law is more akin to that in infringement suits in the several judicial circuits. Thus, the public reasonably could expect that the law relating to patentability as applied in the Patent Office would conform more nearly to that applied in the infringement courts. Procedure for Amending and Cancelling Patents XV This recommendation provides an ex parte administrative procedure in the Patent Office for cancellation of claims, which should be faster and less costly than court proceedings. The Patent Office, upon receipt of a relatively When the validity of a claim is in issue before Anyone unsuccessfully seeking Patent Office Presently, there is no provision for the Patent Office administratively to cancel any claim in an issued patent. Even where a claim appears to be clearly unpatentable in view of newly discovered prior art, only a court can declare the claim invalid. As a result, the patent owner can continue to assert such a claim because no one is willing or able to expend the resources necessary to obtain a court decision. To discourage harassment and to promote the citation of references prior to issuance (Recommendation No. XI), a relatively high fee would be required. Further, the patentee's defense costs would be assessed against any party who unsuccessfully sought cancellation. To insure payment, anyone initiating such action would be required immediately to post a deposit or bond in accordance with a schedule fixed by the Commissioner. In some instances, the cancellation proceeding would benefit even the patent owner, since he still would have an opportunity to narrow any claims found to have been erroneously allowed. If a party were successful in seeking cancellation, after citing only prior art which he previously presented during the opposition period, the cancellation fee should be refunded. A three year limit on the time within which a cancellation procedure could be instituted should be sufficient for most prior art to become readily accessible. It would be desirable for the Statutory Advisory Council (Recommendation No. XXVI) to review this procedure after sufficient time has elapsed to determine its effectiveness, and to recommend any appropriate changes. XVI A claim shall not be broadened in a reissue Presently, there are few statutory restrictions against broadening the scope of the invention claimed during prosecution before the Patent Office. Because of this, the potential value of early publication (Recommendation No. VII) cannot be fully realized, since unclaimed disclosure in a published application could not be used by the public free from the possibility that it might be protected by broader claims in the subsequently issued patent. The public would have no guide, other than the entire disclosure, to determine the limits of final patent protec tion. Possible claim scope could be divined only after the interested party conducted his own examination of the prior art. Hence, it is desirable that claims never be broadened after publication, whether presented in the published application or a related continuing or reissue application. However, an allinclusive prohibition to this effect might be impossible to enforce. Accordingly, this recommendation is directed solely to reissue applications, where broadening of claims can be prohibited effectively. Liability and Enforcement XVII In view of the recommended publication of applications by the Patent Office before a patent issues (Recommendation No. VII), some protection for the patent owner for the period from publication to patenting should be made available. Therefore, it is recommended that: For infringement of a claim which appears in The applicant's election to create such interim In exceptional cases, damages for interim in- Under the present statute, liability for infringement begins on the date a patent is issued. With a requirement of pre-issuance publication of an application, absent this recommendation, anyone could copy the invention and make, use or sell it until a patent is issued, possibly even exhausting its commercial value. |