation-in-part applications to be examined contemporaneously, possibly by the same examiner. Further, the public would learn sooner of the scope of patent protection that ultimately might be obtained based on the invention disclosed in the parent application. Providing that all divisional applications must be presented during the pendency of the original parent application, or the application in which restriction first was required, would shorten the period of public uncertainty as to the scope of patent protection that eventually may be granted on the subject matter disclosed in the parent application. On the other hand, the applicant would have ample opportunity to perfect an appeal or to file a petition that may affect the propriety of a restriction requirement. IX The Commission clearly favors a high quality immediate examination system if it can be maintained without a constantly increasing backlog. Nevertheless, it is recommended that: Standby statutory authority should be pro- Although this recommendation reflects the consensus of the Commission, a split exists among the members as to when and how such authority should be exercised. One view favors optional deferred examination going into effect, on a pilot basis, as soon as appropriate legislation can be enacted. Proponents of this view feel that early experience with optional deferred examination is desirable, and that it can be obtained effectively only by instituting a pilot program as early as possible. For example, the pilot program could apply to applications filed within a given period of time or to applications concerned with some given subject matter. The other view favors the institution of optional deferred examination, whether on a pilot basis or in whole, only if the Statutory Advisory Council (Recommendation No. XXVI) should find that a high quality immediate examination system no longer could be maintained. Justifications for an optional deferred examination system are that not all applications for patents are of the same value, that it is not good economic practice for the Patent Office to devote substantial effort to applications having little value, and that the applicant and his competitors are in the best position to select out such applications. Such a system should reduce the number of applications requiring prompt examination. It is probable that a number of applicants, such as those who had not yet determined the value of their inventions, would prefer to have examination of their applications deferred. To the extent that applications are deferred, the remainder should be reached for examination In some cases, examination might never be requested, and the applications would become abandoned. sooner. An optional deferred examination system shall 1. The examination shall be deferred at the Request for examination, accompanied by 3. Any party, without being required to dis- be inserted in the queue of applications set 5. Examination of pending parent or continu- 1. A five year period should balance the interests of the public, the applicants and the Patent Office. The public should learn, within a reasonable time, about any patent protection. Applicants should have adequate time to ascertain the commercial value of their inventions before investing in an examination fee and prosecution costs. The Patent Office should benefit from the abandonment of a number of applications prior to examination. 2. A complete application which is not accompanied by an examination fee would be inspected for formal matters immediately upon filing. The application would be classified under the Patent Office classification system and published at the earliest possible date. No prior art search would be made before a full examination is requested, since otherwise the saving of examiner's time would be minimal. 3. By requesting an examination, a potential infringer or other interested party could receive a relatively prompt determination of the invention's patentability. A third party could initiate the examination without identifying himself to the Patent Office. As a result, the applicant would not be given any additional advantage when drafting his claims, nor would the third party be inviting suit for infringement after issuance of the patent. 4. The provision as to order of examination is intended to assure fair treatment to those who initially paid for an immediate examination. 5. Concurrent examination and prosecution of the entire family of pending parent and continuing applications would be required in those cases where examination of one of such applications has been requested. If a third party requests and pays the fee for examination of an application, the applicant would be required to pay the examination fee promptly for all other parent or continuing applications. This contemporaneous examination would provide earlier determination of the scope of the composite monopoly to be granted. X To reinforce the statutory presumption of validity, and to assist in the prevention of the issuance of invalid patents: The applicant shall have the burden of persuad ing the Patent Office that a claim is patentable. Until recently, the Patent Office has followed a policy of (a) instructing the examiner to resolve all reasonable doubts in favor of the applicant, and (b) prohibiting the examiner from indicating that he is allowing a claim despite his doubt as to its patentability. The Commissioner has instructed the examiners to abandon this policy in obedience to the views expressed this year by the Supreme Court. Present experience is insufficient to reveal how the courts directly reviewing Patent Office practice will treat this change. Many have long recognized that resolving doubt in favor of the applicant is inconsistent with giving a patent a strong presumption of validity. Little justification exists for giving weight to a decision made by the Patent Office when it resolves doubt in this manner, since it is passing the question of patentability on to the courts instead of exercising its judgment. Inasmuch as the examiner does not indicate when he has applied the rule of doubt, all patents may be questioned in this regard. This recommendation would require the applicant, in all cases, to persuade the Patent Office by a preponderance of proof |