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
high fee, shall consider prior art of which it
is apprised by a third party, when such prior
art is cited and its pertinency explained in writ-
ing within a three year period after issuance of
the patent. If the Patent Office then deter-
mines that a claim should not have been al-
lowed, the patent owner shall be notified and
given an opportunity ex parte both to rebut the
determination and to narrow the scope of the
claim. Failure to seek review, or the affirmance
of the Patent Office holding, shall result in can-
cellation of the claim.

When the validity of a claim is in issue before
both the Patent Office and a court, the tribunal
where the issue was first presented shall pro-
ceed while the other shall suspend considera-
tion, unless the court decides otherwise for
good cause.

Anyone unsuccessfully seeking Patent Office
cancellation of claims shall be required to pay
the patent owner's reasonable cost of defending
such claims, including attorney's fees. The
Commissioner shall require an appropriate de-
posit or bond for this purpose at the start of
the action.

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
application.

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
both an application as initially published and
in the issued patent, damages may be obtained
for an interim period prior to issuance. Such
period shall be measured from after the occur-
rence of all of the following events: (1) the
initial publication, (2) a Patent Office holding
that the claim is allowable, and (3) a transmit-
tal to the alleged infringer of actual notice rea-
sonably indicating how his particular acts are
considered to infringe the claim.

The applicant's election to create such interim
liability, by his transmittal of notice, shall con-
stitute the granting of a reasonable royalty,
nonexclusive license, (1) extending only until
the issuance of the patent for any infringement
involving a process, and (2) extending to and
beyond issuance for any infringement involv-
ing a machine, manufacture or composition of
matter, which is made prior to the issuance of
the patent.

In exceptional cases, damages for interim in-
fringement up to treble reasonable royalties
may be assessed.

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.