that his claims are allowable. By eliminating doubt as an element favoring patentability, the overall standards of patentability applied by the Office should be raised.

XI

To increase the likelihood that all pertinent prior art is considered before issuance of a patent, the following technique is provided.

The Patent Office shall consider all patents or
publications, the pertinency of which is ex-
plained in writing, cited against an application
anytime until six months after the publication
which gives notice that the application has been
allowed or appealed to the Board of Appeals.
If the Patent Office, after the citation period,
determines that a claim should not be, or have
been, allowed, the applicant shall be notified and
given an opportunity ex parte both to rebut the
determination and to narrow the scope of the
claim. The identity of the party citing refer-
ences shall be maintained in confidence.

Public use proceedings, as at present, may be
instituted during the citation period.

Presently, anyone who has reason to believe that an application is pending may seek an inter partes proceeding to to determine whether alleged public use or sale should bar issuance of a patent. Also, publications or patents may be submitted for ex parte consideration by the Patent Office.

This recommendation would provide a citation period of at least six months in which the public, informed by publication of the content of an application, could submit patents or publications, together with an explanation of their pertinency. Such references would be evaluated and, to the extent found applicable, used to reject claims even if such claims previously were allowed or under appeal.

Little delay in the issuance of patents would result from this procedure. The applicability of newly cited art would be

determined immediately after expiration of the six month period following the publication which gives notice of allowance or of the filing of an appeal. Moreover, the applicant need not suffer from such delay since, under certain circumstances, damages could be recovered for infringement during the period following publication (Recommendation No. XVII).

The recommended procedure could benefit both the applicant and the public. The applicant could gain by the opportunity to narrow his claims, when possible, to avoid prior art, rather than having the claims later held invalid. Inasmuch as the procedure will be an ex parte one, as distinguished from a full scale adversary procedure, the additional cost of the citation practice to an applicant would not be great. The public should benefit by the opportunity to cite prior art inexpensively to the Patent Office rather than through costly litigation. Under this procedure, both would benefit from the greater reliance that could be placed upon the validity of patents in general.

Citing, or failing to cite, prior art during this period would not preclude a later challenge on that art.

XII

Indispensable to the improvement of the quality and the acceptability of patents being issued is the establishment of an objective technique for measuring the quality of the work product of the examining corps. The Commission therefore

recommends that:

The Patent Office shall develop and maintain
an effective control program to evaluate, on a
continuing basis, the quality of the patents
being issued by the examining groups and art
units therein, and to furnish information for
the publication of an annual rating of the over-
all quality of the patents issued each year.

The Patent Office is presently in the process of putting into effect a quality control program.

This recommendation is intended to encourage and expand this effort so that an effective quality measurement can be made, on an objective basis, of the patents being issued by each of the examining groups and art units within the Patent Office.

Development of an effective patent quality measurement technique should be followed by the publication of a rating reflecting the quality of patents issued during a given period. For example, if effective quality measurement is achieved during 1968, the quality rating for that year could be used as a base of comparison and set at 100. Each year thereafter, a quality rating could be determined with this technique and the trend in the quality of patents being issued observed.

Such ratings should prove helpful to the Patent Office, the public, the courts, and the Congress in making required judgments concerning the patent system.

The continual review by a Statutory Advisory Council (Recommendation No. XXVI) of the quality of patents being issued and the effectiveness of any quality control program in operation should result in greater acceptability of the quality rating and the control program by all concerned.

Direct Review of Patent Office Decisions

XIII

A Patent Office decision refusing a claim shall
be given a presumption of correctness, and
shall not be reversed unless clearly erroneous.

Currently, the weight given on appeal to a Patent Office decision denying a patent depends upon which court reviews the decision. The Patent Office's decision is presumed correct in the District Court for the District of Columbia and the Court of Appeals for the District of Columbia Circuit, but not in the Court of Customs and Patent Appeals.

The Patent Office should be recognized as having technical and legal expertise, important in deciding questions of patentability. While a reviewing court certainly will have legal expertise, and perhaps general technical knowledge, it seldom will possess the particular technical skill in the art with which a Patent Office examiner is equipped. Further, it is only after both the examiner and the Board of Appeals have concurred in the refusal of a claim that the matter comes before a reviewing court. Such concurrence should not be rejected by the court unless the action is, in its judgment, clearly erroneous.

This recommendation should settle the conflict over "scope of review," by defining the court's responsibility to be review of the Patent Office decision, rather than substitution of its own judgment. The court would determine only whether the Patent Office had reasonable basis for its decision, not whether a different decision logically could have been reached on the same record. The burden of persuasion would be on the applicant, and the Patent Office decision should not be reversed unless, in view of all of the evidence, the court has a thorough conviction that there was no reasonable basis for the decision.

XIV

Either the applicant or the Patent Office may
appeal from a decision of the Court of Customs

and Patent Appeals to the United States Court
of Appeals for the District of Columbia Cir-
cuit, and from a decision of the latter court
either may petition the Supreme Court for a
writ of certiorari.

An applicant presently may seek review by two alternative routes from a decision by the Board of Appeals of the Patent Office. He may appeal to the Court of Customs and Patent Appeals (C.C.P.A.) on the record made in the Patent Office; or, he may proceed in the United States District Court for the District of Columbia where he may offer evidence and issues not considered by the Patent Office. Only a decision of the District Court may be appealed, by either party, to the United States Court of Appeals for the District of Columbia Circuit.

When the Court of Appeals and the C.C.P.A. render conflicting decisions reflecting a disagreement on a point of substantive law, the Patent Office must choose one of the decisions to follow, for the sake of uniformity within the Office. In practice, the Patent Office generally adopts the guidelines in the decision most favorable to the applicant, since it is the applicant who selects the reviewing court.

The present procedure also has caused inconsistency in the application of the law. As recently observed by the Supreme Court [Graham v. John Deere Co.], there is "a notorious difference between the standards applied by the Patent Office and by the courts." This difference results not only from the fact that proceedings in the Patent Office are ex parte, but also because the C.C.P.A., which to a large extent determines the standards applied in the Patent Office, is a court which has neither general jurisdiction nor jurisdiction in infringement cases.

Under the recommendation, all immediate direct review of the Patent Office would be subject to further review by the United States Court of Appeals for the District of Columbia Circuit. Thus, a single court of general jurisdiction ordinarily would be the final reviewing authority. This should produce decisions wherein interpretation and application of substantive